NEW YORK – Rakuten Medical, a cancer therapy developer, has escalated a trademark dispute by suing Illumina in US federal court.
According to a complaint filed Wednesday in the US District Court for the District of Northern California, Rakuten Medical seeks a declaration that its Illuminox platform will not infringe Illumina's trademarks. Filings submitted by Illumina to the US Patent and Trademark Office Trademark Trial and Appeal Board (TTAB) show that the sequencing firm has asked the agency to reject Rakuten Medical's application for the Illuminox trademark.
Rakuten Medical has also asked the court to award it attorneys' fees associated with the suit.
Illumina declined to comment on the lawsuit; Rakuten Medical did not immediately respond to a request for comment.
San Mateo, California-based Rakuten Medical, formerly known as Rakuten Aspyrian, is a biotechnology company founded by Hiroshi Mikitani, who also founded the Japan-based ecommerce conglomerate Rakuten. Illuminox is a "proprietary anti-cancer treatment platform that is comprised of drug, device, and other related technologies," according to firm's website. Drugs can include monoclonal antibodies that target specific cell-surface antigens conjugated to light-excitable dyes.
Illumina launched its challenge to Rakuten Medical's trademark application in November 2019 and filed its opposition in March. TTAB records show that San Diego-based Illumina has actively policed its trademarks, including the "Illumi-" and "Tru-" prefixes, in the life science industry. For example, in 2016 the TTAB sided with Illumina and cancelled trademarks awarded to Meridian Bioscience for the former Illumigene platform, now known as Alethia. In 2019, Illumina got the TTAB to cancel a trademark registration by its competitor BGI.
Illumina is also involved as the plaintiff in several other pending trademark challenges, including with the Chan Zuckerberg Biohub over that organization's IDseq infectious disease analysis platform.