By Doug Macron
Mirina last week fired the latest salvo in its trademark-infringement suit against Marina Biotech, telling a US District Court that mistakes in Marina's own legal filings help establish that there is confusion in the industry caused by the similarity of the companies' names.
Mirina also said that its officials have encountered this confusion among biotech-savvy individuals, including a representative of pharmaceutical firm Bristol-Myers Squibb who initially dismissed a potential business arrangement with the company after mistaking it for Marina.
"Marina devotes the lion's share of its [defense] making the argument that the biotech industry is 'highly sophisticated' and 'exercises a high degree of care' making it unlikely anyone would be confused between … Mirina and Marina," Mirina wrote to the court.
"Marina is flat wrong," it adds. "There have already been multiple instances of actual confusion … despite Marina having adopted [its new name] only a few months ago."
The dispute began this summer when Seattle-based Mirina sued Bothell, Wash.-based Marina over the similarity of their names (GSN 8/19/2010).
In the lawsuit, Mirina, which was founded by investment firm Accelerator in 2008, alleged that the companies were likely to be confused for one another, and that Marina should change its name since it only adopted its moniker in July following its acquisition of Boston-based Cequent Pharmaceuticals. Previously, it was called MDRNA.
Earlier this month, Mirina asked the court hearing the case to issue a preliminary injunction barring Marina from continuing to use its new name during the pendency of the case on the grounds that the name similarity could significantly damage its business since the companies both play in the microRNA space.
"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.
In a motion against the injunction request this month, Marina countered that the companies' names are sufficiently different that they would not be confused by the savvy and educated players working with RNAi and miRNA technologies (GSN 9/23/2010).
"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 said. "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."
But in a court filing last week, Mirina noted that mistakes have already occurred, notably in court filings made by Marina in the case. In fact, the company points out that Marina President and CEO confuses the companies' names in a declaration filed with the court this month.
Specifically, Marina CEO Michael French 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.
"When there is no phonetic difference between two terms, it is human nature to interchange them when writing," Mirina said of French's error. "The reality is, because [the company names] are both pronounced the same and both invoke the same image of a boat harbor, it is inevitable people will confuse the two."
Marina's legal counsel also confused the companies in drafting the firm's opposition to the preliminary injunction, stating that "Marina relies on Accelerator to market investment opportunities," when in fact it is Mirina that is associated with Accelerator.
In terms of the potential for the name similarity to impact Mirina's business opportunities, the company said in last week's filing that a Bristol-Myers Squibb executive dismissed a potential alliance between the companies after mistaking Mirina for Marina.
Mirina board member Thong Le, who is also a managing director at venture capital firm WRF Capital, said in a declaration submitted to the court that at a "recent" meeting with Bristol-Myers Squibb representatives, he mentioned that the big pharma should "think about establishing a partnership" with Mirina.
"In response, one of the executives at Bristol-Myers Squibb initially was dismissive of my suggestion, stating that he had already looked into 'Marina.' When I asked follow-up questions, it turned out that the executive was referring to 'Marina Biotech' and had confused" the company with Mirina, he noted.
"Had [Le] not had the opportunity or not pressed the issue, the rejection of Mirina would never have been discovered and would never have been rectified," Mirina said.
"It is true that for positive funding or partnering decisions, extensive due diligence is made and confusion in that instance may not be as likely, but for adverse funding and partnering decisions, it is the norm that these adverse decisions are made quickly and informally without due diligence," the company told the court.
"Potential investors and partners get numerous inquiries in short periods of time, and if that potential investor or partner is under the mistaken impression it has already done due diligence or considered 'Mirina' when it actually had considered a company doing the same type of research in the same city under a confusingly similar name, it likely would pass on Mirina without significant thought or consideration," it added.