By Doug Macron
The court hearing Mirina's trademark infringement suit against Seattle-area neighbor Marina Biotech has denied Mirina's preliminary injunction request to prevent Marina from using its name, which it changed from MDRNA last summer, until the case is settled.
In making its decision, the court said that Mirina has “raised only serious questions on the merits of its infringement claim,” and not shown that it would suffer “irreparable harm” if Marina is allowed to continue using its name, according to a court document obtained by Gene Silencing News.
The court said that it made its ruling by considering a number of factors established for determining the likelihood of trademark confusion including the strength of a trademark. While Mirina had argued that its name is novel and not one found in a dictionary, it admitted that the spelling “suggests an association” with miRNAs, the court noted. Additionally, the fact that other companies in the miRNA space including Mirna Therapeutics use a similar approach with their names further indicates that its trademarked name is “moderately weak.”
The court also found that, despite Mirina's claims that both firms provide “competing, similar, and complementary services,” Marina's work to date has been primarily in RNAi. At the same time, Mirina's services are still in the development stage and the company did not present any evidence that it has “actually developed any product or provided any service,” the court said.
The court did find some of Mirina's argument compelling, however.
In regards to situations where the companies have been confused for one another, the court said that Mirina has only provided evidence that confusion occurred during conversations and that “all of the confusion was cleared up after the confusion became apparent.”
Furthermore, “many of the instances of confusion … occurred in casual conversation … [in] an environment completely unrelated to marketing” by either company, the court stated. In those cases where the confusion occurred in conversation with potential investors, it was “cleared up relatively quickly.”
Still, the court found that the cases of “actual confusion” among potential investors weighed in favor of Mirina. It also determined that both Marina and Mirina share marketing channels, and that even though investors in the industry are “sophisticated,” they make “a series of inquiries before making an ultimate investment decision, and confusion could diminish their willingness to continue inquiring.”
In the end, the court found that while the “phonetic similarity” between the companies' names has led to confusion in “interpersonal conversations … [it] is left with some doubt as to whether this confusion is as widespread, invasive, or detrimental as [Mirina's] selective evidence may make it appear.”
And while Mirina has “raised serious questions about the likelihood of confusion,” it has “entirely failed to submit proof beyond speculation as to its reputation and goodwill in the [marketplace], which leaves the court no basis upon which to evaluate” any harm.
Because of these and other factors, Mirina is “not entitled to injunctive relief,” it ruled.
Mirina, a developer of microRNA inhibitors founded in 2008 by biotech-investment and -development firm Accelerator, sued Marina last August over the similarity of their names, arguing that investors, potential partners, and customers were likely to confuse the companies for one another and that Marina adopted its new moniker "in competition with Mirina to offer and promote research and drug-development services, including the development of RNA-based therapeutics” (GSN 8/19/2010).
Marina contends that it changed its name to better reflect “the marine nature” of its two locations — Puget Sound and Boston Harbor — following its acquisition of Cambridge, Mass.-based Cequent Pharmaceuticals, while preserving its existing Nasdaq ticker symbol, MRNA, Marina President and CEO Michael French told Gene Silencing News at the time.
In September, Mirina asked for the preliminary injunction, arguing that Marina was planning to expand into the miRNA therapeutics space, putting the two companies in direct competition and possibly causing confusion among potential investors and collaborators.
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"For example, if a potential investor or partner heard or read a negative review about an RNA biotech company from Seattle named Marina, given the limited resources available in today's economy, coupled with the numerous companies looking for support, that potential investor or partner may make a quick initial decision to not give further consideration to Mirina based on an incorrect assumption that it is the same company it had heard negative things about in the past," Mirina stated.
In a motion opposing the request, Marina told the court that any confusion between the companies was likely to be minimal because people working in the RNAi/miRNA field were educated enough not to make such a mistake.
“Potential customers, partners, and investors of Mirina are highly sophisticated companies and individuals that are unlikely to be confused" between the two companies, Marina countered. "Potential customers and partners in the field of pharmaceuticals, and potential investors in privately held or early-stage biotechnology companies, will conduct extensive due diligence prior to selecting sources for pharmaceuticals research and development services or investments.”
Shortly thereafter, Mirina fired back, pointing out that Marina had confused the two companies in its own legal filings related to the infringement case. Specifically, French wrote in a court declaration that Mirina had alleged in earlier filings that Marina had "admitted changing our name was 'quick and easy.'" He then went on to state that "Marina both misrepresents my comments … and takes them out of context," when he appears to mean that Mirina had done so. [Emphasis added.]
Mirina added that confusion had also already occurred in a business setting when a representative of pharmaceutical firm Bristol-Myers Squibb initially dismissed a potential business arrangement with the company after mistaking it for Marina.
Nonetheless, it appears Mirina's arguments were not compelling enough to convince the court that a preliminary injunction was in order.
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