Finnegan, Henderson, Farabow, Garrett & Dunner has helped the maker of Vagisil products win a district court judgment blocking a competitor from registering Vagisan in the United States.

Vagisan is marketed in Europe by Germany's Dr. August Wolff GmbH & Co. The company persuaded the U.S. Patent and Trademark Office to register the mark in 2017. The PTO found that the “Vagi-” prefix is strongly suggestive of an intimate feminine care product, and already used by the likes of Vagitone, Vagifresh and Vagicaine. That overcame the commercial strength of Vagisil's mark.

Combe Inc., the maker of Vagisil, responded by hiring Finnegan and suing in the Eastern District of Virginia. The company presented evidence of more than $1 billion in sales, some 90 TV commercials and 100-plus radio ads. “It's been featured in South Park, the Big Bang Theory and, I think the coup de grace for a trademark, it had its own skit on Saturday Night Live,” Finnegan partner Douglas “Chip” Rettew said in an interview this week.

Combe also hired expert Hal Poret to run a consumer survey. It found that 38% of men and women named Vagisil, unprompted, when asked to list women's intimate care products. Ninety percent recognized the brand when it was used in a list.

Wait, they surveyed men, too? “We wanted to show that this mark is famous not just among buyers, but among the whole general public,” Rettew said. Judge T.S. Ellis agreed in a ruling made public this week following a December bench trial. That finding of fame will lend the mark special protections in future cases.

Dr. Wolff, which is represented by Arent Fox, presented Ellis with a list of 66 U.S. products that use “Vagi” in its prefix. Women take special care when making these purchases, partner Ross Panko told Ellis in closing arguments, and they know to focus on the suffix of the marks. “Because of this crowded field, there's no reason why Vagisan can't coexist with Vagisil just like Vagi-Soothe, Vagistat, Vagi-Sitz, Vagicaine and all these others have coexisted with it,” Panko said.

Rettew, who tried the case with Finnegan partner Anna Naydonov, obtained sales data showing that almost all of those other Vagis are tiny internet-only brands. Vagi-Soothe sold only $1,358 of its anti-itch formula in 2018, for example. Vagifresh sold $500 and Vagi-Sitz sold none beyond those purchased for research into the litigation, according to Ellis' findings.

In response to the special care argument, Rettew obtained admissions that many women are embarrassed about buying these products and don't want to be seen with them in a store. “And so grabbing it quickly off the shelves, there's more of a chance that they're gonna make a mistake,” he said.

Ellis ruled that the Vagisil mark is “a famous mark that enjoys substantial commercial strength.” He found that the third-party Vagi marks “are commercially insignificant” and do not materially weaken that strength. Overall, he found that the evidence weighs “heavily in favor of a determination that confusion would likely result if Vagisan were registered.”

So was it awkward litigating a case about women's intimate care?

“It is different than litigating a case involving sporting goods,” Rettew conceded. “But we played that to the strength of our case. That's exactly what we're talking about when we say this is the type of product that people grab and go when they're in a store. And that's why it's something that we have to make sure another company can't use a similar mark for, because there is high likelihood that people will confuse the brand.”