UNPUBLISHED
UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT
No. 19-1674
COMBE INCORPORATED,
Plaintiff – Appellee,
v.
DR. AUGUST WOLFF GMBH & CO. KG ARZNEIMITTEL,
Defendant – Appellant.
Appeal from the United States District Court for the Eastern District of Virginia, at Alexandria. T. S. Ellis, III, District Judge. (1:17-cv-00935-TSE-MSN)
Argued: January 28, 2021 Decided: April 13, 2021
Before AGEE, THACKER and QUATTLEBAUM, Circuit Judges.
Affirmed by unpublished per curiam opinion.
ARGUED: Ross Quinn Panko, ARENT FOX LLP, Washington, D.C., for Appellant. Douglas Anthony Rettew, FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP, Washington, D.C., for Appellee. ON BRIEF: Michael A. Grow, Laura E. Zell, ARENT FOX LLP, Washington, D.C., for Appellant. Anna B. Naydonov, Sydney N. English, FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP, Washington, D.C., for Appellee.
Unpublished opinions are not binding precedent in this circuit. PER CURIAM:
This case involves a trademark registration dispute between two makers of vaginal-
health and hygiene products that are marketed under the respective brands “Vagisil” and
“Vagisan.” Combe, Inc. (“Combe”), which owns the Vagisil mark, contended that
registration of Dr. August Wolff GMBH & Co. KG Arzneimittel’s (“Wolff”) Vagisan mark
would likely confuse consumers, and thus should be disallowed under the Lanham Act, 15
U.S.C. § 1051 et seq. The district court agreed with Combe. Wolff appeals. For the reasons
set out below, we affirm the judgment of the district court.
I.
Since the mid-1970s Combe has sold an array of women’s vaginal-health products
under the name “Vagisil.” In 1978, it registered “Vagisil” with the U.S. Patent and
Trademark Office (“PTO”) and has maintained ownership of a Vagisil mark covering
“pharmaceutical preparations,” particularly “medicated cremes,” ever since. J.A. 1336. In
subsequent years, Combe acquired ownership of additional registered Vagisil marks to
cover its expanded product line, which now includes vaginal-health powders, wipes,
washes, and moisturizers.
Since 1998 Wolff, a German-based company, has used the name “Vagisan” to sell
vaginal-health and hygiene products internationally. It owns several foreign trademark
registrations for Vagisan, but has not sold Vagisan products in the United States. Desiring
to enter the previously untapped American market, Wolff applied with the PTO to register
2 the unadorned, standard characters “VAGISAN” as a U.S. trademark for various
“pharmaceutical preparations” and other related products in 2012. J.A. 268.
Combe opposed the registration of Wolff’s mark, asserting Vagisan’s similarity to
Vagisil would create a likelihood of confusing consumers. The Trademark Trial & Appeals
Board (“TTAB”) dismissed Combe’s opposition and allowed Wolff to register the Vagisan
mark.
Thereafter, Combe filed a timely civil action under 15 U.S.C. § 1071(b) seeking to
have Wolff’s Vagisan mark cancelled. 1 After a bench trial, the district court found that
because the Vagisan mark presented a likelihood of confusing consumers, its registration
violated the Lanham Act. The district court entered judgment in favor of Combe, reversed
the TTAB ruling dismissing Combe’s opposition, and ordered refusal of Wolff’s
application to register the Vagisan mark.
Wolff noted a timely appeal, and the Court has jurisdiction under 28 U.S.C. § 1291
and 15 U.S.C. § 1121.
1 This provision of the Lanham Act authorizes individuals “dissatisfied with the decision of the [TTAB]” to allow registration of a mark to file a civil action to have the registration canceled and obtain other appropriate relief. 15 U.S.C. § 1071(b)(1). A § 1071(b) action is pursued in lieu of an appeal of the TTAB decision, which must be filed in the U.S. Court of Appeals for the Federal Circuit. See § 1071(a) and (b)(1). Therefore, a § 1071(b) action is a new proceeding, and the parties are permitted to submit new evidence beyond the TTAB record. See Kappos v. Hyatt, 566 U.S. 431, 439 (2012).
3 II.
The Lanham Act prohibits registration of a mark that “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.” 15 U.S.C. § 1052(d). This standard is met if the new mark is “likely to produce
confusion in the minds of consumers about the origin of the goods or services in question.”
Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 158 (4th Cir. 2014). “To determine
if there is a likelihood of confusion between two marks, we consider nine non-exhaustive
and non-mandatory factors,” which “serve as a guide rather than ‘a rigid formula’” and
“are not all of equal importance” or “relevant in every case.” Id. at 158–59 (quoting George
& Co., LLC v. Imagination Entm’t Ltd., 575 F.3d 383, 393–94 (4th Cir. 2009)).
The factors, how the district court weighed them, and their status on appeal are
represented below:
Factor 2 District Court Finding Status on Appeal
Strength or distinctiveness Favored Combe Challenged of the plaintiff’s mark
Similarity of the marks Favored Combe Challenged
Similarity of the goods or Favored Combe Unchallenged services the marks identify
Similarity of the Favored Combe Unchallenged markholders’ facilities
2 Drawn from Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984).
4 Similarity of the Favored Combe Unchallenged markholders’ advertising
Defendant’s intent Minimally favored Wolff Unchallenged
Actual confusion Favored Combe Challenged
Quality of the defendant’s Did not apply Unchallenged mark
Sophistication of the Neutral Challenged consuming public
Because the district court entered judgment in favor of Combe following a bench
trial, “the standard of review is a deferential one requiring appellate respect for the trial
court’s findings.” Petro Shopping Ctrs., L.P. v. James River Petroleum, Inc., 130 F.3d 88,
92 (4th Cir. 1997). “Likelihood of confusion is an inherently factual issue, and [the Court
reviews] district court determinations regarding it under a clearly erroneous standard.”
Swatch AG, 739 F.3d at 155 (internal quotation marks and alteration omitted); see Fed. R.
Civ. P. 52(a)(6) (“Findings of fact, whether based on oral or other evidence, must not be
set aside unless clearly erroneous, and the reviewing court must give due regard to the trial
court’s opportunity to judge the witnesses’ credibility.”). A district court’s finding is
“‘clearly erroneous’ when although there is evidence to support it, the reviewing court on
the entire evidence is left with the definite and firm conviction that a mistake has been
committed.” Anderson v. City of Bessemer City, N.C., 470 U.S. 564, 573 (1985).
5 III.
On appeal, Wolff challenges the district court’s determination that Combe had
shown a likelihood of confusing Vagisil and Vagisan. Specifically, it asserts the district
court erred in assessing four of the factors: strength or distinctiveness of the Vagisil mark,
similarity of the two marks, actual confusion, and sophistication of the consumer. We have
reviewed the record and conclude that the district court’s determinations were not clearly
erroneous as to any of these factors. 3 Accordingly, we will affirm the judgment of the
district court.
A. Strength of the Vagisil Mark
Wolff understandably spends a substantial time arguing that the district court erred
in finding that the strength of the mark factor favored Combe given that this is “[t]he first
and paramount factor” in the confusion assessment. Pizzeria Uno Corp. v. Temple, 747
F.2d 1522, 1527 (4th Cir. 1984). This factor assesses “the degree to which a consumer in
the relevant population, upon encountering the mark, would associate the mark with a
unique source.” CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263, 269 (4th Cir.
2006). “Generally, the stronger the mark, the greater the likelihood that consumers will be
confused by competing uses of the mark.” George & Co., 575 F.3d at 393.
A mark’s strength consists of two components: conceptual strength and commercial
strength. Id. Conceptual strength focuses on the mark’s own features, measuring its
3 Wolff raises multiple arguments criticizing the district court’s findings as to the four challenged factors. We have considered and rejected these arguments even though the opinion does not discuss all of them.
6 “inherent strength” based on “the linguistic or graphical ‘peculiarity’ of the mark,
considered in relation to the product . . . to which the mark attaches.” CareFirst, 434 F.3d
at 269 (quoting Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 124 (4th Cir. 1990)). In
assessing conceptual strength, marks are divided into four categories, in ascending order
of strength: generic (e.g., “bleach” or “copiers”), descriptive (e.g., “5 Minute glue”),
suggestive (e.g., “Coppertone®”), and arbitrary or fanciful (e.g., “Kodak®” or “Exxon®”).
George & Co., 575 F.3d. at 393–94. Separately, commercial strength “looks at the
marketplace and asks if in fact a substantial number of present or prospective customers
understand the designation when used in connection with a [product] to refer to a
particular” brand. CareFirst, 434 F.3d at 269 (internal quotation marks omitted). Assessing
commercial strength “entails a rigorous evidentiary standard” weighing six factors: “(1)
the plaintiff’s advertising expenditures; (2) consumer studies linking the mark to a source;
(3) the plaintiff’s record of sales success; (4) unsolicited media coverage of the plaintiff’s
business; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the
plaintiff’s use of the mark.” George & Co., 575 F.3d at 395.
To establish Vagisil’s commercial strength, Combe submitted scores of exhibits
documenting its promotional and advertising expenditures (exceeding $400 million since
1993); its significant sales revenue (exceeding $1 billion since 1991); its market dominance
in both percentage of and numeric rank within its markets (ranging from 50 to 94% of
certain products’ market share since the 1990s and several products ranking in the first and
second best-selling spots for their markets); its ubiquitous unsolicited media coverage
7 (ranging from serious print and other media coverage to being featured in a Saturday Night
Live sketch); and, of course, its ownership of the registered Vagisil mark since 1978.
In addition, Combe submitted a consumer study—the “fame survey”—conducted
by its expert witness, Hal Poret. The fame survey had “both an unaided awareness
measurement and then an aided awareness measurement.” J.A. 584. The unaided portion
asked respondents, who were both male and female, to name brands that came to mind
when thinking of a particular product; the aided portion “was measured by asking
respondents, one at a time, about eight different terms, one of which was ‘Vagisil,’ and the
others were a variety of other [brands] including [a] ‘control,’” Vagizox. J.A. 584. On the
unaided portion of the survey, 38.7% of the respondents named Vagisil, which Poret
testified was “a very high level, and basically that shows that it’s a very strong mark in
consumers’ consciousness in this area, because it came to mind for so many respondents
just upon mentioning the category.” J.A. 591. The response rate was even higher for
Vagisil’s targeted consumer, female respondents, with “over 50 percent” of women
responding “Vagisil” to the unaided portion of the survey. J.A. 591. (That said, Poret also
noted that Vagisil’s unaided response rate for men was indicative of commercial strength
given that it demonstrated their awareness of a product they would not use.) The results
were even higher for the aided portion of the survey, which showed 85% recognizability
even after being calibrated to account for false response rates by using the control’s aided
recognition rate.
For its part, Wolff proffered evidence to support its contention that Vagisil is a weak
mark. For instance, it introduced evidence relating to approximately sixty-six third-party
8 vaginal-health products that also used the same first four letters as Vagisil. And Wolff’s
expert witness testified that, in his view, the fame survey was improperly designed.
Specifically, he testified the survey was fundamentally flawed because it used only one
control when using more might capture a higher false recognition rate. He also opined that
the control was ineffective because it used an unusual suffix (“-zox”) that was too
dissimilar to any actual vaginal-health products.
The district court first found that Vagisil’s conceptual strength was “weakened” by
evidence of third-party products using the same first four letters. In its view, Vagisil is a
suggestive mark, meaning that it has “inherently distinctive” characteristics which do not
“describe a function, use, characteristic, size, or intended purpose” of the product, thus
requiring “some operation of the imagination to connect [the suggestive mark] with the
goods.” J.A. 282–83. Despite the comparative strength of a suggestive mark, the district
court observed that Vagisil’s strength was “weaken[ed]” by evidence that some sixty-six
third-party products began with the letters “vagi-.” J.A. 284.
What led the district court to find that, overall, the strength factor favored Combe
was the significant evidence of Vagisil’s commercial strength. In sum, it observed that the
evidence demonstrated Vagisil’s “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.” J.A. 286. The court viewed the fame survey’s results as
“substantial and certainly support[ing] a finding that the VAGISIL mark is commercially
famous.” J.A. 289. It rejected Wolff’s challenges to the fame survey, explaining that “the
existence of third-party marks alone is insufficient to demonstrate that a mark is
9 commercially weak” particularly where, as here, most of the marks were “commercially
insignificant” because they were either not in use or had “meager sales and advertising
figures.” J.A. 290–91. The court also concluded that the criticism of the survey’s design
was “unpersuasive” because Wolff had not introduced any empirical evidence to support
its expert’s view that the control’s name was strange or that a different or additional control
would have affected the results. J.A. 294.
On appeal, Wolff asserts the district court clearly erred in finding the strength factor
favored Combe. It does not challenge the district court’s conclusion that Vagisil was a
suggestive mark and that its conceptual strength was “weakened” by the existence of a
number of third-party marks using the same letters. Instead, Wolff argues the district court
should have recognized that the same evidence of third-party products beginning with
“vagi-” also demonstrated Vagisil’s commercial weakness and, therefore, proved its
overall lack of strength. For instance, Wolff contends consumers are used to distinguishing
between multiple products that begin with the letters “vagi-.” And it maintains that
Vagicaine products sold at CVS, Rite Aid, Target, and Walmart demonstrate competition
in the market with higher sales figures. In addition, it faults the district court for relying on
cases involving trade dress disputes as support for why “generic” products like Vagicaine
would not demonstrate Vagisil’s commercial weakness. Wolff also reasserts that the fame
survey was either inadmissible or should have been afforded little weight due to inherent
design flaws. In particular, Wolff contends the survey was poorly designed because it used
only one control and its name, Vagizox, was “highly unusual” and dissimilar to other
vaginal-health products on the market. Opening Br. 23.
10 We have considered Wolff’s arguments alongside the record and discern nothing
clearly erroneous about the district court’s finding that this factor favors Combe. As an
initial matter, we underscore that Wolff does not take issue with the majority of Combe’s
evidence of commercial strength. And that evidence is substantial. Over the past four
decades, Vagisil has strengthened its status as a leader in its respective markets; the district
court ably recounted that evidence, and we will not belabor the point here. None of that
evidence is disputed, and its materiality in assessing Vagisil’s commercial strength cannot
be readily ignored despite Wolff’s desire to focus our attention elsewhere.
None of Wolff’s arguments about the third-party products that begin with the letters
“vagi-” withstands review. The district court plausibly and reasonably explained why it
found that evidence did not diminish Vagisil’s commercial strength. For example, almost
sixty percent of the marks Wolff identified had been abandoned or were found in
applications for mark registration and thus had no actual commercial presence that could
affect Vagisil’s strength. J.A. 291 (observing that thirty-nine of the marks were cancelled,
expired, or “otherwise ‘dead’” and eleven were drawn from mark registration applications
and the record lacked any evidence indicating those brands had ever been used in
commerce). The handful of marks with any commercial sales had “extremely limited sales,
promotion, and recognition by consumers.” J.A. 291–92. The district court did not clearly
err in concluding that these marks did not mitigate Vagisil’s evidence of commercial
strength given that the entire reason we have held that third-party use may be relevant to
this assessment is if it demonstrates that a conceptually weak mark has not “formed a strong
association with a particular source or product in consumer’s minds.” Variety Stores, Inc.
11 v. Wal-Mart Stores, Inc., 888 F.3d 651, 663 (4th Cir. 2018). The district court did not
clearly err in finding that most of these third-party marks have had no opportunity to
influence a consumer’s mindset, much less her buying choices.
Further, the district court appropriately gave little weight to generic Vagicaine
products sold by big-box retailers because consumers do not associate them “as a source-
identifying brand,” but instead recognize them as the “generic product seek[ing] to imitate
VAGISIL’s anti-itch cream.” J.A. 293. That the court cited cases analyzing a generic
product’s trade dress to discuss consumer focus when encountering brand name labels
versus generic store-specific products is of no moment. The principles drawn from those
cases apply equally well in considering whether the evidence regarding Vagicaine sales cut
against Vagisil’s commercial strength. The district court reasonably concluded “that
consumers do not think of ‘Vagicaine’ as a source-identifying brand; rather, [they]
recognize the ‘Vagicaine’ label only as a signal that the generic product seeks to imitate
VAGISIL’s anti-itch cream.” J.A. 293. As such, this evidence did not “materially diminish”
Vagisil’s commercial strength. J.A. 293.
As for the fame survey, the district court appropriately considered the evidentiary
value of the survey, weighing the testimony of Poret explaining the rationale behind its
design and what the results reflected against the testimony of Wolff’s counter-expert
concerning his view of its alleged flaws. It was within the purview of the district court to
undertake that task, and it is not within our purview to second-guess those findings absent
some indication of unreasonable fact-finding. Inwood Labs. Inc. v. Ives Labs., Inc., 456
U.S. 844, 855 (1982) (reiterating that in a bench trial the district court has the “unique
12 opportunity . . . to evaluate the credibility of witnesses and to weigh the evidence,” and its
factual findings will be afforded “deference,” and must be accepted unless the Court “is
left with the definite and firm conviction that a mistake has been committed” (internal
quotation marks omitted)). Among other reasons supporting the district court’s finding, we
note the district court’s reliance on proof that other pharmaceutical products have used the
suffixes “-zox” and “-ox,” lending credibility to the control’s name; the lack of empirical
evidence supporting any of the criticisms by Wolff’s expert about the fame survey’s design;
and the general alignment of the control’s respondent recognition rate with other actual
marks’ “meager recognition rates,” which reinforced the effectiveness of the control for its
purpose of curtailing artificially inflated consumer awareness of Vagisil. J.A. 295.
In sum, Wolff’s criticisms are not sufficient to call into question the district court’s
finding that, on the whole, Vagisil is a strong and distinctive mark such that this factor
favors Combe. We have previously recognized that “if a mark has sufficient commercial
strength such that consumers would associate the mark with a unique source, it may be
considered strong despite its conceptual weakness.” Variety Stores, 888 F.3d at 663
(internal quotation marks and citation omitted). That principle is true here as well.
B. Similarities Between Vagisil and Vagisan
Wolff also contends the district court clearly erred in finding that similarities
between the words “Vagisil” and “Vagisan” caused this factor to favor Combe. This factor
“focus[es] on whether there exists a similarity in sight, sound, and meaning which would
result in confusion.” George & Co., 575 F.3d at 396. Confusion can result from non-
identical words; the inquiry is simply whether they are “sufficiently similar” and thus cause
13 confusion. See Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 936
(4th Cir. 1995).
In Wolff’s view, the district court should not have considered the names as a whole
when considering their similarities, but instead should have focused solely on their last
three letters to conclude that they were dissimilar and that, consequently, this factor favored
it. Specifically, Wolff asserts the first four letters of both words are weak and descriptive,
and so should have played no role in analyzing the similarities of the words. It argues that
once those letters are set aside, if the district court had focused solely on the words’
“dominant” last three letters (“-sil” and “-san,” respectively), it would have had to conclude
that the words are dissimilar in sight, sound, and meaning.
The legal premise for Wolff’s argument lacks support in our caselaw. We have
frequently indicated that the similarity inquiry “focus[es] on the dominant portions of the
parties’ marks,” George & Co., 575 F.3d at 396, but we have said so to focus attention on
“the non-generic words in multiword marks,” Swatch AG, 739 F.3d at 159 (emphasis
added). For example, when considering the similarity of “Pizzeria Uno” and “Taco Uno,”
we noted that “Pizzeria” and “Taco” were both generic, descriptive words about food, and
that “Uno” was the dominant portion of the mark because it was “the word which has
meaning and distinction for the consumer.” Pizzeria Uno, 747 F.2d at 1535. When
analyzing the similarity of single-word marks, however, we have rejected the “dominant
portion” analysis, holding that it would be inappropriate to piecemeal such marks. For
example, we rejected a party’s contention that we should ignore any similarity in the first
three letters of “Swatch” and “Swap” when analyzing this factor. Swatch AG, 739 F.3d at
14 159. We reiterated that the proper analysis “compare[s] whole words, not parts.” Id.
Accordingly, the district court properly considered “Vagisil” and “Vagisan” as whole
words.
Moreover, the district court did not clearly err in finding that “Vagisil” and
“Vagisan” are “sufficiently similar” for this factor to favor Combe. As the court carefully
explained, the two terms “are closely similar in sight and sound,” “consist[ing] of ‘Vagis,’
then a vowel, and then a consonant.” J.A. 297. “Indeed, only two of the seven letters differ
between the marks,” and the two unique letters are at the end of each word for purposes of
distinguishing their sight and sound. J.A. 297. Likewise, the identical first four letters
“connote the vaginal area,” causing the meaning of both words to be similar. J.A. 298.
In short, the court’s determination that this factor favored Combe is well-reasoned
and consistent with our precedent. E.g., Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455,
465–66 (4th Cir. 1996) (“L’eggs® and Leg Looks®, although not identical, are perceived
similarly by the eye and ear. Whether being written or spoken, L’eggs® and the first syllable
of Leg Looks® are quite similar. . . . [T]here is no substantial difference . . . . that would
serve to ameliorate any confusion of the[] marks.”).
C. Actual Confusion Between Vagisil and Vagisan
Wolff next challenges the district court’s finding that Vagisil had shown actual
confusion between the Vagisil and Vagisan marks. This factor is frequently “persuasive
evidence relating to” any likelihood of confusion. Louis Vuitton Malletier S.A. v. Haute
Diggity Dog, LLC, 507 F.3d 252, 263 (4th Cir. 2007).
15 Because Vagisil and Vagisan have not been sold on domestic shelves alongside each
other, Combe did not rely on evidence of actual consumer confusion in the marketplace,
but instead introduced the results of a confusion survey Poret conducted on its behalf.
Using the “Eveready[ 4] methodology,” Poret surveyed 400 female consumers of vaginal-
health products. Under this method, the survey did not mention or refer to Vagisil. Instead,
a test group was shown the word “Vagisan” while a control group was shown the control
word “Vagipur.” Both words shared the same typography: plain and unadorned block
letters lacking any unique features. Respondents were asked several questions concerning
what company they believed to be responsible for the product and related matters.
Respondents were also given the opportunity to explain their answers. Based on Poret’s
tabulation, the survey yielded a statistically significant net confusion rate of 19%,
“reflect[ing] that 19% of [survey] respondents experienced confusion that was caused
specifically by the marks’ similarity and not by other factors.” J.A. 306. Poret testified
about the results of the confusion survey at trial and explained his rationale for its design
as well as how he tabulated results.
In response to Combe’s evidence, Wolff’s counter-expert testified to his view that
the confusion survey was poorly designed and had been incorrectly tabulated. Apart from
that expert testimony critiquing the confusion survey, Wolff did not introduce any evidence
demonstrating a lack of actual confusion.
4 Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366 (7th Cir. 1976), superseded by rule on other grounds as stated in Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423 (7th Cir. 1985).
16 The district court found that this factor favored Combe because the survey
constituted persuasive evidence of actual confusion. It explained why the lack of anecdotal
marketplace evidence was understandable and “not meaningful” under the circumstances
presented. J.A. 305. Further, the district court found that Poret had used a “reliable
approach” that persuasively showed “actual confusion between the parties’ marks.” J.A.
306. And it rejected Wolff’s objections as not materially affecting the results of the survey
and therefore, not affecting its finding.
On appeal, Wolff renews its argument that Combe’s confusion survey had design
flaws that skewed the results and that Poret compounded those errors in how he tabulated
the survey’s results. Specifically, Wolff asserts the survey should not have shown
respondents the word “Vagisan” in all-capitals Times New Roman font rather than how it
appears on Wolff’s international packaging because that “divorced [it] from [the]
marketplace context.” Opening Br. 48. It claims that the control name, “Vagipur,” was
ineffective because (1) it did not use an “s” after the prefix to more closely resemble
Vagisan; (2) its suffix connoted purity rather than a meaning more in line with Vagisan’s,
which is derived from the Latin word sanitas, for “health”; and (3) its suffix sounded
foreign given it was shared with foreign cities like Kuala Lumpur. Wolff further claims the
survey “artificially drove up” the confusion rate based on what counted as confusion with
Vagisil in the initial and follow-up answers. Opening Br. 55. Under Wolff’s standard for
tabulating the results, the confusion rate would decrease by about half, to 11%, which it
asserts is too low to indicate confusion.
17 The district court did not clearly err in finding that this factor weighed in favor of
Combe. At bottom, Wolff’s arguments on appeal ask us to step into the role of the trier-of-
fact and reweigh the evidence, a task that is not ours to perform. As we have previously
noted, so long as the district court’s factual determinations between conflicting evidence
do not leave us with a definite and firm conviction of error, we must not disturb those
findings. June Med. Servs. L. L. C. v. Russo, __ U.S. __, 140 S. Ct. 2103, 2121 (2020) (“In
applying this standard to the findings of a district court sitting without a jury, appellate
courts must constantly have in mind that their function is not to decide factual issues de
novo. Where the district court’s account of the evidence is plausible in light of the record
viewed in its entirety, the court of appeals may not reverse it even though convinced that
had it been sitting as the trier of fact, it would have weighed the evidence differently.”
(internal quotation marks, alterations, and citations omitted)). Applied here, we discern no
fault in the district court’s reasoning about why the lack of evidence of actual confusion in
the marketplace was understandable given that the Vagisil and Vagisan marks had not
appeared together in the United States, the relevant market for assessing the existence of
actual confusion. Moreover, courts have recognized the role that surveys, such as Poret’s,
can serve in assessing actual confusion so long as they use a reliable methodology to elicit
relevant evidence. E.g., 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1246 (10th
Cir. 2013) (“Surveys can be used as evidence of actual confusion, but their evidentiary
value depends on the relevance of the questions asked and the technical adequacy of the
survey procedures.”). Any flaws in the survey’s design would ordinarily go to its weight,
not its initial admissibility. Id.
18 To the extent Wolff attacks the overarching methodology Poret used, there’s no
merit to that criticism. The confusion survey followed the “standard and widely accepted”
Eveready survey methodology. 6 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 32:174 (5th ed. 2021); see also id. (describing this method as
“especially useful when the senior mark is readily recognized by buyers in the relevant
universe” and recognizing that it has been called “the gold standard for fundamental
cognitive and marketing reasons”). The district court did not clearly err in finding that this
was an appropriate structure for questioning respondents.
Nor has Wolff shown that the district court erred in finding the confusion survey
was appropriately designed to assess confusion between the Vagisil and Vagisan marks.
Wolff’s arguments to the contrary rehash the testimony of its expert witness. But how to
view the competing testimony concerning the survey’s design—particularly the viability
of the control “Vagipur”—was appropriately within the province of the district court to
resolve. See Inwood Labs., 456 U.S. at 855; Helton v. AT & T Inc., 709 F.3d 343, 350 (4th
Cir. 2013). The district court explained its reasoning for why “Vagipur” “was adequate to
measure survey ‘noise,’” including that its first four letters were identical and thus also
“connoted the vaginal area of a woman’s body”; those letters were followed by the same
number of letters in the same consonant-vowel-consonant order; and the control did not
use the letter “s” because that was part of what made Vagisan “confusingly similar to”
Vagisil. J.A. 309–10. Wolff has not shown that this reasoning was clearly erroneous.
The evidence also does not compel the conclusion that the district court erred in
evaluating the survey results. The district court explained that the approach Wolff’s expert
19 advocated “would improperly double-count survey ‘noise’” through the use of both an
effective control and sifting through the explanations for a respondent’s confusion. J.A.
311. Because the control provided an objective—and therefore better—measure for
“estimating the number of respondents that will name VAGISIL for reasons other than the
similarity between VAGISAN and VAGISIL,” it was not necessary to use the
“scientifically inferior” method of relying on a lay person’s attempt to explain their
response and a survey administrator’s judgment as to whether that indicated actual
confusion. J.A. 311.
Because Wolff has not shown that the district court’s assessment of the actual
confusion factor was clearly erroneous, we reject it as a proper ground for revisiting the
district court’s judgment.
D. Neutrality of Consumer Sophistication
Lastly, Wolff contends the district court clearly erred in finding the sophistication
of the consumer to be a neutral factor because the record contained evidence that consumers
selected vaginal-health products with a high degree of care. In its view, this testimony
meant that the factor should weigh in its favor because informed consumers would be less
likely to confuse the marks. We disagree.
In describing this factor, we have previously recognized that it plays a “key” role in
the assessment only “when the relevant market is not the public at-large.” Sara Lee Corp.,
81 F.3d at 467. “[I]n a market with extremely sophisticated buyers, the likelihood of
consumer confusion cannot be presumed on the basis of the similarity in trade name alone,
particularly without the benefit of trial.” Perini Corp., 915 F.2d at 128. The relevant market
20 must consist of a targeted subset that is either “sophisticated in the use of—or possesses an
expertise regarding”—the product. Sara Lee Corp., 81 F.3d at 467. Thus, for example, in
a trademark infringement suit between two hosiery makers, we held it was not necessary
to consider this factor because there was no evidence “that persons who buy pantyhose are
any more sophisticated about that product than those who comprise the market for other
ordinary retail goods.” Id.
Applied here, there’s no indication in the record that consumers are “extremely
sophisticated buyers” that would warrant this factor having any sort of a “key” role in the
analysis. Rather, as was true of hosiery, vaginal-health products are marketed broadly to
female consumers as a whole. And while the record contained evidence that some women
were well-informed about these products given their nature, there was also evidence that
some women approached purchases in a manner consistent with lack of sophistication.
That is, some shoppers exhibited “shy to buy” characteristics of “get[ing] in and out of the
store” hurriedly, putting “products in their bag real[ly] quickly and put[ting] potato chips
on it and run[ning] out of the store so people don’t see it” because the products may elicit
embarrassment or shame in their consumers. J.A. 466–67. After a bench trial, the district
court weighed this evidence and determined that the factor was neutral and favored neither
Wolff nor Combe. Nothing in this record leaves us with the definite or firm conviction that
the district court erred in so finding. Accordingly, we reject this argument as well.
21 IV.
Given that the district court did not clearly err as to any of its individual assessments
of the challenged factors, we have no basis for reconsidering its overarching assessment
that the factors demonstrated a reasonable likelihood of confusing the Vagisil and Vagisan
marks. The court did not err in entering judgment in favor of Combe and ordering
appropriate relief. For these reasons, the judgment of the district court is
AFFIRMED.