Combe Inc. v. Dr. Aug. Wolff GMBH & Co.

• Decision Date: 23 May 2019
• Docket Number: Civil Action No. 1:17-cv-00935
• Citation: 382 F.Supp.3d 429
• Court: U.S. District Court — Eastern District of Virginia
• Parties: COMBE INC., Plaintiff, v. DR. AUGUST WOLFF GMBH & CO. KG ARZNEIMITTEL, Defendant.

382 F.Supp.3d 429

COMBE INC., Plaintiff,

v.DR. AUGUST WOLFF GMBH & CO. KG ARZNEIMITTEL, Defendant.

Civil Action No. 1:17-cv-00935

United States District Court, E.D. Virginia, Alexandria Division.

Signed May 23, 2019

Anna Balishina Naydonov, Elizabeth Diane Ferrill, Finnegan Henderson Farabow Garrett & Dunner LLP, Washington, DC, for Plaintiff.

Michael Abbott Grow, Arent Fox PLLC, Washington, DC, for Defendant.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

T.S. Ellis, III, United States District Judge

Plaintiff, a manufacturer and seller of personal care products for women and men and the owner of the registered trademark VAGISIL, brings this action pursuant to 15 U.S.C. § 1071(b) seeking reversal of the Trademark Trial and Appeal Board decision dismissing plaintiff's opposition to defendant's application to register the VAGISAN mark.

After completion of discovery, pretrial proceedings, and full briefing, the matter came before the Court on December 4, 2018 for a bench trial. There, the parties stipulated various undisputed facts and presented substantial testimonial and documentary evidence. Each party presented two witnesses. Testifying for plaintiff were a marketing and consumer survey expert, Mr. Hal Poret, and plaintiff's senior vice president and general manager of over-the-counter brands for North America, Ms. Stacey Feldman. In response, defendant presented its own marketing and consumer survey expert, Dr. Itamar Simonson, and defendant's head of international key account management, Ms. Angela May Thevessen. After the close of evidence and presentation of counsel's oral arguments on December 7, 2018, the matter was taken under advisement. Set forth here, pursuant to Rule 52, Fed. R. Civ. P., are the Court's findings of fact and conclusions of law.

I. FINDINGS OF FACT

1. Plaintiff, Combe Inc., is a Delaware corporation that manufactures and sells personal care products for women and men.

2. Plaintiff has sold a variety of feminine personal care products for the vaginal area under the VAGISIL mark in the United States since 1973. Products sold by plaintiff under the VAGISIL mark have included medicated anti-itch creams and wipes, intimate washes, emergency contraceptives, moisturizers, deodorant powders, and screening kits.

3. On October 17, 1978, plaintiff obtained its first trademark registration for the VAGISIL mark. That registration bears United States Registration No. 1104172 and covers "pharmaceutical preparations, namely, medicated creams" in Class 5. Plaintiff also subsequently obtained registrations for the VAGISIL mark that cover powders, wipes, washes, moisturizers, and screening kits.

4. The United States Patent and Trademark Office ("PTO") did not require evidence of acquired distinctiveness or "secondary meaning" for any of plaintiff's trademark applications for the VAGISIL mark.

5. Since 1991, products sold using the VAGISIL mark in the United States have totaled over one billion dollars in sales revenue. In addition, since 1991 the VAGISIL brand has had between 55% and 60% market share in the feminine anti-itch cream segment and between 50% and 69% market share in the feminine powder segment. Since 2010, the VAGISIL brand has had at least 94% market share in the medicated wipes segment.

6. Marketing data from retailers that have sold VAGISIL-marked products during the past year reflect that in the broad intimate-health product category, VAGISIL-marked anti-itch cream ranks fifth in sales revenue and VAGISIL-marked wash ranks sixth. In the anti-itch cream segment of the intimate-health category, VAGISIL-marked anti-itch cream is ranked first in both units sold and sales revenue. In the anti-itch wipe segment, VAGISIL-marked wipes occupy the top two ranks in both units sold and sales revenue. In the intimate wash segment, VAGISIL-marked washes are ranked first and second in sales revenue and first and third in units sold. In the intimate powder segment, VAGISIL-marked powder ranks first in both units sold and sales revenue. In the moisturizing lubricant segment, VAGISIL-marked moisturizing lubricant ranks third in both units sold and sales revenue.

7. VAGISIL-marked products are sold nationwide in a wide assortment of dollar stores, drug stores, grocery stores, mass merchandising stores, pharmacies, and e-tailers.

8. On average, the prices of VAGISIL-marked products range between $ 3.00 and $ 7.00.

9. Consumers of VAGISIL-marked products are women who fall into a wide variety of age groups and socioeconomic backgrounds.

10. Consumers exercise different levels of care in selecting and purchasing feminine personal care products for the vaginal area. Some consumers conduct research before buying such products, and certain companies, including plaintiff, use doctors to educate consumers about different vaginal conditions and products that treat those conditions. Other consumers purchase these products hastily because consumers are embarrassed by the products and the highly personal conditions they treat, and thus the consumers do not want to spend much time at the shelf.

11. Since 1993, plaintiff has spent over $ 350 million advertising and promoting VAGISIL-marked products to the general consuming public through numerous forms of media, including print, television, radio, and the Internet. This level of spending is similar to that of other major sellers of intimate-health products, including KY and Plan B, and exceeds the advertising spending by some of VAGISIL's key competitors, such as SUMMER'S EVE and REPLENS.

12. In addition, since 2008, plaintiff has spent over $ 75 million on other forms of marketing to promote VAGISIL-marked products, including events, public relations campaigns, coupons, samples, and displays in stores.

13. Since the 1980's, plaintiff has advertised and promoted VAGISIL-marked products with over ninety different commercials that have aired on prominent television stations and cable networks.

14. Since the 1970's, plaintiff has advertised and promoted VAGISIL-marked products on over one hundred radio stations, including many prominent networks and satellite radio stations.

15. Since the late 1970's, plaintiff has advertised and promoted VAGISIL-marked products in a wide variety of printed publications, including consumer print books, women's health and beauty books, trade publications, and prominent, nationally circulated magazines and newspapers.

16. Plaintiff also digitally advertises and promotes VAGISIL-marked products on health and beauty websites, including Wed MD and Vogue.com, and social media websites, including Facebook, Twitter, and Instagram. Between June 2016 and May 2018, plaintiff's advertisements for VAGISIL-marked products on Facebook generated approximately 124 million impressions, i.e. the advertisements appeared on Facebook users' computer screens approximately 124 million different times. Since April 2015, plaintiff's website Vagisil.com, which advertises and promotes VAGISIL-marked products, has been viewed over 7.2 million times.

17. The VAGISIL brand has been mentioned in several popular, nationally televised television programs, including South Park, Saturday Night Live , and The Big Bang Theory. The VAGISIL brand was the subject of an entire skit on Saturday Night Live.

18. The VAGISIL brand has also been the subject of unsolicited media attention in articles in leading national publications, including The New York Times , The Wall Street Journal , and The Washington Post.

19. Defendant, Dr. August Wolff GmbH & Co. KG Arzneimittel, is a German limited liability partnership that manufactures and sells medicinal, cosmetic, and dermatological products.

20. In 1998, defendant began to sell in Germany a variety of feminine personal care products for the vaginal area under the VAGISAN brand. Defendant later expanded its sale of VAGISAN-branded products into other countries in Europe, the Middle East, and Asia. Defendant owns trademark registrations for the VAGISAN mark in Germany and more than a dozen other countries. Products sold by defendant under the VAGISAN brand include, among others, suppositories to restore vaginal pH and to regenerate vaginal flora, moisturizing cream, intimate wash lotion, protective ointment, and nutritional supplements

. In Europe, parts of the Middle East, and Asia, defendant sells VAGISAN-branded products in pharmacies, health and beauty stores, drugstores, and online shops.

21. Defendant is not currently selling, and has never in the past sold, VAGISAN-branded products in the United States.

22. On January 24, 2012, defendant filed Application Serial No. 79111922 with the PTO to register the mark VAGISAN for "pharmaceutical preparations, namely, vaginal moisturizers, vaginal anti-fungal preparations, vaginal washes; sanitary preparations for medical use; diet pills, diet capsules, diet liquid medications" in Class 5 and "soaps, perfumery, essential oils, cosmetics, hair lotions" in Class 3.

23. Defendant's registration application displays the VAGISAN mark in standard characters and does not include any stylization, colors, company/house name, packaging, or any other elements.

24. On March 7, 2013, plaintiff filed Opposition No. 91209708 before the Trademark Trial and Appeal Board ("the TTAB") against defendant's application for the VAGISAN mark.

25. On June 19, 2017, the TTAB issued a final decision dismissing plaintiff's opposition against defendant's application for the VAGISAN mark on the ground that plaintiff had failed to prove (i) that defendant's use of the VAGISAN mark in United States commerce would create a likelihood of confusion with plaintiff's VAGISIL mark or (ii) that defendant lacked a bona fide intent to use the VAGISAN mark in United States commerce.

26. On August 21, 2017, plaintiff filed this action appealing the TTAB's decision to this Court pursuant to 15 U.S.C. § 1071(b)(1) and asserting additional counts of trademark infringement, unfair competition, and dilution under the Lanham Act; trademark infringement under the Virginia...