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District Court Reverses TTAB Dismissal of Opposition Partly Based on “Powerful” Survey Evidence

In the recent case, Combe Incorporated v. Dr. August Wolff GmbH & Co. KG Arzneimittel, Civil Action No. 1:17-cv-00935 (E.D. Va. May 23, 2019), the U.S. District Court for the Eastern District of Virginia reversed the TTAB’s 2017 dismissal of the opposition to register VAGISAN for various feminine hygiene products. For the opposition, Combe opposed the registration of VAGISAN stating that the mark would be likely to cause confusion with its own registered mark, VAGISIL. However, after considering the relevant du Pont factors, the TTAB found that Combe had failed to prove that the use of the VAGISAN mark in the United States would create a likelihood of confusion with Combe’s VAGISIL mark.

Soon after, Combe filed an appeal in federal district court arguing that the TTAB erred in their decision of not finding a likelihood of confusion. Since both parties submitted substantial new evidence in addition to the PTO record, a de novo review of the entire factual record was required. Combe’s new evidence included not only a consumer survey that tested whether the VAGISIL mark was famous, but also a consumer survey that measured whether there was a likelihood of confusion between the VAGISIL and VAGISAN marks.

The confusion survey utilized the well-established Eveready methodology and reported a net confusion rate of 19% between VAGISIL and VAGISAN, which was considered by the court to be probative of likelihood of confusion. In the end, the court held that the confusion survey was “reliable and is powerful evidence of actual confusion”, and accordingly assisted Combe in balancing a du Pont factor in their favor.

The above case demonstrates how consumer surveys can be persuasive and powerful pieces of evidence. For additional information on conducting likelihood of confusion surveys in the TTAB or federal court, please contact Jason Och at 781-250-6317 or joch@ams-inc.com.

Likelihood of Confusion

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