By Doug Macron
Marina Biotech this week moved to head off a court order that would prevent it from using its new name, asking a US District Court to reject a request for a preliminary injunction by microRNA drugs startup Mirina as part of a trademark dispute between the firms.
In court filings obtained by Gene Silencing News, Marina argued that the two companies' names are sufficiently different that they would not be confused by the savvy and educated players in the RNAi and miRNA spaces.
In addition, the court filing said Marina had offered to settle the suit by paying Mirina $50,000, but that Mirina had rejected the offer as too low, and instead asked for $500,000 in cash and Marina stock.
The recent developments stem from a lawsuit Mirina filed against Marina over the similarity between their names (GSN 8/19/2010). Mirina, located in Seattle, was established in 2008 by investment firm Accelerator, while Marina, headquartered in Bothell, Wash., changed its name from MDRNA in July following its acquisition of Boston-based Cequent Pharmaceuticals.
In its suit, Mirina alleged that the companies were likely to be confused for one another, and that Marina adopted the new moniker "in competition with Mirina to offer and promote research and drug-development services, including the development of RNA-based therapeutics."
"Mirina has and will continue to be damaged by such false description, false representation, and false designation of origin in a manner and amount that cannot fully be measured or compensated in economic terms," it said in its lawsuit.
Earlier this month, Mirina asked the US District Court hearing the case to issue a preliminary injunction barring Marina from using its name, charging that Marina's planned expansion into the miRNA field would put the companies in direct competition and lead to confusion in the marketplace.
"Without a preliminary injunction during the pendency of this case, exactly the same microRNA-based drug-development services will be offered under confusingly similar Marina and Mirina [trade] marks, grossly exacerbating an already untenable situation ripe for confusion in the industry," Mirina said in its request.
"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 its injunction request.
But in its motion opposing Mirina's injunction request, Marina argued that its decision to take its new name had nothing to do with Mirina, but rather was done in order to preserve its existing Nasdaq ticker symbol, MRNA, while reflecting that its offices "are near port cities — Seattle and Boston — and thus near marinas."
Further, Marina pointed out that it has "many prestigious customers and partners," including Roche, Pfizer, Novartis, AstraZeneca, and the University of British Columbia. "By contrast, [Mirina] has apparently been unable to establish any customers.
"Because of its existing relationship with major pharma and research institutes, Marina Biotech has never had any incentive, nor would it want to, intentionally copy the name of another corporation," it said.
At the same time, "potential customers, partners, and investors of Mirina are highly sophisticated companies and individuals that are unlikely to be confused" between the two companies, it added. "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," Marina noted.
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"The persons charged with conducting such evaluations on behalf of their organizations include scientists and engineers with advanced degrees … high-ranking business executives, and lawyers. These representatives are unlikely to base their material decisions for selecting a service provider based on cursory or hearsay information."
Mirina's suggestion that a potential investor or partner may pass on the company because it "hears or reads a negative review or report regarding Marina … [is] rank speculation [and] insufficient to meet their burden of proving a likelihood of confusion," Marina said.
In a declaration to the court, Marina President and CEO Michael French added that he "has not been made aware of a single instance wherein our company has been mistakenly identified by a third party as Mirina … has been incorrectly attributed with any activity or occurrence actually associated with Mirina … or has been referred to by a third party when that … party was actually referring to Mirina."
Importantly, Marina noted in its motion against the preliminary injunction that Mirina has admitted its name is a play on "miRNA" — shorthand for microRNA — and that a number of other companies in the space use this convention, including Miragen Therapeutics and Mirna Therapeutics.
"In contrast, Marina Biotech … does not include the industry familiar 'mir,' but uses instead the common words 'marina' and 'biotech.'" Its name, therefore, "is easily distinguishable from the non-word marks beginning with the letters 'mir,'" it stated.
And while Mirina did not file a trademark application on its name until five days after Marina changed its name from MDRNA, French said in his declaration that he had offered to pay the company $50,000 in cash to compensate it for the cost of changing its name.
Accelerator CEO Carl Weissman, French said, rejected the offer and countered with a demand for $100,000 in cash and $400,000 in Marina stock. When French declined, Mirina filed for a preliminary injunction, he said.