770 F. Supp. 2d 1153
W.D. Wash.2011Background
- Plaintiff Mirina Corporation alleges trademark infringement, trade name infringement, false designation of origin, unfair competition, and WCPA violation against Marina Biotech.
- Marina Biotech changed its name from MDRNA, Inc. to Marina Biotech in July 2010; Mirina filed a Mirina mark application five days later.
- Both parties operate in RNA-based therapeutics; Mirina focuses on microRNA drugs, while Marina Biotech works on RNA interference products.
- Plaintiff argues confusion between Mirina and Marina Biotech due to phonetic similarity of marks; Defendant argues lack of close proximity and identity in services.
- Court analyzes likelihood of confusion under the Sleekcraft eight-factor test and Winter framework for preliminaryinjunctions, and ultimately denies Mirina's motion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion standard applies | Mirina argues confusion is likely due to phonetic similarity and shared channels. | Marina Biotech contends confusion is not sufficiently probable given weak proximity and other factors. | Likelihood of confusion present but not strong enough |
| Irreparable harm presumption post-Winter | Irreparable harm presumed from infringement risk and loss of goodwill. | Winter requires showing likely irreparable harm; no proven reputational harm or non-monetary injury. | No irreparable harm shown |
| Balance of hardships and public interest | Injunction necessary to prevent investor confusion and protect Mirina's mark. | Defendant would bear rebranding costs and other harms; Mirina lacks demonstrated goodwill. | Hardships do not tip in Mirina's favor; public interest not sufficient |
| Likelihood of success on merits | Sleekcraft factors favor Mirina due to phonetic similarity and channels. | Evidence does not show strong proximity, strength, or actual confusion; defenses prevail. | Serious questions exist, but not sufficient for success on merits at this stage |
Key Cases Cited
- Winter v. NRDC, 555 U.S. 7 (United States Supreme Court 2008) (redefines preliminary injunction standards)
- AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (eight-factor test for likelihood of confusion)
- Freecycle Network, Inc. v. Oey, 505 F.3d 898 (9th Cir. 2007) (likelihood of confusion framework)
- Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (initial interest confusion concept)
- Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127 (9th Cir. 2011) (serious questions version remains viable after Winter)
- Morningside Group Ltd. v. Morningside Capital Group, 182 F.3d 133 (2d Cir. 1999) (investor sophistication and potential confusion)
- Internet Specialties West, Inc. v. Milon-DiGiorgio Enters., Inc., 559 F.3d 985 (9th Cir. 2009) (public interest in avoiding confusion)