Combe Incorporatedv.Dr. August Wolff GmbH & Co. KG Arzneimittel

Trademark Trial and Appeal Board

Jun 19, 2017

No. 91209708 (T.T.A.B. Jun. 19, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: June 19, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Combe Incorporated
v.
Dr. August Wolff GmbH & Co. KG Arzneimittel
_____

Opposition No. 91209708
_____

Robert R. Caliri of Olson & Cepuritis, Ltd.,
for Combe Incorporated.
Michael J. Striker of Striker, Striker & Stenby,
for Dr. August Wolff GmbH & Co. KG Arzneimittel.
_____

Before Quinn, Zervas and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Dr. August Wolff GmbH & Co. KG Arzneimittel (“Applicant”) seeks registration
on the Principal Register of the mark VAGISAN (in standard characters) for the
goods set forth below:
Soaps, perfumery, essential oils, cosmetics, hair lotion, in
Class 3; and
Pharmaceutical preparations, namely, vaginal
moisturizers, vaginal anti-fungal preparations, vaginal
Opposition No. 91209708
- 2 -
washes; sanitary preparations for medical use; diet pills,
diet capsules, diet liquid medications, in Class 5.1
Combe Incorporated (“Opposer”) opposed the registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles Opposer’s previously used and registered mark
VAGISIL for identical or closely related goods as to be likely to cause confusion.
Specifically, Opposer pleaded ownership of the registrations listed below:2
1. Registration No. 1104172 for the mark VAGISIL (typed drawing) for
“pharmaceutical preparations – namely, medicated cremes,” Class 5;3
2. Registration No. 1424503 for the mark VAGISIL (typed drawing) for
“cosmetics – namely, powders for feminine use,” in Class 3;4
3. Registration No. 2971826 for the mark VAGISIL (typed drawing) for
“pharmaceuticals, namely, medicated premoistened towelettes for feminine
use,” in Class 5;5

1 Application Serial No. 78111922 was filed on February 24, 2012, under Section 66a of the
Trademark Act, 15 U.S.C. § 1141f, seeking an extension of protection based on International
Registration No. 095168 registered on October 10, 2008.

2 Also, Opposer pleaded ownership of 3696951 for the mark VAGISIL SATIN (standard
characters) for “medicated nonprescription topical creams, namely, anti-itch creams,” in
Class 5. However, that registration was cancelled effective May 20, 2016 and, therefore, it
will be given no further consideration.
3 Registered October 17, 1978; second renewal. Prior to November 2, 2003, “standard
character” drawings were known as “typed” drawings. Effective November 2, 2002,
Trademark Rule 2.52, 37 C.F.R § 2.52, was amended to replace the term “typed” drawing
with “standard character” drawing. A typed mark is the legal equivalent of a standard
character mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir.
2012) (“until 2003, ‘standard character’ marks formerly were known as ‘typed’ marks.”).
4 Registered January 13, 1987; second renewal.
5 Registered July 19, 2005; renewed.
Opposition No. 91209708
- 3 -
4. Registration No. 3285997 (standard characters) for “vaginal pH testing kits
containing testing swabs and color guides,” in Class 10;6
5. Registration No. 4073832 for the mark VAGISIL (standard characters) for
“non-medicated feminine washes,” in Class 3;7
6. Registration No. 4205458 for the mark VAGISIL (standard characters) for
“moisturizers for the skin at the external vaginal area,” in Class 3;8 and
7. Registration No. 4343995 for VAGISIL and design, shown below,

for the goods listed below:
“nonmedicated products for feminine use, namely, feminine soothing creams
for the skin, moisturizers for the skin at the external vaginal area, feminine
deodorant powders and sprays, and nonmedicated feminine hygiene washes,”
in Class 3;
“medicated products for feminine use, namely, feminine anti-itch creams, and
premoistened feminine wipes,” in Class 5; and

6 Registered August 27, 2007; Sections 8 and 15 affidavits accepted and acknowledged.
7 Registered December 20, 2011; Sections 8 and 15 affidavits accepted and acknowledged.
8 Registered September 11, 2012.
Opposition No. 91209708
- 4 -
“vaginal pH screening kits containing pH test swabs and color guides,” in Class
10.9
Also, Opposer alleged that Applicant did not have a bona fide intent to use
VAGISAN in commerce for the goods identified in its application at that the time
Applicant filed for extension of protection under Section 66(a) of the Trademark Act.
Applicant, in its Answer, denied the salient allegations in the Notice of Opposition.
I. Preliminary Issues
During the testimony deposition of Angela Thevessen, an employee in Applicant’s
export department, Applicant introduced a summary of the number of units of its
VAGISAN products sold in all countries other than Germany between 1998 and 2015
(Exhibit 1). Opposer’s counsel made a standing objection to testimony and documents
referring to international matters as being irrelevant and to documents that were not
timely produced during discovery.10 Opposer, in its “Statement Of Evidentiary
Objections,” renewed the objection to Thevessen Exhibit 1 on the ground that it was
not produced during discovery.11

9 Registered May 28, 2013. In the Notice of Opposition, Opposer pleaded ownership of
application Serial No. 85622954 which issued as the above-noted registration. When an
opposer pleads ownership of an underlying application, opposer may make of record the
subsequently issued registration of that application without amending the pleading. United
Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1040 n.3 (TTAB 2014).
10 Thevessen Testimony Dep., pp. 7-8 and 12 (47 TTABVUE 10-11 and 15).
11 58 TTABVUE.
Opposition No. 91209708
- 5 -
Opposer contends that Thevessen Exhibit 1 is responsive to Opposer’s document
request Nos. 5, 11, and 31 to which Applicant responded that no documents exist.12
The document requests are set forth below:
5. Documents sufficient to identify each product planned or
considered to be sold, distributed or offered for sale under
the VAGISAN Mark in the United States.
11. Documents sufficient to establish Applicant’s intent to
use the VAGISAN Mark in the United States on or in
connection with Applicant’s Goods before the application
for registration of the mark was filed.
31. Documents sufficient to identify Applicant’s actual or
planned annual unit and dollar sales of Applicant’s Goods
under the VAGISAN mark in the United States.13
In response to Opposer’s motion for summary judgment,14 Applicant submitted,
on March 17, 2016, Thevessen Testimony Exhibit 1.15 The summary was created by
Mrs. Koch, Applicant’s controller, from the normally maintained books and records
of Applicant.16 Applicant submitted the summary of sales in response to Opposer’s
motion for summary judgment to demonstrate that Applicant had the ability to sell
its VAGISAN products in the United States17 and, thus, it is responsive to Opposer’s

12 58 TTABVUE 3-4.
13 58 TTABVUE 3.
14 29 TTABVUE.
15 34 TTABVUE 32-33 and 48.
16 24 TTABVUE 32; see also Thevessen Testimony Dep., p. 9 (47 TTABVUE 12).
17 34 TTABVUE 8-15.
Opposition No. 91209708
- 6 -
document request No. 11 (documents sufficient to establish Applicant’s intent to use
the VAGISAN Mark in the United States).18
Applicant created the summary of Applicant’s sales outside of Germany,
Thevessen Testimony Exhibit 1, to respond to Opposer’s motion for summary
judgment; it was not in existence when Applicant responded to Opposer’s discovery.
Applicant’s submission of the sales summary in response to Opposer’s motion for
summary judgment serves as a supplement to its discovery response. See Vignette
Corp. v. Marino, 77 USPQ2d 1408, 1411 (TTAB 2005) (given that discovery responses
may be supplemented at any time, even during trial, or after receipt of a summary
judgment motion, “to apply the preclusion sanction under Federal Rule 37(c)(1) here
or in similar circumstances would amount to elevating form over substance since no
practical distinction exists between consideration of information provided as part of
a responsive brief to a summary judgment motion or information provided in
supplemental responses to discovery that are submitted at the same time as a
responsive brief”); see also Fed. R. Civ. P. 26(e) Advisory Committee Notes (1993
amendment to Rule 26(e)) (“no obligation to provide supplemental or corrective
information that has been otherwise made known to the parties in writing or during
the discovery process, as when a witness not previously disclosed is identified during
the taking of a deposition…”).

18 The relevance of the sales summary in response to document request Nos. 5 and 31 is
dubious but we need not address that issue at this time.
Opposition No. 91209708
- 7 -
As noted above, Opposer, in its statement of objections, did not renew the objection
that Thevessen Exhibit 1 is irrelevant because it refers to activities outside of the
United States. Nevertheless, we point out, in this instance, Applicant’s international
activities are probative of the facts that Applicant possesses the capability to
manufacture and market the products at issue, as well as the capability and
experience to export those products and, therefore, are relevant to the issue of
whether Applicant had a bona fide intent to use its mark at the time it sought an
extension of protection under Section 66 of the Trademark Act.
In view of the foregoing, Opposer’s objections to Thevessen Exhibit 1 are
overruled.
II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application file. The record also includes the
testimony and evidence listed below.
A. Opposer’s testimony and evidence.
1. Because Opposer attached to its Notice of Opposition copies of its pleaded
registrations and application Serial No. 85622954, which registered as
Registration No. 4343995, printed from the USPTO electronic database
showing both the status of and title to the registrations, those registrations
Opposition No. 91209708
- 8 -
are made of record pursuant Trademark Rule 2.122(d)(1), 37 C.F.R.
§ 2.122(d)(1);19
2. Notice of reliance on the following items:
a. Pursuant to Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e) (“official
records”), copies of specimens submitted with the USPTO showing
Opposer’s VAGISIL mark used on packaging;20
b. Pursuant to Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e) (“official
records”), copies of assignment documents recorded in the USPTO
relating to Opposer’s pleaded registrations;21
c. A copy of a news story printed in the January 30, 1974 Syracuse Herald-
Journal referring to Opposer’s VAGISIL products;22
d. Opposer’s VAGISIL website (vagisil.com) printed April 2, 2015;23
e. Applicant’s responses to Opposer’s Interrogatory Nos. 2-4 and 9;24 and
f. Applicant’s responses to Opposer’s request for production of documents
Nos. 7, 13, 14, 19, and 29-31 stating that no documents exist to those
requests;25

19 Thus, it was unnecessary for Opposer to introduce copies of its pleaded registrations a
second time in its notice of reliance. See 39 TTABVUE 9-18.
20 39 TTABVUE 21-62.
21 39 TTABVUE 64-109.
22 39 TTABVUE 111.
23 39 TTABVUE 113-167.
24 39 TTABVUE 169-174.
25 39 TTABVUE 176-184.
Opposition No. 91209708
- 9 -
3. Testimony deposition of Yolanda Payne, Opposer’s Vice President of
Marketing for Intimate Health, with attached exhibits;26
4. Rebuttal notice of reliance on the following items:
a. Official records regarding Opposer’s International Registration No.
1245696 showing citation of Applicant’s VAGISAN mark as a bar to
registration;27
b. Official records from the UK trademark office regarding Opposer’s
VAGISIL application;28
c. Official records from the UK trademark office regarding Applicant’s
opposition to the registration of Opposer’s VAGISIL trademark;29 and
5. Testimony deposition of Rebecca Lyons, a legal assistant at Opposer’s
counsel’s law firm, with attached exhibits.30
B. Applicant’s testimony and evidence.
1. Notice of reliance on Applicant’s VAGISAN website (vagisan.com) printed
October 24, 2016;31
2. Opposer’s response to Applicant’s request for production of documents No.
3 stating that there are no documents responsive to this request for

26 41 TTABVUE. The portions of Ms. Payne’s deposition designated as confidential are posted
at 42 TTABVUE.
27 50 TTABVUE 6.
28 50 TTABVUE 17.
29 50 TTABVUE 26.
30 53 TTABVUE.
31 43 TTABVUE.
Opposition No. 91209708
- 10 -
documents relating to any instances of confusion between Opposer’s
VAGISIL trademark and any other trademark;32
3. Testimony deposition of Olga Fuchs, an Administrator at Applicant’s
counsel’s law firm, with attached exhibits;33 and
4. Testimony deposition of Angela Thevessen, an employee in Applicant’s
export department, with attached exhibits.34
III. Standing.
Because Opposer’s pleaded registrations have been made of record, Opposer has
established its standing in this proceeding. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
IV. Priority.
Because Opposer has properly made of record its pleaded registrations, and
because Applicant has not filed a counterclaim to cancel any of Opposer’s pleaded
registrations, Section 2(d) priority is not an issue in the opposition as to the marks
and the goods covered by the pleaded registrations. King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).

32 45 TTABVUE.
33 46 TTABVUE.
34 47 TTABVUE. The portions of Ms. Thevessen’s deposition designated as confidential are
posted at 48 TTABVUE.
Opposition No. 91209708
- 11 -
V. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis
Ind., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each du Pont factor that is relevant and for which there is evidence of
record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944,
1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232,
1242 (TTAB 2015) (“While we have considered each factor for which we have
evidence, we focus our analysis on those factors we find to be relevant.”). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services. See In re Chatam Int’l
Inc., 380 F.2d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”); see also
In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), appeal docketed, No.
16-1507 (Fed. Cir. Jan. 21, 2016).
Opposition No. 91209708
- 12 -
A. The fame of Opposer’s VAGISIL mark and the number and nature of similar
marks in use on similar goods.35

In determining the strength of a mark, we consider both its inherent strength
based on the nature of the mark itself and its commercial strength, based on the
marketplace recognition value of the mark. See In re Chippendales USA, Inc.,
622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is
measured both by its conceptual strength (distinctiveness) and its marketplace
strength.”); Top Tobacco, L.P. v. North Atlantic Operating Co., Inc., 101 USPQ2d
1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by assessing its
inherent strength and its commercial strength); Tea Board of India v. Republic of Tea
Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); McCarthy on Trademarks and Unfair
Competition § 11:83 (4th ed. 2017) (“The first enquiry focuses on the inherent
potential of the term at the time of its first use. The second evaluates the actual
customer recognition value of the mark at the time registration is sought or at the
time the mark is asserted in litigation to prevent another's use.”). Market strength is
the extent to which the relevant public recognizes a mark as denoting a single source.
Tea Board of India v. Republic of Tea Inc., 80 USPQ2d at 1899. “[A] mark with
extensive public recognition and renown deserves and receives more legal protection

35 In testing for likelihood of confusion, “[t]he fame of the prior mark (sales, advertising,
length of use)” is a factor, when of record, that must be considered in analyzing likelihood of
confusion. du Pont at 567. Therefore, contrary to Applicant’s argument, fame for purposes of
likelihood of confusion does not have to be pleaded and Opposer is not estopped from asserting
that its mark is famous. Applicant’s Brief, p. 2 (61 TTABVUE 6).
Opposition No. 91209708
- 13 -
than an obscure or weak mark. Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963
F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame, if it exists, plays a dominant role in the likelihood of confusion analysis
because famous marks enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown. Bose Corp. v. QSC Audio
Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys,
Inc. v. Rose Art Indus., Inc., 22 USPQ2d at 1456.
Fame may be measured indirectly by the volume of sales of and advertising
expenditures for the goods and services identified by the marks at issue, “the length
of time those indicia of commercial awareness have been evident,” widespread critical
assessments and through notice by independent sources of the products identified by
the marks, as well as the general reputation of the products and services. Bose Corp.
v. QSC Audio Prods. Inc., 63 USPQ2d at 1305-1306 and 1309. Although raw numbers
of product sales and advertising expenses sometimes may have sufficed to prove fame
of a mark, raw numbers alone may be misleading. Some context in which to place raw
statistics may be necessary (e.g., the substantiality of the sales or advertising figures
for comparable types of products or services). Bose Corp. v. QSC Audio Prods. Inc., 63
USPQ2d at 1309.
Finally, because of the extreme deference that we accord a famous mark in terms
of the wide latitude of legal protection it receives, and the dominant role fame plays
in the likelihood of confusion analysis, it is the duty of the party asserting that its
Opposition No. 91209708
- 14 -
mark is famous to clearly prove it. Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (citing Leading Jewelers Guild
Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)).
Opposer argues, inter alia, that its VAGISIL marks are inherently strong because
it owns seven registrations for VAGISIL, five of which are incontestable.36 However,
“the fact that opposer's federally-registered trademark] has achieved incontestable
status means that it is conclusively considered to be valid, but it does not dictate that
the mark is ‘strong’ for purposes of determining likelihood of confusion. McCarthy On
Trademarks and Unfair Competition §§ 11:82 and 32:155 (4th ed. 2009).” Safer v.
OMS Inv., Inc., 94 USPQ2d 1031, 1036 (TTAB 2010).
Opposer also relies on the following evidence to demonstrate the strength and
fame of its VAGISIL marks:
• Opposer has been using its VAGISIL marks since the 1970’s;37
• Opposer’s VAGISIL products are sold nationwide by mass merchandisers such
as Wal-Mart and Target, drug store chains and pharmacies such as CVS,
WALGREEN’S, and RITE-AID, grocery stores such as Albertson’s, Kroger, STOP &
SHOP, DOLLAR STORES, military outlets, and online through AMAZON.com and
DRUGSTORE.com;38

36 Opposer’s Brief, p. 12 (57 TTABVUE 19).
37 Payne Testimony Dep., pp. 6-7 (41 TTABVUE 9-10).
38 Payne Testimony Dep. pp. 9-10 (41 TTABVUE 11-12).
Opposition No. 91209708
- 15 -
• Opposer’s sales of its VAGISIL products between 2011 and 2015 have been
substantial;39
• VAGISIL anti-itch cream has a 50% market share;40
• VAGISIL maximum anti-itch cream is the number one selling anti-itch cream;41
• VAGISIL powders have a 50% market share;42
• VAGISIL medicated anti-itch wipes have a 90% market share;43
• VAGISIL odor block wash is the number one selling vaginal wash;44
• Opposer’s advertising expenditures promoting its VAGISIL products have been
substantial;45

39 Payne Testimony Dep., pp. 33-38 and Exhibit 9 (42 TTABVUE 36-41, 76). Because
Opposer’s sales have been designated as confidential, we may refer to them only in general
terms.
40 Payne Testimony Dep., pp. 31-32 (42 (TTABVUE 31-32). It is not clear why Opposer’s
market share is confidential and, therefore, we do not consider it as such. Trademark Rule
2.116(g), 37 C.F.R. § 2.116(g) (“The Board may treat as not confidential that material which
cannot reasonably be considered confidential, notwithstanding a designation as such by a
party.”).
41 Payne Testimony Dep., p. 32 (42 TTABVUE 32).
42 Payne Testimony Dep., p. 32 (42 TTABVUE 32).
43 Payne Testimony Dep., p. 32 (42 TTABVUE 32).
44 Payne Testimony Dep., p. 33 (42 TTABVUE 33).
45 Payne Testimony Dep., p. 38-43 and Exhibits 10 and 11 (42 TTABVUE 38-43, 77 and 78).
Because Opposer’s advertising expenditures have been designated confidential, we may refer
to them only in general terms.
In its brief, Opposer asserted that by 1976, advertising for the VAGISIL trademark had
reached 95% of the women at least 16 times during the year citing the Payne Testimony
Deposition Exhibit 1 (41 TTABVUE at 92). Opposer’s Brief, p. 15 (57 TTABVUE 22). Opposer
is referring to an advertising flyer distributed to retailers stating that VAGISIL is “America’s
#1 non-prescription product for feminine itching” and “major print advertising reaching 95%
of all women at least 16 times during 1976.” These statements are hearsay. They are
probative to show that Opposer made those statements in its advertising; not that they are
true. Ms. Payne did not testify that those statements were true, nor did she testify that the
statements in the advertising were true. Moreover, Ms. Payne did not testify as to how
Opposition No. 91209708
- 16 -
• Opposer advertises or has advertised in nationwide magazines such as People,
Reader’s Digest, TV Guide, Cosmopolitan, Ladies’ Home Journal, True Story,
McCall’s, Glamour, Parade, Family Circle, Woman’s Day, Ebony Essence, and
Latina;46
• Opposer has advertised its VAGISIL products on the radio;47
• Opposer advertises its VAGISIL products on television, including on ABC, NBC,
CBS, and cable networks A&E and MTV;48 and
• Opposer advertises through YouTube.49
Opposer, in its brief, argues that VAGISIL is a famous mark.50 While the record
shows that Opposer has enjoyed commercial success and that its VAGISIL trademark
is distinctive and commercially strong, we find that Opposer’s commercial success
does not make Opposer’s VAGISIL trademark famous. We cannot on this record find
that consumers have been so exposed to the mark VAGISIL, or that they are so aware
of it, that it can be considered famous. The overall record simply falls short of a
persuasive showing of fame especially because there is no testimony or evidence
regarding the size of the market or the percentage of women who purchase intimate

Opposer reached the conclusion that its print advertising for the VAGISIL products reached
95% of all women at least 16 time.
46 Payne Testimony Dep., pp. 8, 29-30, Exhibits 1 and 8 (41 TTABVUE 11, 32-33, 143, and
192).
47 Payne Testimony Dep., pp. Exhibit 1 (41 TTABVUE 119, 128, 130, 137, 139, 141, 143, 144,
158, 160).
48 Payne Testimony Dep., p. 8 (41 TTABVUE 11).
49 Payne Testimony Dep., pp. 7-8, 9-11 (41 TTABVUE 10-12).
50 Opposer’s Brief, pp. 11-17 (57 TTABVUE 18-24).
Opposition No. 91209708
- 17 -
feminine products so as to indicate in how many American homes Opposer’s products
may be found; there is no testimony or evidence regarding whether Opposer’s
advertising expenditures are large or small vis-à-vis other comparable products; and
there are no examples of unsolicited media referring to the renown of Opposer’s
VAGISIL products.51 As indicated above, while Opposer’s sales and market share are
impressive and are indicative of commercial success, we can only speculate about the
actual impact of Opposer’s mark on the minds of consumers and, therefore, we find
that Opposer has failed to show that its mark is famous.
Applicant contends that “[t]he sole similarity between the respective trademarks
is the prefix VAGI- which is obviously and indisputably highly descriptive when
applied to a vaginal product.”52 In other words, Opposer is not entitled to the exclusive
right to VAGI-formative marks in connection with feminine hygiene products.
Applicant introduced the testimony deposition of Olga Fuchs, an Administrator at its
counsel’s law firm, who proffered third-party VAGI-formative registrations and
evidence of third-party use of VAGI-formative marks.53

51 We are not requiring evidence regarding the percentage of women who purchase the
products, a comparison of advertising expenditures, or unsolicited media referring to the
renown of Opposer’s mark as elements of fame. The better practice would have been to
introduce such evidence because, as indicated above, it is the duty of the party asserting that
its mark is famous to clearly prove it.
52 Applicant’s Brief, p. 3 (61 TTABVUE 7).
53 46 TTABVUE. While Opposer objected to the proffer of the third-party registrations during
the deposition of Ms. Fuchs, contrary to Applicant’s contention in its brief, Opposer did not
renew the objection in Opposer’s brief or Opposer’s separate “statement of evidentiary
objections.” (58 TTABVUE).
Opposition No. 91209708
- 18 -
Applicant introduced the following third-party registrations through Ms. Fuchs
testimony deposition:54
Mark Reg. No. Goods

VAGI-WAVE 4508456 Hygiene products for menses, namely, tampons and
feminine hygiene pads

VAGITONE 5035663 Feminine hygiene vaginal moisturizer

VAGITOCIN 3830703 Pharmaceutical preparations for treatment of fragile
and bleeding atrophic mucous membranes

VAGISTAT-3

VAGISTAT
3174689

1290700
Pharmaceutical preparation for the treatment of
fungus infections in the female reproductive tract

(same)

VAGI-KOOL 4761447 A contoured therapeutic cold pack specifically
designed to be used in the vaginal area of a woman’s
body

VAGI-HEX 4876321 Pharmaceutical preparations in tablet form for the
treatment of vaginal conditions

VAGI-GARD 2250353 Feminine hygiene products, namely, topical
treatment for yeast infections, medicated douches,
medicated powder, medicated creams, lubricants,
suppositories

VAGIFRESH 4723318 Non-medicated feminine hygiene wash

VAGIFIRM 5031761 Herbal supplements; herbal supplements for
postpartum depression

VAGIFEM 2123814 Pharmaceutical, gynecological preparations for the
treatment of menopausal disorders and applicators
therefor, packaged together

VAGI-CURE 4042986 Vaginal ointments

54 46 TTABVUE 36-59.
Opposition No. 91209708
- 19 -
Mark Reg. No. Goods

VAGI-CARE 4254755 Vaginal ointments for providing relief from itch and
irritation

VAGICAL 3369696 Pharmaceutical preparations for use in the
prevention and treatment of disease or inflammation
of the female reproductive tract

Also, Ms. Fuchs purchased products with a VAGI-formative mark listed below in
August and September 2015:55
• VAGI-CARE anti-itch cream from PersonalCare. The package advertised that
the purchaser should “Compare to Vagisil®.”;56
• VAGICARE moisturizer from HB Health & Beauty;57
• VAGIFIRM dietary supplement;58
• VAGI-CLEAR for the relief of vaginal itch, burning and discharge;59
• VAGIFRESH moisturizing gel;60
• VAGI-SILK vaginal lubricating inserts;61
• VAGI-CURE anti-itch cream;62

55 Fuchs Testimony Dep., p. 5 (46 TTABVUE 8).
56 Fuchs Testimony Dep., Exhibit 8 (46 TTABVUE 21).
57 Fuchs Testimony Dep., Exhibit 8 (46 TTABVUE 23).
58 Fuchs Testimony Dep., Exhibit 8 (46 TTABVUE 24).
59 Fuchs Testimony Dep., Exhibit 8 (46 TTABVUE 25). The owner of this mark also sells
VAGI-SOOTHE for the relief of vaginal itch, burning and soreness. (46 TTABVUE 35).
60 Fuchs Testimony Dep., Exhibit 8 (46 TTABVUE 26).
61 Fuchs Testimony Dep., Exhibit 8 (46 TTABVUE 27).
62 Fuchs Testimony Dep., Exhibit 8 (46 TTABVUE 29).
Opposition No. 91209708
- 20 -
• VAGICREAM anti-itch cream;63 and
• VAGISTATE-3 for the treatment of yeast infections.64
We use the third-party registrations in the manner of a dictionary to show how a
mark or, in this case, a portion of a mark is generally used. “Such third party
registrations show the sense in which the word is used in ordinary parlance and may
show that a particular term has descriptive significance as applied to certain goods
or services.” Institut National Des Appellations D'Origine v. Vintners Int’l Co.,
958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (third-party registrations
found to be “persuasive evidence”); Interstate Brands Corp. v. Celestial Seasonings,
Inc., 576 F.2d 926, 198 USPQ 151, 153 (CCPA 1978) (“we find no error in the citation
of nine third-party registrations ‘primarily to show the meaning of * * * [‘zing’] in the
same way that dictionaries are used.’”); In re Toshiba Med. Sys. Corp., 91 USPQ2d
1266, 1270 (TTAB 2009); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB
2006) (“[T]hird-party registrations can be used in the manner of a dictionary
definition to illustrate how a term is perceived in the trade or industry”). The
registrations show that marks with a VAGI-prefix have been adopted and registered
at least 14 times by 13 entities in connection with identical or closely related goods,
presumably to mean something related to intimate feminine hygiene products (i.e.,
vaginal).

63 Fuchs Testimony Dep., Exhibit 8 (46 TTABVUE 31).
64 Fuchs Testimony Dep., Exhibit 8 (46 TTABVUE 23).
Opposition No. 91209708
- 21 -
Likewise, we consider the third-party products to determine how others use the
VAGI-prefix. The third-party products are probative that other entities are selling
intimate feminine hygiene products identified by marks incorporating the VAGI-
prefix and, thus, relevant consumers have been exposed to the marks and products.
See Rocket Trademarks Pty Ltd., v. Phard S.p.A., 98 USPQ 2d 1066, 1072 (TTAB
2011). On the other hand, Applicant did not proffer any testimony regarding the
extent of the use, promotion or sales of the third-party products identified by VAGI-
formative marks or consumer awareness of them. Generally, without such evidence,
we cannot assess whether the use has been so widespread as to have any impact on
consumer perceptions. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005) (“The
probative value of third-party trademarks depends entirely upon their usage.”);
Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1729 (TTAB 2007). However, the number
of third-party users is sufficient, even allowing for the possibility that some of the
entities are out of business, are small enterprises, or have reached only a few people,
to support our finding that the VAGI-prefix is used to create a trademark that
suggests an intimate feminine product. See In re Broadway Chicken Inc., 38 USPQ2d
1559, 1565 n.16 (TTAB 1996).
The strongly suggestive nature of the VAGI-prefix (i.e., referring to intimate
feminine products) means that Opposer’s mark VAGISIL cannot bar the registration
of every mark beginning with a VAGI-prefix used in connection with intimate
feminine hygiene products despite the commercial strength of Opposer’s mark. Marks
Opposition No. 91209708
- 22 -
incorporating the VAGI-prefix, including Opposer’s mark VAGISIL, will bar the
registration of marks “as to which the resemblance to [Opposer’s mark] is striking
enough to cause one seeing it to assume that there is some connection, association or
sponsorship between the two.” Anthony's Pizza & Pasta Int’l Inc. v. Anthony's Pizza
Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009), aff’d, 415 Fed. Appx. 222 (Fed.
Cir. 2010) (quoting Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983)); see
also Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,
1674-75 (Fed. Cir. 2015) (the combination of third-party registrations and third-party
uses, even though lacking evidence as to the extent of sales or promotional efforts,
may be “powerful on its face” and must be considered when assessing the strength of
plaintiff’s mark); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed.
Cir. 1985) (“the public can be said to rely more on the non-descriptive portion of each
mark.”).
In this regard, Opposer stated that it has no documents referring to any reported
instances of confusion between its VAGISIL trademark and any other trademark of
any other party.65
B. The similarity or dissimilarity and nature of the goods.
Applicant is seeking to register its VAGISAN mark for the goods listed below:
Soaps, perfumery, essential oils, cosmetics, hair lotion, in
Class 3; and
Pharmaceutical preparations, namely, vaginal
moisturizers, vaginal anti-fungal preparations, vaginal

65 Opposer’s response to Applicant’s request for production of documents No. 3 (45 TTABVUE
3-4).
Opposition No. 91209708
- 23 -
washes; sanitary preparations for medical use; diet pills,
diet capsules, diet liquid medications, in Class 5.
Opposer has registered its VAGISIL mark for, inter alia, “moisturizers for the skin
at the external vaginal area,” “non-medicated feminine washes,” and “cosmetics –
namely, powders for feminine use.”
Applicant’s “vaginal moisturizers” and “vaginal washes” are identical to Opposer’s
“moisturizers for the skin at the external vaginal area” and “non-medicated feminine
washes.”
Applicant’s “cosmetics” are broad enough to encompass Opposer’s “cosmetics –
namely, powders for feminine use.” See In re Hughes Furniture Indus., Inc.,
114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of
‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and
commercial furniture.’”). Therefore, the goods in Class 3 are in part identical.
Under this du Pont factor, Opposer need not prove, and we need not find,
similarity as to each and every product listed in the description of goods. It is
sufficient for likelihood of confusion that relatedness is established for any item
encompassed by the description of goods in a particular class in the application.
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB
2014); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584,
1588 n.1 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB
2014).

Opposition No. 91209708
- 24 -
C. Established, likely-to-continue channels of trade.
Because the goods described in the application and Opposer’s registrations are in
part identical, we must presume that the channels of trade and classes of purchasers
are the same. See In re Viterra Inc., 101 USPQ2d at 1908 (legally identical goods are
presumed to travel in same channels of trade to same class of purchasers); In re
Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there
are legally identical goods, the channels of trade and classes of purchasers are
considered to be the same); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d
1039, 1049 (TTAB 2014); American Lebanese Syrian Associated Charities Inc. v. Child
Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
D. The conditions user which and buyers to whom sales are made, i.e., “impulse”
vs. careful, sophisticated purchasing.

By virtue of the nature of the products at issue, intimate feminine hygiene
products, women exercise a considerable degree of care in their purchasing decisions.
Q. Would you agree with me Ms. Payne that women are
careful in treating their own health, in particular
intimate parts of their body?
A. For the most part most women, yes.
Q. So would you agree with me that women would as
an extension of that be careful in the selection of
what products they would use to treat a health issue,
particularly one that is related to an intimate part
of their body?
A. Yes.66

66 Payne Testimony Dep., p. 60 (41 TTABVUE 63).
Opposition No. 91209708
- 25 -
Opposer promotes itself as “Intimate Health Experts” “here to be your expert
partner in intimate health.”67 Questions from potential purchasers are referred to
Opposer’s “medical expert.”68 Opposer presents “intimate-health tutorial videos” by
its gynecologist, Dr. Adelaide Nardone.69 Likewise, Applicant promotes its VAGISAN
product as being “designed to promote female well-being and help maintain the
health of the female genital area.”70 In fact, Applicant, on its website discusses
“intimate health” issues.71
We find that consumers and potential consumers of the products at issue, intimate
feminine hygiene products, exercise a considerable degree of consumer care and,
therefore, this du Pont factor weighs against finding that there is a likelihood of
confusion.
E. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. In comparing the marks, we
are mindful that where, as here, the goods are in part identical, the degree of
similarity necessary to find likelihood of confusion need not be as great as where there
is a recognizable disparity between the goods. Coach Servs., Inc. v. Triumph Learning

67 Opposer’s website (vagisil.com) (38 TTABVUE 117).
68 Opposer’s website (vagisil.com) (38 TTABVUE 114).
69 Id. See also 38 TTABUE 118.
70 Applicant’s website (vagisan.com) (43 TTABVUE 5); see also 43 TTABVUE 7).
71 Applicant’s website (vagisan.com) (43 TTABVUE 18-33).
Opposition No. 91209708
- 26 -
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992); Jansen Enter. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-
Plough HealthCare Prod. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB
2007).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at
1721 (quoting Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901,
1905 (TTAB 2007); see also San Fernando Electric Mfg. Co. v. JFD Elec. Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison
Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992).
Applicant is seeking to register VAGISAN and Opposer has registered VAGISIL.
The VAGI–prefix is the common element of the marks. As discussed above, the VAGI-
prefix is a suggestive term engendering the commercial impression related to
intimate feminine hygiene products. Where the common portion of the marks is weak,
consumers may distinguish the marks based on otherwise minor differences in the
remaining portions of the mark. In re National Data Corp., 224 USPQ at 752.
A merely descriptive or highly suggestive term falls within the general category
of inherently weak marks, and the scope of protection extended to these marks has
been so limited as to permit the subsequent use or registration of a substantially
Opposition No. 91209708
- 27 -
identical notation for different goods or of a composite mark comprising this term
plus other matter, whether such matter be equally suggestive or even descriptive, for
substantially similar goods. Thus the addition of other matter to a merely descriptive
or highly suggestive designation may result in the creation of a mark which is
distinguishably different therefrom so as to avoid confusion in trade. Land-O-Nod Co.
v. Paulison, 220 USPQ 61, 66 (TTAB 1983); see also Tektronix, Inc. v. Daktronics, Inc.,
534 F.2d 915, 189 USPQ 693, 694 (CCPA 1976) (“It is obvious that the suffixes of the
parties’ marks are highly suggestive. Because marks, including any suggestive
portions thereof, must be considered in their entireties, the mere presence of a
common, highly suggestive portion is usually insufficient to support a finding of
likelihood of confusion.”); Sure-Fit Prods. Co. v. Saltzson Drapery Co., 254 F.2d 158,
117 USPQ 295, 297 (CCPA 1958) (“Where a party chooses a trademark which is
inherently weak, he will not enjoy the wide latitude of protection afforded the owners
of strong trademarks. Where a party uses a weak mark, his competitors may come
closer to his mark than would be the case with a strong mark without violating his
rights. The essence of all we have said is that in the former case there is not the
possibility of confusion that exists in the latter case.”); In re Hartz Hotel Serv. Inc.,
102 USPQ2d 1150, 1154 (TTAB 2012) (“Unlike a situation involving an arbitrary or
fanciful mark, the addition of other matter to a laudatory or suggestive word may be
enough to distinguish it from another mark.”).
The other portions of the two marks, SAN and SIL, are not similar. In view of the
highly suggestive nature of the VAGI-prefix, we find that Applicant’s addition of the
Opposition No. 91209708
- 28 -
term “SAN” to the VAGI-prefix is sufficient to render the resulting mark VAGISAN,
considered in its entirety, distinguishable from Opposer’s mark VAGISIL.
F. Any other established fact probative of the effect of use.
Opposer introduced official records from the United Kingdom Trademark Office
regarding Applicant’s opposition to the registration of Opposer’s VAGISIL
trademark72 as evidence that Applicant has “taken the position that a likelihood of
confusion exists between Opposer’s VAGISIL Marks and Applicant’s VAGISAN
Mark.”73 We do not find this evidence persuasive.
First, information concerning an applicant's foreign activities, including foreign
trademark applications or registrations, is not relevant to the issue of likelihood of
confusion in an opposition proceeding. See Double J of Broward Inc. v. Skalony
Sportswear GmbH, 21 USPQ2d 1609, 1612 (TTAB 1991); Oland's Breweries [1971]
Limited v. Miller Brewing Company, 189 USPQ2d 481, 483 n. 2 (TTAB 1975),
affirmed, 192 USPQ 266 (CCPA 1976) (“Rights in and to a trademark including the
right of registration in this country are created by prior adoption and use in commerce
which may lawfully be regulated by Congress. Use and/or promotion of a mark
confined to a foreign country including, of course, Canada, is immaterial to the
ownership and registration thereof in the United States.”); and Johnson & Johnson
v. Salve S.A., 183 USPQ 375, 376 (TTAB 1974) (“foreign use of a mark creates no
rights in such mark in the United States, and any information or evidence pertaining

72 50 TTABVUE 26.
73 Opposer’s Brief, p. 22 (57 TTABVUE 29).
Opposition No. 91209708
- 29 -
to foreign use is thus immaterial to a party's right to register its mark in the United
States.”).
[T]he issue of likelihood of confusion is determined on the
basis of circumstances surrounding use of involved marks
in the United States; that is, use in commerce which may
lawfully be regulated by Congress. Where, as here, a mark
is not in actual use in the United States, likelihood of
confusion is resolved on the basis of the goods upon which
the mark is used, as identified in the application or
registration, and of the logical inferences as to trade
channels, etc., which may be drawn from the essential
nature of such goods.
Id. at 377.74
Second, to the extent Applicant’s conduct in the foreign proceeding may be
construed as an admission against interest, contrary positions in other proceedings
are “merely illuminative of shade and tone in the total picture confronting the
decision maker.” See Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d
669, 223 USPQ 1281, 1283 (Fed. Cir. 1984) (quoting Interstate Brands Corp. v.
Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978).
Finally, Section 17 of the Trademark Act, 15 U.S.C. § 1067, gives the Director of
the USPTO the authority to direct the Board “to determine and decide the respective
rights of registration” in an opposition to registration. This duty may not be delegated
by adoption or conclusions reached by parties on different records. Suffice it to say
that each case must be decided on its own merits based on the evidence of record.

74 Accordingly, the fact that Opposer’s International registration for VAGISIL was
provisionally refused registration due to Applicant’s Israeli registration of VAGISAN is not
relevant to the issue of likelihood of confusion before us. 50 TTABVUE 6.
Opposition No. 91209708
- 30 -
Citigroup, Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645 (TTAB 2010), aff’d
637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011).
G. Balancing the factors
As noted above, when Opposer adopted and began using a mark featuring the
VAGI-prefix, it ran “up against the well-settled principle that ‘a proprietary right
cannot be acquired in a nonarbitrary term or a term that has been so commonly used
in the trade that it cannot function as the distinguishing feature of any one party’s
mark.’” In re LC Trademarks, Inc., 121 USPQ2d 1197, 1205 (TTAB 2016) (quoting
Cambridge Filter Corporation v. Servodyne Corporation, 189 USPQ 99, 103 (TTAB
1975). In Cambridge Filter Corp., opposer opposed the registration of UNI-CAP and
UNI-FLO based on opposer’s prior use of marks comprising –cap and –flow suffixes.
The Board held that “opposer has not acquired a proprietary right or secondary
meaning in the suffix ‘CAP’ or ‘FLO’ in the air filter field and that the inclusion in
each of the parties’ marks here involved of the ‘CAP’ and ‘FLO’ suffix cannot serve,
per se, as a basis upon which to predicate a holding of conflict among the marks.” Id.
at 103-104.
Thus, despite the fact that Applicant’s mark is commercially strong, the goods are
in part identical and presumed to move in the same channels of trade, because of the
inherent weakness of the VAGI-prefix, the considerable degree of purchaser care, and
dissimilarity of the marks VAGISAN and VAGISIL, we find that Applicant’s mark
VAGISAN is not likely to cause confusion with Opposer’s mark VAGISIL.
Opposition No. 91209708
- 31 -
VI. Whether Applicant had a bona fide intent to use its mark at the time
Applicant filed for extension of protection under Section 66(a) of the
Trademark Act?
“Because a bona fide intent to use the mark in commerce is a statutory
requirement of a valid intent-to-use trademark application under [Trademark Act]
Section 1(b) [15 U.S.C. § 1051(b)], the lack of such intent is a basis on which an
opposer may challenge an applicant's mark.” M.Z. Berger & Co. v. Swatch AG,
787 F.3d 1368, 114 USPQ2d 1892, 1897 (Fed. Cir. 2015). Applicant's intent must be
“firm,” “demonstrable” with “objective evidence of intent” and “more than a mere
subjective belief.” Id. at 1897-98. We have long held, and the Federal Circuit recently
affirmed, that our “determination of whether an applicant has a bona fide intention
to use the mark in commerce is to be a fair, objective determination based on all the
circumstances.” Id.; Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d
1351, 1355 (TTAB 1994); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26
USPQ2d 1503, 1506 (TTAB 1993).
An opposer bears “the initial burden of demonstrating by a preponderance of the
evidence that applicant lacked a bona fide intent to use the mark on the identified
goods.” Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB
2008). An opposer may meet this burden by establishing that there is an “absence of
any documentary evidence on the part of [Applicant] regarding such intent.”
Commodore, 26 USPQ2d at 1507.
If an opposer meets its burden, the applicant may “elect to try to rebut the
opposer[s’] prima facie case by offering additional evidence concerning the factual
Opposition No. 91209708
- 32 -
circumstances bearing upon its intent to use its mark in commerce.” Id. at 1507 n.11.
However, an applicant's “mere statement of subjective intention, without more, would
be insufficient to establish applicant's bona fide intention to use the mark in
commerce.” Lane, 33 USPQ2d at 1355.
Angela Thevessen, an employee in Applicant’s export department, testified to the
following facts:
• Applicant is a manufacturer of medicinal products, medical devices, and
cosmetic products;75
• Applicant started in Germany;76
• Applicant first sold it VAGISAN branded products in 1998;77
• Applicant launched its VAGISAN moisturizing cream in 2008;78
• Applicant is the market leader in Germany;79
• Prior to filing its application in the USPTO, Applicant sold its VAGISAN
products in Germany, Belgium, Bulgaria, Estonia, Finland, Iran, Jordan, Croatia,
Lithuania, Latvia, Poland, Switzerland, Serbia, Montenegro, Slovenia, and the Czech
Republic;80

75 Thevessen Testimony Dep., p. 7 (47 TTABVUE 10).
76 Thevessen Testimony Dep., p. 8 (47 TTABVUE 11).
77 Thevessen Testimony Dep., pp. 7 and Exhibit 1 (47 TTABVUE 10 and 44).
78 Thevessen Testimony Dep., p. 8 (47 TTABVUE 11).
79 Thevessen Testimony Dep., p. 8 (47 TTABVUE 11).
80 Thevessen Testimony Dep., p. 8 and Exhibit 1 (47 TTABVUE 11 and 44).
Opposition No. 91209708
- 33 -
• Applicant expands sales to countries outside of Germany by finding business
partners or distributors able to sell intimate feminine hygiene products.81
We usually search for one partner who gets exclusive
distributorship, and then I take care of getting - - gathering
information of the market, which competitors are there,
what are our possibilities, our options, is the market
lucrative for us, how big is it, how many inhabitants? I
teach the partner in our brands and products. I develop a
marketing strategy for the market.82
• At the end of 2011, Applicant’s managing directors decided to enter the U.S.
market83 “[b]ecause the U.S. is by far one of the most lucrative, wonderful markets
in the world.”84
• Because Applicant’s VAGISAN moisturizing cream may be considered a Class
B medical device, entering the U.S. market is a complex undertaking.85
We started in 2013, the process of getting to know how
regulatory process in the U.S. market is like because it is
different than in Europe. We decided in 2011 that we want
to conquer the U.S. market, but if you go into a lucrative
market like the U.S., you really have to prepare that well,
and that is why we wanted to gain some experience in
smaller countries, countries which are not so - - when you
make a mistake, it is not so bad as it would be in the U.S.,
and that is why it took us a while.86

81 Thevessen Testimony Dep., p. 6 (47 TTABVUE 9).
82 Thevessen Testimony Dep., pp. 6-7 (47 TTABVUE 9-10).
83 Thevessen Testimony Dep., pp. 11-12 (47 TTABVUE 14-15).
84 Thevessen Testimony Dep., p. 16 (48 TTABVUE 5). Although designated as confidential,
we do not consider Applicant’s characterization of the U.S. market as “lucrative” and
“wonderful” to be confidential. Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g) (“The Board
may treat as not confidential that material which cannot reasonably be considered
confidential, notwithstanding a designation as such by a party.”).
85 Thevessen Testimony Dep., p. 25 (47 TTABVUE 21).
86 Thevessen Testimony Dep., p. 26 (47 TTABVUE 22).
Opposition No. 91209708
- 34 -
• When Applicant enters the U.S. market, it will begin slowly.
I think in the beginning we would start very slow, and then
we would - - whenever we conquer a market, we go very
slowly into the market, and then year after year we
increase, so we would start with 200,000 pieces.87
• Applicant has not sold VAGISAN products in the United States;88
• Applicant has not advertised the sale of VAGISAN products in the United
States;89
• Applicant does not have a written or formal marketing plan for the VAGISAN
products in the United States;90
• As of the filing date of the application, Applicant had not entered into any
contracts to sell its VAGISAN products in the United States;91 and
• “In the beginning of 2012,” Applicant had discussions with a U.S. company
“extremely interested in selling our Vagisan.”92 Applicant has been in contact with
two U.S. companies regarding distributing VAGISAN products but Applicant has put
its search for a distributor on hold because of this opposition.93

87 Thevessen Testimony Dep., pp. 35-36 (47 TTABVUE 31-32).
88 Thevessen Testimony Dep., p. 34 (47 TTABVUE 30).
89 Thevessen Testimony Dep., p. 34 and 35 (47 TTABVUE 30 and 31).
90 Thevessen Testimony Dep., p. 35 (47 TTABVUE 31); see also Applicant’s response to
Opposer’s document request Nos. 7 and 29-31 (39 TTABVUE 177 and 182). In addition,
Applicant has not conducted any market research for entering the U.S. market. Applicant’s
response to Opposer’s interrogatory No. 4 (39 TTABVUE 171);
91 Thevessen Testimony Dep., p. 41 (47 TTABVUE 37); see also Applicant’s response to
Opposer’s interrogatory Nos. 2-3 (39 TTABVUE 170-171) and document request No. 19 (39
TTABVUE 179-180).
92 Thevessen Testimony Dep., p. 16 (48 TTABVUE 5).
93 Thevessen Testimony Dep., p. 30 (47 TTABVUE 30).
Opposition No. 91209708
- 35 -
Opposer argues that because Applicant has not introduced “any evidence,
documentary or otherwise, showing that it has an intent to use the VAGISAN Mark
in the United States at the time it filed its VAGISAN Application,” Applicant “had
only an intent to reserve the mark for possible use at some unspecified time in the
future, not a firm intent to use the mark.”94 Applicant argues, to the contrary, that
because it had already sold VAGISAN products in numerous countries outside of
Germany, it “possessed the ability to sell the VAGISAN product in the United States
at the time of filing its trademark application.”95
In our analysis of whether Applicant had the requisite intent-to-use, we have
considered the fact that since 1998 Applicant has been in the business of making and
selling intimate feminine hygiene products in Germany and in other countries. The
Board has previously found that an applicant's capacity to market or manufacture
the identified goods is evidence supporting that an applicant has a bona fide intent
to use. See Swatch AG v. M. Z. Berger & Co., 108 USPQ2d 1463, 1477 (TTAB 2013),
aff’d 114 USPQ2d 1892; Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1643
(TTAB 2007).
Moreover, shortly after the filing its application, Applicant met with a U.S.
company to discuss distributing its VAGISAN products in the United States. This
meeting was sufficiently contemporaneous with the filing date to support Applicant’s
bona fide intent to use the mark. Swatch AG v. M. Z. Berger & Co., 108 USPQ2d at

94 Opposer’s Brief, p. 28 (57 TTABVUE 35).
95 Applicant’s Brief, p. 11 (61 TTABVUE 15).
Opposition No. 91209708
- 36 -
1474, aff’d 114 USPQ2d 1892; Lane Ltd. v. Jackson Int'l Trading Co., 33 USPQ2d at
1355 (documentary evidence created nine to eleven months after the application was
filed held sufficiently contemporaneous evidence of intent).
Finally, even if Applicant did not have a formal or written business plan for
entering the U.S. market, it had the ability to manufacture and market the products
at issue and it had demonstrated the ability to export the products into other
countries to set the stage for its expansion into the U.S market. In this regard, Ms.
Thevessen testified that Applicant would enter the U.S. market by finding a partner
who would distribute the products and that they would start on a small scale and
expand.
We have carefully considered all of the parties’ arguments and evidence in the
record, even if not specifically discussed herein. Viewing all circumstances
objectively, Applicant's actions reveal a bona fide intention to use the mark in a real
and legitimate commercial sense on the identified goods at the time it filed the
application. Compare L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1443 (TTAB 2012)
(applicant’s generalized and non-specific references to licensing and outsourcing as
strategies for distribution, lack of contacts with potential distributors, “no record
evidence that applicant is now or ever was in the business of producing aloe vera
drinks or any other foods or beverage product” fails to “corroborate applicant’s bald
allegation that he has a bona fide intent to use the mark in commerce.”).
Decision: The opposition is dismissed.