Combe Inc. v. Dr. Aug. Wolff GmbH & Co. KG Arzneimittel
309 F. Supp. 3d 414 (2018)
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Rule of Law:
To state a claim for trademark infringement, dilution, or unfair competition under the Lanham Act, a defendant's mark must be used in commerce, which requires the goods to be actually sold or transported in commerce within the United States. Mere preparatory activities to enter the U.S. market are insufficient to satisfy this requirement unless the introduction of the product is imminent and impending.
Facts:
- Since 1973, Combe Incorporated, a U.S. company, has sold a variety of women's personal care products under the registered trademark VAGISIL.
- Dr. August Wolff GmbH & Co. KG Arzneimmitel is a German company that manufactures and sells similar products in Europe and other foreign countries under the mark VAGISAN.
- Since October 2011, Dr. August Wolff has maintained a website at 'www.vagisan.com' with links to third-party pharmacies where consumers can purchase its products.
- On January 24, 2012, Dr. August Wolff filed an application with the U.S. Patent & Trademark Office to register the mark VAGISAN.
- In March 2012, representatives from Dr. August Wolff met in Germany with representatives from a U.S. drugstore, Lil Drugstore, about potential distribution.
- In January 2013, Dr. August Wolff provided presentation slides about VAGISAN to a U.S.-based consultant for an investor conference.
- In June 2014, Dr. August Wolff filed an application with the U.S. Food & Drug Administration (FDA) for approval to sell its VAGISAN products in the United States.
- Dr. August Wolff has not sold or transported any products bearing the VAGISAN mark in the United States and has stated it will not do so until the trademark dispute is resolved.
Procedural Posture:
- Dr. August Wolff filed an application with the U.S. Patent & Trademark Office (PTO) Trademark Trial and Appeal Board (TTAB) to register the mark VAGISAN.
- Combe Incorporated filed an opposition to the application with the TTAB.
- The TTAB issued a final decision dismissing Combe's opposition.
- Combe filed a civil action in the U.S. District Court for the Eastern District of Virginia, appealing the TTAB's decision and adding claims for federal and state trademark infringement, dilution, and unfair competition.
- Dr. August Wolff filed a motion to dismiss the additional claims under Rule 12(b)(6) for failure to state a claim, arguing that it had not made 'use in commerce' of the mark in the United States.
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Issue:
Do a foreign company's preparatory activities to enter the U.S. market—such as filing a trademark application, applying for FDA approval, and maintaining a website accessible in the U.S.—constitute 'use in commerce' under the Lanham Act sufficient to support a claim for trademark infringement if no products have actually been sold or transported in the United States?
Opinions:
Majority - T.S. Ellis, III
No, a foreign company's preparatory activities do not constitute 'use in commerce' under the Lanham Act if the company has not actually sold or transported goods in the United States. The plain text of the Lanham Act's definition of 'use in commerce' (15 U.S.C. § 1127) requires that for a mark to be used on goods, the goods must be 'sold or transported in commerce' that Congress can regulate. While the 'bona fide use' part of that definition may not apply in infringement cases, the 'sold or transported' requirement does. Defendant's actions, such as filing for a trademark, seeking FDA approval, and meeting with a potential distributor, are merely preparatory and do not meet this standard. Courts have found 'use in commerce' only when market entry is 'imminent and impending,' which is not the case here, as the defendant has explicitly put its U.S. plans on hold. The defendant's website is also insufficient to establish use in commerce because an injunction would have an improper extraterritorial effect, as there is no evidence the website has had a significant effect on U.S. commerce.
Analysis:
This decision reinforces a strict statutory interpretation of the 'use in commerce' requirement for trademark infringement claims, establishing a high bar for plaintiffs seeking to sue potential competitors. It clarifies that substantial preparatory steps, short of actual sales or transport, are generally insufficient to trigger liability under the Lanham Act. This ruling forces trademark holders to wait until a product is actually on the market or its launch is truly imminent before they can bring an infringement action, potentially allowing competitors to invest significantly in pre-market activities without fear of litigation. The case draws a clear line between planning to infringe and actionable infringement, thereby limiting the scope of preemptive trademark litigation.
