Combe Inc. v. Dr. Aug. Wolff GMBH & Co.
This text of 382 F. Supp. 3d 429 (Combe Inc. v. Dr. Aug. Wolff GMBH & Co.) is published on Counsel Stack Legal Research, covering District Court, E.D. Virginia primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.
Opinion
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
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
*4364. 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.
*43714. 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 ,
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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
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
*4364. 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.
*43714. 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 *438against 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
27. On January 2, 2018, defendant moved to dismiss all counts of plaintiff's Complaint, except for the count appealing the TTAB's decision, on the ground that defendant currently does not use the VAGISAN mark in United States commerce and has no imminent plans to do so. By Memorandum Opinion and Order issued March 28, 2018, defendant's motion to dismiss was granted, and all counts of the Complaint were dismissed except for plaintiff's appeal of the TTAB decision. See Combe Inc. v. Dr. August Wolff GmbH & Co. KG Arzneimittel ,
28. After all Counts of plaintiff's Complaint other than the TTAB appeal had been dismissed, plaintiff retained Mr. Hal Poret to conduct two consumer surveys to test: (i) whether the VAGISIL mark is famous ("the Fame Survey") and (ii) whether there is a likelihood of confusion between the VAGISIL and VAGISAN marks ("the Confusion Survey").
29. Mr. Poret is a professional consumer survey researcher and consultant who has designed, conducted, and analyzed over one thousand consumer surveys, hundreds of which involved trademarks. Mr. Poret's surveys and expert opinions have been admitted as evidence by numerous federal courts, including the Eastern District of Virginia.1
30. The Fame Survey questioned three hundred United States consumers, both women and men, age eighteen and older, and tested both aided and unaided awareness of the VAGISIL mark in connection with vaginal care products. Unaided awareness is a measure of the number of consumers who express knowledge of a brand name without being shown the brand name. Aided awareness is a measure of the number of consumers who express recognition of a brand name after being shown the brand name.
31. In the unaided portion of the survey, respondents were asked to list all brands of vaginal care products that they had ever seen or heard of. In total, 38.7% of all respondents named VAGISIL in this unaided portion of the survey. VAGISIL was named more frequently than any other brand, with SUMMER'S EVE being named the second greatest number of times by 26% of all respondents.2
*43932. Next, in the aided portion, respondents were shown a total of eight brand names, one at a time and in random order, and were asked whether or not they had ever seen or heard of the name in connection with any vaginal care product. The brand names shown to respondents in this portion included VAGISIL; other well-known brands MONISTAT and SUMMER'S EVE; lesser-known brands REPLENS, LUVENA, SWEET SPOT, and VAGI-GARD; and a fictitious brand VAGIZOX, which served as the control. In total, VAGISIL was recognized by more respondents than any other brand name shown in the survey, with 90% of all respondents recognizing VAGISIL. Only 5.3% of respondents stated they had seen or heard of the control, VAGIZOX, in connection with any vaginal care product. Accordingly, the Fame Survey reported a net awareness rate of 85% for VAGISIL; that is, it reflected that 85% of respondents recognized VAGISIL specifically because of the mark's fame and not because of other factors.
33. The Confusion Survey questioned four hundred female consumers of vaginal moisturizers, vaginal washes, or vaginal anti-fungal products.
34. The Confusion Survey utilized the well-established Eveready3 format for likelihood of confusion surveys. Specifically, the survey first presented the VAGISAN mark to the two hundred respondents who were in the test group and then asked those respondents a series of standard Eveready questions to measure various forms of confusion between VAGISAN and other brand names.4 The Confusion Survey never mentioned or showed the VAGISIL mark to respondents.
35. The Confusion Survey showed the test group respondents the VAGISAN mark as the mark appears on defendant's application to register the mark: in a plain, block letter format, without any trade dress, stylization, special font, colors, company name, packaging, or any other distinctive elements and with the description "vaginal moisturizers, vaginal washes and vaginal anti-fungal products."
36. The Confusion Survey was also administered to two hundred respondents in a control group, who were shown the fictitious name VAGIPUR instead of VAGISAN. VAGIPUR was shown to the control group respondents in a plain, block letter format, without any trade dress, stylization, special font, colors, company name, packaging, or any other distinctive elements and with the description "vaginal moisturizers, vaginal washes and vaginal anti-fungal products."
37. When presented with the VAGISAN mark, 37% of the respondents in the test group named VAGISIL in response to the confusion questions. In the control group, 18% of the respondents named VAGISIL after they were shown the VAGIPUR mark and were asked the confusion questions. Accordingly, the Confusion Survey reported a net confusion rate of 19% between VAGISAN and VAGISIL; that is, it reflected that 19% of respondents *440confused VAGISAN with VAGISIL specifically because of the marks' similarity and not because of other factors.
38. Defendant did not present any survey evidence to rebut plaintiff's survey measurements of the VAGISIL mark's fame or the rate of confusion between the VAGISAN and VAGISIL marks. Instead, defendant introduced Dr. Itamar Simonson's criticisms of the Fame and Confusion Surveys.
39. Dr. Simonson is a professor of marketing and consumer decision-making and has an expertise in the field of researching consumer behavior, including consumer survey methodology. Dr. Simonson has also conducted many consumer surveys.
40. Dr. Simonson submitted an expert report and gave testimony at trial in which Dr. Simonson opined that the two surveys submitted by plaintiff were unreliable because the surveys were flawed in certain key respects. In particular, Dr. Simonson opined that the Fame Survey used an improper control and that the Confusion Survey failed to replicate market conditions and used an improper control.
41. Defendant submitted evidence reflecting that certain marks that are similar to VAGISIL are used by third parties in connection with goods sold in United States commerce.5 The following table includes the names of these third-party marks, as well as the evidence of sales revenues and advertising expenditures that correspond to each of the marks.
*441Mark Sales Revenues Advertising Nature of Products Expenditures 1. VAGITONE $3,278 in 2014; None. Anti-itch and antiodor $3,237 in 2015; formula. $1,300 in 2016; $943 in 2017; and $346 in 2018. 2. VAGIFRESH $690 in 2015; None. Moisturizer, wash. $958 in 2016; and $500 in 2018. 3. VAGI-CURE $1,440 in 2013; None. Anti-itch cream. $15,629 in 2014; $14,760 in 2015; $0 in 2016; and $3,788 in 2017. Product has been discontinued. 4. VAGI-CLEAR $3,517 in 2015; $988 in 2015; Anti-itch formula. $3,796 in 2016; $850 in 2016; $3,666 in 2017; and $869 in 2017; $1,392 in 2018. and $342 in 2018. 5. VAGIKOOL $24.95 in 2015; $1,800 in 2016; Reusable cold packs. $29,006 in 2016; $10,467 in 2017; $54,475 in 2017; and $12,194 in 2018. $39,724 in 2018. 6. VAGIFIRM None beyond one None. Tightening product purchased by supplements. defendant's counsel. 7. VAGI-SOOTHE $2,109 in 2015; $988 in 2015; Anti-itch formula. $3,505 in 2016; $850 in 2016; $5,309 in 2017; and $869 in 2017; and $1,358 in 2018. $342 in 2018. 8. VAGI-PAL None beyond one None. Anti-irritation deep product purchased by treatment bath. defendant's counsel. 9. VAGICAL $271 in 2016; None. Anti-irritation insert. $367 in 2017; and $175 in 2018. 10. VAGICARE None beyond one None. Probiotic pill to product purchased by prevent irritation. defendant's counsel. 11. VAGI-SITZ None beyond one None. Bath kits for draining product purchased by cysts. defendant's counsel.
There is no evidence that products sold under the brands VAGI-CLEAR, VAGISOOTHE, VAGIKOOL, VAGITONE, VAGI-FIRM, VAGICAL, or VAGIPAL are sold in any brick and mortar stores. Further, defendant's counsel purchased the VAGICARE product from a Canadian website using Canadian dollars and could not identify any United States websites or stores that carry the product.
42. In addition, during the underlying proceeding before the TTAB, defendant's counsel purchased one product sold under each of the following marks: VAGICREAM, *442VAGI-CARE, and VAGI-SILK. There is no evidence that these products continue to be sold in the United States, that these products have ever been sold to anyone in the United States other than defendant's counsel, or that these products have been advertised to consumers in the United States.
43. Plaintiff purchased the marks VAGISTAT, VAGISTAT-1, VAGISTAT-3 in May 2017 and has begun to sell VAGISTAT products in packaging labeled "VAGISTAT by VAGISIL Brand." Those marks were previously used by a different company in connection with the sale of a product to treat yeast infections.
44. Several prominent mass merchandising and drug stores, with nationwide locations, sell a generic vaginal anti-itch cream that is labeled "Vagicaine" and is also marked by the store's private-label brand (e.g. , EQUATE, UP & UP, RITE AID, and CVS). These stores have sold millions of dollars in "Vagicaine" products since 2009. Specifically, Rite-Aid has sold $ 2,545,090 of RITE-AID-branded "Vagicaine" products since 2009; CVS has sold $ 1,380,979 of CVS-branded "Vagicaine" products since 2016; Target has sold [sales figure submitted under seal] of UP & UP-branded "Vagicaine" products since 2013; and Walmart has sold $ 8,622,304 of EQUATE-branded products since 2014. There is no evidence that any of these stores advertise their private-label "Vagicaine" products to consumers.
45. The following table includes additional marks that third parties have registered and applied to register with the PTO. There is no evidence that any products have ever been sold to anyone in the United States in connection with these marks or that these marks have been advertised to consumers in the United States.
*443Mark Registration/Application Nature of Goods or Services 1. VAGILIFT Live registration. Performing cosmetic surgical procedures for vaginal rejuvenation. 2. VAGI-WAVE Live registration. Tampons, feminine hygiene pads, vaginal exercisers and dilators, and physical therapy advice. 3. VAGI-HEX Live registration. Pharmaceutical preparations in tablet form for the treatment of vaginal conditions. 4. VAGI-GARD Live registration. Topical treatment for yeast infections, medicated douches, medicated powder, medicated creams, lubricants, and suppositories. 5. VAGIFEM Live registration. Pharmaceutical, gynecological preparations and applicators for the treatment of menopausal disorders. 6. VAGITOCIN Live registration. Pharmaceutical preparations in the form of gel for local application in the vagina to treat fragile, bleeding, or atrophic mucous membranes. 7. VAGITAMIN Application pending. Vitamin supplements, vitamin tablets, vitamins, gummy vitamins, and multi-vitamin preparations. 8. VAGISERT Application pending. Vaginal antifungal preparations. 9. VAGICLICK Live registration. Medical apparatus for application of flowable pharmaceutical preparations for the skin. 10. VAGICIAN Live registration. Body waxing services for the human body. 11. VAGICONS Live registration. Belts, bottoms, hats, hoods, jackets, ties, and tops.
46. Defendant also submitted PTO records reflecting that the following applications and registrations have been cancelled, are expired, or are otherwise inactive or "dead": VAGICAP, VAGICLEANZ, VAGISOOTHIES, VAGI-NEX, VAGINEX, VAGIPILLS, VAGIFORM, VAGICULT, VAGIDINE, VAGICORT, VAGINOLA, VAGILIA, VAGITENE, VAGINOSTIC, VAGITROL, VAGISPROIN, VAGIMINE, VAGISEC, VAGISEC PLUS, VAGITAB, VAGISOL, VAGILAC, VAGINOME, VAGISTEAM, VAGITRACE, VAGIPEARL, VAGISSAGE, VAGINUE, VAGIWEAR, VAGISOL, VAGINORM, VAGIANT, VAGINOL, VAGITARIAN, VAGI-C, VAGIGRAPH, VAGIMETER, VAGICON, and VAGICANE.
II. CONCLUSIONS OF LAW
Pursuant to
In the instant § 1071(b) action, plaintiff contends that the TTAB erred in determining that defendant's VAGISAN mark is not likely to cause confusion with plaintiff's VAGISIL mark and that the VAGISAN mark is therefore registrable. The Lanham Act provides that denial of an application to register a mark is warranted when the mark "so resembles a mark registered in the Patent and Trademark Office ... as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive."
(1) the strength or distinctiveness of the senior mark as actually used in the marketplace;
(2) the similarity of the two marks to consumers;
(3) the similarity of the goods or services that the marks identify;
(4) the similarity of the facilities used by the markholders;
(5) the similarity of advertising used by the markholders;
(6) the defendant's intent;
(7) actual confusion;
(8) the quality of the defendant's product; and
(9) the sophistication of the consuming public.
It is well-settled that these nine factors are not all equally important and that certain factors may not be relevant in a given case. George & Co. LLC v. Imagination Entertainment Ltd. ,
Before proceeding to apply these factors, it is important to resolve the parties' threshold dispute whether the likelihood of confusion analysis in this § 1071(b) action should be based on the VAGISAN mark as depicted and described in the application or as used in the marketplace. Plaintiff's argument is correct; because this case involves only the issue whether defendant's mark, VAGISAN, is registrable, the likelihood of confusion factors must take into account only the depiction and description of the VAGISAN mark contained in defendant's application to register the mark, not defendant's actual use of VAGISAN in the marketplace.
It is clear that in a registration opposition proceeding before the TTAB, the likelihood of confusion analysis considers only "the mark as shown in the application and as used on the goods described in the application ... not the mark as actually used." B & B Hardware, Inc. v. Hargis Indus., Inc. , --- U.S. ----,
*445Seacret Spa Int'l v. Lee , No. 1:15CV405(JCC/IDD),
The Seacret Spa court's reasoning is persuasive, and thus guides the analysis here, because if the district court determines that the applied-for mark is registrable, the markholder receives rights and protections in the mark that cover all possible presentations and usages of the mark, restricted only by the limitations in the application itself.7 For example, "[i]f the registrant ... obtains a standard character mark without claim to any particular font, style, size or color, the registrant is entitled to depictions of the standard character mark regardless of font style, size, or color." Citigroup Inc. v. Capital City Bank Group Inc. ,
Seeking to avoid this conclusion, defendant argues that the Fourth Circuit in Swatch ,
To recapitulate, analysis whether VAGISAN is likely to cause confusion with VAGISIL, and is thus ineligible for registration, proceeds by applying each of the nine likelihood of confusion factors to the parties' marks. And pursuant to persuasive precedent from the Eastern District of Virginia, this analysis considers only the descriptions of VAGISAN and the limitations on usage of the mark that are included in defendant's application, without taking into account any narrower uses of the VAGISAN mark in the marketplace.
1. The Strength or Distinctiveness of the Senior Mark
The first likelihood of confusion factor focuses on the strength of the senior mark, VAGISIL, and is " 'paramount' in determining the likelihood of confusion." Grayson O Co. v. Agadir Int'l LLC ,
A mark's "strength" is measured by "the degree to which a consumer in the relevant population, upon encountering the mark, would associate the mark with a unique source." CareFirst ,
A.
A mark's "conceptual or inherent strength" is determined by "focus[ing] on the linguistic or graphical 'peculiarity' of the mark [ ] considered in relation to the product, service, or collective organization to which the mark attaches."
With respect to the first factor, a mark's conceptual strength "is determined in part by its placement into one of four categories of distinctiveness: (1) generic; (2) descriptive; (3) suggestive; or (4) arbitrary or fanciful." George & Co. ,
As an initial matter, it is important to note that the PTO has issued plaintiff numerous registrations for the VAGISIL mark without requiring proof of secondary meaning. In so doing, the PTO concluded the mark was suggestive, not descriptive, and the PTO's determination creates a rebuttable presumption that VAGISIL is in fact suggestive. See Synergistic Int'l, LLC v. Korman ,
Evaluation of the VAGISIL mark confirms that is a suggestive mark, as the PTO concluded. As a whole, "Vagisil" is a made-up word that does not directly "describe a function, use, characteristic, size, or intended purpose" of the feminine care products sold under the mark. Sara Lee ,
*448But concluding that VAGISIL is a suggestive mark does not end the analysis of the mark's conceptual strength. The Fourth Circuit has made clear that even a suggestive mark's conceptual strength is diminished if many third parties in the same field as the mark holder have used a portion of the text of the senior mark in their own marks. CareFirst ,
In the instant case, defendant has submitted evidence of approximately sixty-six third-party marks containing "vagi-" as a prefix, including sixteen marks used in commerce, eleven live registrations and applications, and thirty-nine applications and registrations that are cancelled, expired, or otherwise "dead." See supra , Findings of Fact ¶¶ 41-16. This evidence reflects that a significant number of third parties have at one time or another used a mark that is similar to VAGISIL, many of which were used in connection with vaginal care products. Indeed, the number of similar third-party marks introduced by defendant in this case is comparable to the amount that other courts have deemed sufficient to weaken the distinctiveness of a mark. See Petro Stopping Centers, L.P. v. James River Petroleum , Inc. ,
In response, plaintiff advances two arguments aimed at showing that this evidence of third-party marks is entitled to little weight. First, plaintiff argues that these third-party marks are not sufficiently similar to VAGISIL to weaken VAGISIL's conceptual strength because none of them contain a "vagi-" prefix, then an "s", then a vowel, and then a consonant. This argument fails because plaintiff has pointed to no authority for the proposition that third-party marks must share such a close degree of similarity to be relevant. To the contrary, courts have concluded that extensive third-party use of a component of the plaintiff's mark, such as the prefix, undermines the conceptual strength of the plaintiff's mark as a whole.9
Second, plaintiff argues that the evidence of similar third-party marks submitted by defendant is insufficient to weaken the strength of VAGISIL because most of these third-party marks are commercially *449insignificant. This argument fails in the conceptual strength context10 because it is well-established that, even without evidence of commercial impact, the widespread use of similar marks by third parties is "powerful on its face" to weaken the inherent distinctiveness of the plaintiff's mark. Juice Generation, Inc. v. GS Enterprises LLC ,
In sum, although VAGISIL is a suggestive mark, the prevalent use of similar "vagi-" prefix marks by third parties weakens the conceptual strength of VAGISIL. Analysis thus proceeds to consider the second prong of the inquiry into VAGISIL's overall strength, namely the VAGISIL mark's commercial strength.
B.
The commercial strength of a mark is measured by determining whether, in the marketplace, "a substantial number of present or prospective customers understand the designation when used in connection with a business to refer to a particular person or business enterprise." CareFirst ,
Here, the evidence submitted by plaintiff demonstrates that the VAGISIL brand has enjoyed considerable commercial success and that a substantial portion of the consuming public understands the VAGISIL mark as signifying a particular source for vaginal care products. VAGISIL-branded products are sold nationwide in a wide assortment of dollar stores, drug stores, grocery stores, mass merchandising stores, pharmacies, and e-tailers. See supra , *450Findings of Fact ¶ 7. Since 1991, VAGISIL-branded products have generated over one billion dollars in sales revenue and have commanded 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. And since 2010, VAGISIL has had at least 94% market share in the medicated wipes segment. See id. ¶ 5.
Perhaps even more telling of VAGISIL's commercial success is the persuasive marketing data from the past year reflecting that in the broad intimate-health product category, which includes segments in which VAGISIL-branded products do not compete, VAGISIL-branded anti-itch cream ranks fifth in sales revenue and VAGISIL-branded wash ranks sixth. In the segments where VAGISIL-branded products do compete, the data are even more impressive. In the anti-itch cream segment, VAGISIL-branded anti-itch cream is ranked first in both units sold and sales revenue. In the anti-itch wipe segment, VAGISIL-branded wipes occupy the top two ranks in both units sold and sales revenue. In the intimate wash segment, VAGISIL-branded washes are ranked first and second in sales revenue and first and third in units sold. In the intimate powder segment, VAGISIL-branded powder ranks first in both units sold and sales revenue. In the moisturizing lubricant segment, VAGISIL-branded moisturizing lubricant ranks third in both units sold and sales revenue. See id. ¶ 6.
In addition to sales, the VAGISIL brand has attained substantial public recognition through widespread advertising and unsolicited media attention. Plaintiff has marketed the VAGISIL brand for over forty years through numerous forms of media, including print, television, radio, the Internet, events, public relations campaigns, coupons, samples, and displays in stores. See id. ¶¶ 11-16. Since 1993, plaintiff has spent over $ 425 million advertising and promoting VAGISIL-branded products to the general consuming public, which is comparable to the amount spent on advertising by other major intimate-health brands, including KY and Plan B, and exceeds spending by some of VAGISIL's key competitors, such as SUMMER'S EVE and REPLENS. See id. ¶¶ 11-12. Prominent television stations have aired over ninety VAGISIL commercials, over one-hundred radio stations have featured VAGISIL promotions, and online advertisements for VAGISIL generate millions of impressions by Internet users each year. See id. ¶¶ 13, 14, 16. In addition, the VAGISIL brand has been mentioned in several popular, nationally televised television programs, including episodes of South Park and The Big Bang Theory , and the VAGISIL brand was the subject of an entire skit on Saturday Night Live . See id. ¶ 17. VAGISIL products have also been the subjects of articles in leading national publications, including The New York Times, The Wall Street Journal , and The Washington Post . See id. ¶ 18.
This evidence convincingly demonstrates that the VAGISIL brand is one of the most commercially successful brands for intimate-health products on the market and has enjoyed substantial, nationwide publicity. The sales figures alone exceed those that courts have found to be indicative of fame. See, e.g. , Nina Ricci, S.A.R.L. v. E.T.F. Enterprises, Inc. ,
*451Further evidence of VAGISIL's commercial strength is the evidence plaintiff introduced of the survey conducted by Mr. Hal Poret designed to test whether the VAGISIL mark is famous. See supra , Findings of Fact ¶¶ 30-32. The results of the Fame Survey provide substantial empirical data to reinforce the conclusion that the VAGISIL brand is well-recognized by consumers. In the unaided portion of the Fame Survey, three hundred United States consumers, both men and women, were asked to list all brands of vaginal care products that they had ever seen or heard of. VAGISIL was named by a total of 38.7% of the survey respondents, which was a far greater level of unaided awareness than any other brand that was mentioned.12 In the aided portion of the Fame Survey, the survey respondents were shown eight brand names, one at a time and in random order, and were asked whether they had ever seen or heard of the name in connection with any vaginal care product. The eight names included VAGISIL, along with an assortment of well-known vaginal care product names, lesser known but commonly available product names, relatively unknown product names, and a fictional product name, VAGIZOX, which served as the control. VAGISIL was recognized by 90% of all respondents, which was a far higher rate of recognition than any of the other seven brand names received. Only 5.3% of respondents stated they had seen or heard of the control, VAGIZOX, in connection with any vaginal care product. Accordingly, the Fame Survey reported a net awareness rate of 85% for VAGISIL; i.e. it reflected that 85% of respondents recognized VAGISIL specifically because of the mark's fame and not because of other factors.
The results of the Fame Survey are substantial and certainly support a finding that the VAGISIL mark is commercially famous. Indeed, the 38.7% level of unaided awareness and the 85% rate of net aided recognition that VAGISIL received in the survey far surpass the degree of recognition from similar surveys that courts have found sufficient to demonstrate the commercial strength of a mark. See, e.g. , Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev. ,
Seeking to diminish the force of this evidence, defendant argues (i) that the existence of similarly named third-party marks weaken the commercial strength of VAGISL and (ii) that plaintiff's Fame Survey suffers from certain defects that call into question the level of consumer awareness of VAGISIL reported by the survey.
*452These arguments are dispensed with in turn.
First, defendant argues that the use of marks containing a "vagi-" prefix by third parties demonstrate that plaintiff's VAGISIL mark is commercially weak. This argument fails because it is well-established that the existence of similar third-party marks alone is insufficient to demonstrate that a mark is commercially weak; the impact of third-party marks on the commercial strength of the senior mark depends wholly on the extent to which they are used and promoted by third-parties and are recognized by consumers.13 The reason for this principle is simple. Evidence that other sellers in the same industry as the plaintiff extensively use marks that are similar to the plaintiff's mark shows that "consumers may not 'associate [the plaintiff's] mark with a unique source,' " and that plaintiff's mark is thus commercially weak. Variety Stores , 888 F.3d at 664 (quoting Grayson O ,
Here, the evidence demonstrates that the third-party marks relied upon by defendant are commercially insignificant and thus do not materially weaken the commercial strength of plaintiff's VAGISIL mark. Defendant presented no evidence to establish that the majority of the sixty-six third-party "vagi-" prefix marks submitted by defendant have ever been sold or promoted in the United States. Indeed, thirty-nine of these marks appear to correspond to registrations and applications that are cancelled, are expired, or are otherwise "dead," while eleven others appear to be *453live registrations or applications for which there is no evidence that the marks have ever been used in commerce. See supra , Findings of Fact ¶¶ 45-46.
Furthermore, fourteen of the fifteen marks that defendant established are used by third parties in commerce15 appear to have achieved extremely limited sales, promotion, and recognition by consumers. With respect to seven of these marks, the only sale defendant could identify was a single purchase made by defendant's defense team during the course of litigating this case. Id. ¶¶ 40-41. Five other marks appear to have generated between $ 0 and $ 5,309 in annual sales and between $ 0 and $ 988 in annual advertising spending during the last five years. Id. ¶ 40. Another brand, VAGI-CURE, garnered between $ 0 and $ 15,629 in sales from 2013 to 2017, with no evidence of advertising expenditures, but the product sold in connection with that brand has since been discontinued. Id. The VAGIKOOL brand has generated slightly higher sales and advertising numbers-between $ 25 and $ 54,475 in annual sales and between $ 0 and $ 12,194 in annual advertising since 2015. Id. But the evidence also reflects that VAGIKOOL is used in connection with the sale and promotion of reusable cold packs, which are not closely competitive with the types of personal care products that are sold under the VAGISIL brand. In sum, the evidence reflects that none of these third-party marks are used in commerce in connection with products that are extensively sold, advertised, or otherwise recognized by consumers and that some of these marks were used in connection with products that are not sufficiently similar to VAGISIL-branded products.16 Thus, the evidence of third-party use submitted by defendant is entitled to minimal weight and certainly does not diminish the strong evidence of VAGISIL's commercial strength. See CAE ,
In addition to these commercially insignificant marks, defendant also introduced evidence that several prominent mass merchandising and drug stores have generated substantial sales in connection with a generic vaginal anti-itch cream that is sold in packaging labeled "Vagicaine." Notwithstanding the significant sales of these "Vagicaine" products, this evidence is entitled to little weight because the packaging of each of these generic "Vagicaine" products prominently features the store's private-label *454brand (i.e. , EQUATE, UP & UP, RITE AID, and CVS). Courts have sensibly concluded in trade dress infringement cases that consumers focus on these well-known, store-specific signatures to identify the store as the source of the generic, private-label products and to distinguish these generic products from the name brand products they are designed to imitate. See McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC ,
Defendant's second set of arguments aimed at attacking the evidence of VAGISIL's commercial strength include two criticisms of the methodology utilized by Mr. Poret's Fame Survey. First, defendant argues that the aided portion of the Fame Survey used a poor control, which caused the survey to report an inflated net rate of consumer recognition of VAGISIL. In particular, according to defendant's expert, Dr. Simonson, the "VAGIZOX" control does not sound like a plausible name for a vaginal care product because "-zox" is an uncommon suffix for health, beauty, or feminine care products. Thus, Dr. Simonson explained, the VAGIZOX control would not adequately measure or capture spurious awareness-i.e. the tendency of respondents to answer that they are aware of a brand name even if they have not have heard of it-because respondents would be able to tell VAGIZOX is a fake brand name.
This criticism is unpersuasive. The VAGIZOX control included a "vagi-" prefix, like other marks registered in connection with vaginal care products. And plaintiff adduced evidence at trial that other marks including "-zox" and "-ox" have been registered and used in connection with pharmaceutical products.18 In the end, defendant presented no empirical evidence to support its argument that consumers find the "-zox" suffix strange or to demonstrate that a different control would have detected a higher level of spurious awareness.19 Indeed, *455Mr. Poret testified that the 5.3% awareness rate recorded in connection with the VAGIZOX control is consistent with his experience of measuring spurious awareness in brand recognition surveys. Thus, it appears that there is no basis to conclude that VAGIZOX was an implausible brand name or that it was an ineffective control.
Second, defendant argues that the aided portion of the Fame Survey should have used more than one control to detect and measure spurious, mistaken awareness. According to Dr. Simonson, every potential brand name has certain idiosyncrasies that prevent it from serving as a proper control. Thus, it would have been preferable for the Fame Survey to have included additional fictitious control names so that the recognition rates of each of these controls could have been averaged together to produce a more reliable estimate of the spurious, mistaken awareness that occurred in the survey.
Although Dr. Simonson's recommendation appears to be conceptually sensible, it does little to undermine the reliability of the Fame Survey. Indeed, defendant presented no empirical evidence, such as a survey implementing Dr. Simonson's views, to demonstrate that using multiple controls would have measured a materially higher rate of spurious awareness. Furthermore, as Mr. Poret testified at trial, the inclusion of existing but relatively unknown brand names in the aided portion of the Fame Survey served a control-like function and showed that the VAGIZOX control was not materially underestimating the rate of spurious awareness present in the survey. In particular, the fact that the survey reported meager recognition rates of between 5% and 18% for SWEETSPOT, LUVENA, and VAGI-GARD demonstrated that the survey was not reporting inflated, artificially high recognition rates for unknown marks. Thus, the 85% net recognition rate of VAGISIL cannot be explained by spurious awareness, and there is no ground on which to conclude that the inclusion of additional control terms in the Fame Survey would have materially altered this result.
In any event, the force of defendant's two criticisms of the aided portion of the Fame Survey is significantly blunted by the convincing results of the survey's unaided portion, which defendant has not attempted to attack. Clearly, the fact that 38.7% of survey respondents named VAGISIL as a brand name they knew without any type of prompting goes a long way to dispel the concern that the aided portion's report of an 85% net awareness rate of VAGISIL is unreliable.
In summary, the above evidence of VAGISIL's sales, marketing, unsolicited media attention, and brand recognition by consumers persuasively demonstrates that VAGISIL is a famous mark that has attained substantial commercial strength in the marketplace.
C.
Importantly, the parties dispute whether conceptual strength or commercial strength carries more weight in the overall determination of a senior mark's strength. On this issue, the Fourth Circuit has held that "in certain circumstances, the commercial strength of a mark can be more important than the conceptual strength." Variety Stores, Inc. v. Wal-Mart Stores, Inc. ,
As already discussed, plaintiff's evidence convincingly proves that VAGISIL has attained considerable commercial strength and that consumers associate the VAGISIL brand with plaintiff's products. Thus, assuming arguendo that the conceptual strength of the VAGISIL mark is weakened by the existence of similar third-party marks, see supra part l.A, the powerful evidence of VAGISIL's commercial strength is clearly sufficient here to demonstrate that VAGISIL is a strong, distinctive mark overall. Accordingly, the first likelihood of confusion factor, namely the strength of the senior mark, weighs heavily in favor of plaintiff.
2. The Similarity of the Two Marks
The second factor focuses on "whether there exists a similarity in sight, sound, and meaning which would result in confusion" between the two marks at issue. George & Co. ,
Compared as a whole, the marks VAGISIL and VAGISAN are closely similar in sight and sound. Both marks consist of "Vagis", then a vowel, and then a consonant. Indeed, only two of the seven letters differ between the marks. When read or heard, the words could easily be confused with one another, especially because the difference in spelling and pronunciation does not come until the very end of the words. Thus, although the marks are not identical, because VAGISIL and VAGISAN "are perceived similarly by the eye and ear," the marks are sufficiently similar in sight and sound to confuse consumers.22
*457Sara Lee ,
The meaning evoked by the two marks is also similar. Both VAGISIL and VAGISAN connote the vaginal area. See supra part 1.A. One of defendant's executives, Ms. Thevessen, testified at trial that the "-san" suffix of VAGISAN also refers to the Latin term for "health." But she admitted that she did not know whether consumers would also perceive VAGISAN to connote "health" because defendant has not conducted any consumer studies on the issue. In any event, it is doubtful whether the additional intended connotation of VAGISAN, i.e. health, would be recognized by consumers given the average consumer's lack of Latin fluency and in light of what is clearly the dominant connotation of both marks: the vaginal area of a woman's body. Thus, the marks share a highly similar meaning.
Accordingly, the close similarities in sight, sound, and meaning between the marks point persuasively to the conclusion that VAGISAN is sufficiently similar to VAGISIL to confuse consumers.
Defendant attempts to counter this conclusion by arguing that the "vagi-" prefix that is common to both VAGISIL and VAGISAN is weak, and thus consumers will distinguish the terms based on minor differences in the non-common components of the marks. Even assuming arguendo that the "vagi-" prefix is descriptive and thus conceptually weak, this argument fails for several reasons.
First, this argument conflicts with the "anti-dissection" rule that the Fourth Circuit has adopted with respect to analyzing the similarity of marks. As noted above, the "anti-dissection" rule "requires consideration of the marks as a whole, rather than the component parts of the marks." Sweetwater Brewing Co., LLC v. Great Am. Restaurants, Inc. ,
Second, courts that have held that consumers were likely to differentiate between marks based on minor differences reached that result based on the existence in the marketplace of multiple marks including the same descriptive component for similar goods. See, e.g. , Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L. U. ,
*458prefix is extensively used in commerce in connection with vaginal care products. To the contrary, the evidence makes clear that VAGISIL is the only "vagi-" prefix mark that is currently used in United States commerce in connection with the sale of vaginal care products of which most consumers are aware. Thus, because consumers are not faced with multiple "vagi-" prefix marks in the marketplace, there is no basis here on which to conclude that consumers are conditioned to distinguish between VAGISIL and VAGISAN based on minor differences in the non-common portions of the marks.23
Third, the other cases cited by defendant that concluded there was no likelihood of confusion between marks containing the same so-called "descriptive prefix" are inapposite here because the marks at issue in those cases contained non-common components that were sufficient to make the marks as a whole dissimilar.24 Here, for the reasons already stated, when compared as a whole, VAGISAN is confusingly similar to VAGISIL. Thus, unlike in the cases cited by defendant, the slight differences between the parties' marks here-the last two letters and a dubious reference to the Latin word sanitas -are insufficient to make the marks dissimilar overall.
In sum, when compared as a whole, VAGISAN is confusingly similar to VAGISIL, and defendant has not shown that consumers have been educated to distinguish between the marks based on minor differences. Accordingly, the second factor in the likelihood of confusion analysis weighs in favor of plaintiff.
3. The Similarity of the Goods or Services that the Marks Identify
The third factor focuses on the similarity of the goods sold in connection with the parties' marks. With respect to this factor, the Fourth Circuit has explained that "the goods in question need not be identical or in direct competition with each other" to be deemed similar. George & Co. ,
Here, the registrations for VAGISIL and registration application for VAGISAN reflect that certain goods covered by the parties' marks are identical, such as vaginal moisturizers and vaginal washes. In addition, the VAGISAN application lists "cosmetics," which is broad enough to encompass VAGISIL's registration for "cosmetics - namely, powders for feminine use." See In re Hughes Furniture Indus., Inc. ,
4. The Similarity of the Facilities Used by the Markholders
The fourth factor, similarity of the parties' facilities, examines "how and to whom the respective goods of the parties are sold," that is, "whether 'both products [are] sold in the same 'channels of trade.' ' " Rosetta Stone Ltd. v. Google, Inc. ,
5. The Similarity of the Advertising Used by the Markholders
On a similar note, the fifth factor, similarity of the parties' advertising, focuses on whether the parties "both employ similar media and target the same consumers" in connection with promoting their marks and marketing their products. Sara Lee ,
6. Defendant's Intent
The sixth likelihood of confusion factor focuses on whether "the junior *460user intended to capitalize on the good will associated with the senior user's mark." CareFirst ,
Here, plaintiff does not contend that defendant applied to register the VAGISAN mark with the intent to capitalize on the goodwill associated with plaintiff's VAGISIL mark. To the contrary, the evidence reflects that defendant has registered and used the VAGISAN mark since 1998 in other countries, including Germany, the United Kingdom, the Netherlands, and Poland. In those countries, defendant has displayed the VAGISAN mark on packaging that does not appear to be designed to resemble the trade dress used in connection with VAGISIL products.26 In any event, although this evidence supports a finding that defendant did not apply to register the VAGISAN mark with the intent to confuse consumers, the factor is accorded only minimal weight. See Pizzeria Uno ,
7. Actual Confusion
The seventh factor in the likelihood of confusion analysis is evidence of actual confusion between the senior and junior marks. Like the first factor, the strength of the senior mark, actual confusion is an important factor that weighs heavily in the overall likelihood of confusion analysis. See Sara Lee ,
Here, plaintiff did not present any anecdotal evidence, such as reports by United States consumers expressing confusion between the VAGISIL and VAGISAN marks. It is true that "the absence of any evidence of actual confusion over a substantial period of time ... creates a strong inference that there is no likelihood of confusion." CareFirst ,
In the absence of anecdotal evidence, plaintiff submitted a survey conducted by plaintiff's expert, Mr. Hal Poret, designed to test whether there is a likelihood of confusion between the VAGISIL and VAGISAN marks. See supra , Findings of Fact ¶¶ 33-37. Mr. Poret administered the Confusion Survey to four hundred female consumers of vaginal moisturizers, vaginal washes, or vaginal anti-fungal products. The Confusion Survey utilized the well-established Eveready28 methodology29 and first displayed the VAGISAN mark to the respondents who were in the test group and then asked those respondents a series of standard questions to measure various forms of confusion between VAGISAN and other brand names.30 After each of these *462questions, the survey gave the respondents the opportunity to explain why they selected their answer. The Confusion Survey never mentioned or showed the VAGISIL mark to the survey respondents. Importantly, the test group respondents were shown the VAGISAN mark as the mark appears on defendant's application to register the mark, i.e. in a plain, block letter format, without any trade dress, stylization, special font, colors, company name, packaging, or any other distinctive elements. After being presented with the VAGISAN mark, 37% of the respondents in the test group named VAGISIL in response to the confusion questions.
The Confusion Survey was also administered to respondents in a control group, who were shown the fictitious name VAGIPUR instead of VAGISAN. VAGIPUR was shown to the control group respondents in a plain, block letter format, without any trade dress, stylization, special font, colors, company name, packaging, or any other distinctive elements. In the control group, 18% of the respondents named VAGISIL after they were shown the VAGIPUR mark and were asked the confusion questions. Accordingly, the Confusion Survey reported a net confusion rate of 19% between VAGISAN and VAGISIL; i.e. , it reflected that 19% of respondents experienced confusion that was caused specifically by the marks' similarity and not by other factors.
The Confusion Survey provides persuasive empirical evidence of actual confusion between the parties' marks. First, the Eveready survey format used by the Confusion Survey has been widely accepted by courts and commentators as a reliable approach for surveying consumer confusion.31 The reliability of the Eveready format used in the Confusion Survey stems, in part, from the fact that the survey displays only the allegedly infringing mark and at no point shows or mentions the senior mark.32 This feature is particularly important where, as here, the plaintiff's senior mark is strong and widely-recognized. See Valador , 242 F. Supp. 3d at 464.
Second, the 19% net confusion rate reported by the Confusion Survey exceeds survey results that courts have found to be strong evidence of actual confusion. See Mutual of Omaha Ins. Co. v. Novak ,
Seeking to avoid this conclusion, defendant advances three criticisms aimed at discrediting the reliability of the Confusion Survey. First, defendant argues that the Confusion Survey is entitled to little weight because the survey did not replicate the marketplace conditions under which consumers are most likely to encounter the VAGISAN mark. In particular, defendant's expert, Dr. Simonson, testified that in order to obtain an accurate measurement of consumer confusion, the survey needed to display the VAGISAN mark (i) with the packaging used by defendant in other countries and (ii) side-by-side with the VAGISIL mark, as the products might appear if they were sold on the same shelf of a store.
This criticism is unpersuasive because it ignores the principle, already discussed extensively, that "the relevant inquiry in a registration proceeding involves the mark and usage described in the application rather than as they appear in the marketplace." Seacret Spa ,
*464See OMS Invs., Inc. v. Cent. Garden & Pet Co. ,
The second criticism argued by defendant is that the Confusion Survey used an improper control. The parties agree that an effective control serves the essential function of estimating the rate of survey responses appearing to reflect confusion that are in fact explained by survey "noise," i. e. some factor other than genuine confusion. Of particular importance in this case, which involved the well-known mark VAGISIL, the control needed to measure the survey's "demand effect," which relates to the number of survey respondents who would guess VAGISIL in response to the survey stimulus because they believe it is the expected answer. The parties also agree that to be effective, the selected control needed to be as similar to the test stimulus, VAGISAN, as possible but could not share the characteristic whose influence is being tested. Dr. Simonson, defendant's expert, opined at trial that the control used by Mr. Poret, VAGIPUR, violated these principles and was thus an improper control because it was not sufficiently similar to VAGISAN.
This criticism is entitled to little, if any, weight. Although it is conceivable that a different, more similar control could have been selected, the control used by Mr. Poret was adequate to measure survey "noise." In this case, plaintiff's hypothesis was that VAGISAN is confusingly similar to VAGISIL because both marks (i) begin with "vagis-", (ii) followed by a vowel (iii) and then a consonant. Thus, an effective control needed to be similar to VAGISAN without meeting those three criteria. VAGIPUR satisfied this requirement. Like VAGISAN, it began with "vagi" and thus also connoted the vaginal area of a woman's body. And as Mr. Poret noted, using a control beginning with "vagi" would capture the tendency of VAGISAN's "vagi-" prefix or the topic of vaginal care products to cause people to name VAGISIL. In addition, VAGIPUR held constant the length of VAGISAN and also included a consonant, then a vowel, and then a consonant after "vagi." Thus, the VAGIPUR control maintained a proper degree of similarity to the test stimulus without overlapping with the three criteria constituting the hypothesis tested by the survey.34
The results of the Confusion Survey further support the conclusion that the survey used an effective control. Mr. Poret testified that based on his substantial experience conducting Eveready studies, the 18% "noise" level captured by VAGIPUR was certainly robust. Furthermore, because defendant did not conduct its own survey using a different control, there is no empirical basis on which to conclude whether or to what degree a different control would have captured a materially higher level of survey noise. Accordingly, the evidence at trial convincingly establishes that the Confusion *465Survey used an adequate, even if imperfect, control and that the 19% net rate of confusion reliably reported the confusion caused by the similarity of VAGISAN to VAGISIL and not by other factors.
Defendant's third criticism is that plaintiff's expert, Mr. Poret, improperly tabulated certain survey respondents as confused when calculating the gross and net rates of confusion reported by the Confusion Survey. In this respect, defendant argues that a survey respondent in the test group who answered VAGISIL in response to the three Eveready questions designed to test confusion should not have been counted as confused if the respondent's answer to the follow-up "why?" question reflects that the respondent answered VAGISIL for reasons other than the similarity of VAGISAN. This argument fails because, as both parties' experts (Mr. Poret and Dr. Simonson) testified, an effective control already serves the function of estimating the number of respondents that will name VAGISIL for reasons other than the similarity between VAGISAN and VAGISIL. Thus, sifting through the respondent's open-ended responses, in addition to using a control, would improperly double-count survey "noise."
Moreover, as Mr. Poret persuasively explained at trial, the methodology advocated by defendant is scientifically inferior to using an effective control. Survey respondents are lay people who do not always know the actual reason that VAGISIL came to their mind when they saw the survey stimulus, and they often give explanations that are difficult to interpret objectively. Measuring the rate of confusion among survey respondents in the manner proposed by defendant is thus unreliable and calls for subjective judgment by the survey-administrator as to whether the respondents were truly confused.35
As already discussed, the Confusion Survey used an effective control term to account for survey "noise." Accordingly, because all four hundred respondents were asked identical questions after the test group was shown VAGISAN and the control group was shown VAGIPUR, the difference between the two groups' rate of naming VAGISIL must be caused by the similarity of VAGISAN to VAGISIL and not by other reasons. Put differently, by using an effective control, the Confusion Survey scientifically and objectively estimated the number of test group responses that were given for reasons other than genuine confusion. It is therefore unnecessary and unreliable to attempt to measure survey "noise" by evaluating the respondents' own suggestions of why they answered as they did.
In sum, the Confusion Survey submitted by plaintiff is reliable and is powerful evidence of actual confusion. Accordingly, the seventh factor weighs heavily in plaintiff's favor.
8. The Quality of Defendant's Product
The Fourth Circuit has explained that the eighth factor, the quality of defendant's products, is rarely applicable. Sara Lee ,
9. The Sophistication of the Consuming Public
Like factor eight, the Fourth Circuit has also held that the ninth factor, the sophistication of the consuming public, is often inapplicable.
Here, the evidence does not show persuasively that the typical consumer of vaginal care products sold in connection with the parties' marks is any more or less sophisticated than the typical consumer of ordinary retail goods. On the one hand, the evidence reflects that some consumers are embarrassed about vaginal dryness and other conditions treated by the parties' products. These consumers do not want to talk about the conditions treated by the parties' products, not even with physicians, and do not want to be seen buying the products that treat those conditions. As a result, such consumers often purchase the parties' products-which are sold over the counter for as little as $ 3.00-hastily without spending much time at the shelf to examine the products carefully. On the other hand, the evidence also shows that some consumers spend time prior to purchase carefully researching the parties' products and the conditions that those products are designed to treat. For example, plaintiff and other companies provide resources that educate women in a confidential setting about vaginal dryness and how the parties' products help to treat this condition.
Viewed in its entirety, this evidence reflects that consumers of the parties' products vary widely in their sophistication about the parties' products and the degree of care with which consumers purchase such products, as is characteristic of the market for most ordinary retail goods. Accordingly, because this factor does not clearly favor either party, and because it appears that the parties' products target the public at-large, the ninth likelihood of confusion factor is not entitled to significant weight in this case.
10. Conclusion
For the reasons stated above, application of the likelihood of confusion factors to the evidence submitted at trial convincingly supports a finding that the VAGISAN
*467mark that defendant applied to register "so resembles a mark registered in the Patent and Trademark Office," to wit: plaintiff's VAGISIL mark, "as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive." See
Therefore, pursuant to
Accordingly, judgment for plaintiff in this matter is granted.
An appropriate judgment will enter.
The Clerk is directed to send a copy of these Findings of Fact and Conclusions of Law to all counsel of record.
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