The 4th Circuit makes trademark use more contextual

Combe Inc. v. Dr. August Wolff Gmbh & Co. Kg Arzneimittel, No. 19-1674 (4^th 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.”