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Mirina Looks for Court Order on Trademark Suit Ahead of Marina Expansion into microRNA Drugs

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By Doug Macron

Mirina has asked a US District Court for a preliminary injunction blocking Marina Biotech from using its recently adopted moniker ahead of a ruling in a trademark-infringement suit between the companies over the similarity of their names.

In a filing obtained by Gene Silencing News, Mirina argued that Marina's planned foray in 2011 into the microRNA therapeutics space, which is Mirina's core focus, makes immediate court action "necessary and appropriate."

"The year 2011 is only four months away," Mirina said in its request. "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."

Earlier this month, Seattle, Wash.-based Mirina sued Bothell, Wash.-based Marina, which changed its name from MDRNA in July, for taking a name too similar to its own. It also charged that even though Marina officials were cautioned about the company's name change would cause confusion with its neighbor, which was founded in 2008 to develop miRNA inhibitors using the so-called minor groove binder technology licensed from Nanogen (GSN 8/19/2010 & 8/21/2008).

According to Mirina, because of the early-stage nature of miRNA therapeutics, it is "a struggle … to secure funding, as well as talented employees, for continuing its quest for research investors, partners, and customers. It is therefore extremely important for [the firm] to be able to control the goodwill, branding, and industry perception associated with its … name.

"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 states in its injunction request.

For its part, Marina maintains that it chose its new name in an effort to reflect the "marine nature" of its two locations — Puget Sound and Boston Harbor — following its recent acquisition of Boston-based Cequent Pharmaceuticals, while "preserving" its Nasdaq ticker, MRNA, Marina President and CEO Michael French said earlier this month.

Nonetheless, Mirina views the move as trademark infringement, and said in last week's filing that the name similarity is even more likely to cause confusion since Marina "is openly discussing expanding … into RNA biotech services that are directly competitive" with Mirina's — namely, miRNA-targeting therapies.

In June, Marina President and CEO Michael French told Gene Silencing News that the company was exploring the use of its various technologies as miRNA inhibitors (GSN 6/10/2010). At the time, however, French characterized such efforts as very early-stage.

But in last week's court filing, Mirina noted that Marina has "announced plans to directly compete with [Mirina] starting in 2011 when it will be offering the same microRNA services … under the indistinguishable and confusingly similar Marina" trademark.

Indeed, earlier this month at the BMO Capital Markets Focus on Healthcare conference, French told investors that Marina's technologies are useful in modifying single-stranded oligonucleotides and therefore allow the firm to "enter the microRNA space from the microRNA antagonist perspective.

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"The same technologies that are applicable in RNAi therapeutics can also be applied in the microRNA space," he noted during the conference. "So, by mid-2011, we look to be able to have a kind of capability in this area to partner these [technology] platforms around microRNA therapeutics."

In an e-mail to Gene Silencing News this week, French said that "we’ll be opportunistic with regard to microRNA … therapeutics since our core effort is focused on siRNA therapeutics right now," but confirmed that "I would like to be able to leverage our core technologies into some capability in the microRNA therapeutics space by mid-2011."

Already, in May, Marina has established a "collaborative effort" with an undisclosed company focused on miRNA-directed oncology therapies (GSN 5/6/2010), and French said in his e-mail that his firm is aiming to establish target knockdown proof of concept in rodents.

But, "even if there were different 'submarkets' involved between [Mirina and Marina's] services, the 'general class' of purchasers and investors in RNA biotech services are involved, which creates an unacceptable likelihood of confusion," Mirina said in its preliminary injunction request. When Marina begins playing in the miRNA drugs space, the "irreparable harm to [Mirina] will only increase."

Mirina further argued that Marina will "suffer no harm if it is forced to immediately stop its unauthorized use of" its name since it "just recently adopted the Marina mark … and should be easily able to change its name at this point." Additionally, Marina "has not yet expended substantial resources advertising and marketing its infringing services, and [its] major marketing push under [the new name] has not yet occurred.

Moreover, the company was aware of Mirina's use of its name and its objections to MDRNA's name change before it became Marina, and efforts to settle the matter "amicably" were unsuccessful, Mirina added in last week's filing. The company added that it approached Marina "with a final settlement offer to try to resolve this conflict without expensive motion practice, but [Marina] refused to change its name," requiring the lawsuit and injunction request.

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