By Doug Macron
Marina Biotech and Mirina have settled their trademark dispute over the similarity of their names, with each company agreeing to drop all claims and counterclaims and bear their own attorney fees and court costs.
Specific terms of the settlement were not made public, but Marina President and CEO Michael French confirmed to Gene Silencing News that his company would continue to use its name and that “no compensation was exchanged between the parties.”
Officials from Mirina, which initiated the litigation, were not available for comment.
The end to the legal row marks a victory for Marina, which had long maintained that it is within its rights to use its name, and which court documents revealed had initially offered to pay Mirina $50,000 in cash to end the matter.
It is unclear whether Mirina will continue to use its name.
The court battle began in August 2010 when Mirina sued Marina, claiming that its name was too similar to its own. One month earlier, Marina had changed its name from MDRNA, and Mirina alleged that the names' similarity was “likely to cause confusion, mistake, or deception as to the origin, sponsorship, or approach of the services” (GSN 8/19/2010).
Mirina specifically said that the companies' names were so alike, and that their Seattle-area headquarters were so close to each other, that people in the industry had expressed confusion over which company was which. In once instance, Mirina said, a representative of pharmaceutical firm Bristol-Myers Squibb initially dismissed a potential business arrangement with Mirina after mistaking it for Marina (GSN 9/30/2010).
According to Mirina, making matters worse was Marina's decision to expand into the microRNA space, which would result in the same “microRNA-based drug-development services [being] offered under confusingly similar Marina and Mirina [trade] marks, grossly exacerbating an already untenable situation ripe for confusion in the industry."
At the time Mirina filed the suit, French told Gene Silencing News that the company chose Marina “to connect the marine nature of our two locations — Puget Sound and Boston Harbor — while preserving our Nasdaq ticker, MRNA," which the vendor has used since June 11, 2008. Though headquartered in Washington, Marina had recently acquired Boston-based Cequent Pharmaceuticals
Meanwhile, Marina argued that those working in the biotechnology industry are “highly sophisticated” and “exercise a high degree of care” in making investment and collaboration decisions, making it unlikely that someone would confuse the companies.
"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,” Marina wrote in court filings. “These representatives are unlikely to base their material decisions for selecting a service provider based on cursory or hearsay information."
Moreover, 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.
The court apparently agreed. In March, it rejected Mirina's request for a preliminary injunction barring Marina from using its name, stating that Mirina only provided evidence that confusion occurred during conversations and that “all of the confusion was cleared up after the confusion became apparent” (GSN 3/10/2011).
Furthermore, the court stated that “many of the instances of confusion … occurred in casual conversation … [in] an environment completely unrelated to marketing” by either company. In those cases where the confusion occurred in conversation with potential investors, it was “cleared up relatively quickly.”
This came even after Mirina pointed out that French himself had confused the companies in a declaration submitted to the court. In it, he wrote in the declaration that Mirina had alleged in earlier filings that Marina had "admitted changing our name was 'quick and easy.'" He then goes on to state that "Marina both misrepresents my comments … and takes them out of context," when he appears to mean that Mirina had misrepresented the comments.
The court further concluded that while Marina has expressed interest in the miRNA field, “its 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.”
Although Marina did have to bear the expense of defending itself in court, through the settlement, it confirmed its rights to its name without having to fork over additional money to Mirina. French had stated in his declaration to the court that when officials from Mirina raised their concerns over the companies' names, he offered to pay Mirina $50,000 to cover the costs of changing its name.
Carl Weissman, the CEO of Mirina parent firm Acclerator, rejected the offer and countered with a request for $100,000 and $400,000 in Marina stock, which the company declined, French said.
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