Combe Inc. v. Dr. August Wolff Gmbh & Co. Kg Arzneimittel, No.
19-1674 (4th Cir. Apr. 13, 2021)
Not only is this case a good demonstration that courts are willing
to give broad rights to marks based on similarities in descriptive elements (here the VAGI- formative in VAGISIL for preparations for use in the vagina), it
also has relevance for the current discussion of “use as a mark.” As Grace
McLaughlin argues in her recent Fanciful Failures, there are situations
where putting something in the trademark “spot” for a product doesn’t
necessarily mean that consumers will understand it as a mark. Perhaps
surprisingly, the district court and the court of appeals endorse precisely
that view here:
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.”
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Rebecca Tushnet 