ORDER
I. INTRODUCTION
This matter comes before the court on Plaintiffs motion for preliminary injunction (Dkt. # 33). The court has considered the parties’ briefing and supporting evidence, and has heard from the parties at oral argument. For the reasons explained below, the court DENIES the motion (Dkt. # 33).
Because this order “grant[s] or den[ies] an interlocutory injunction,” the court must make findings and fact and conclusions of law. Fed.R.Civ.P. 52(a)(2). The court includes its findings and conclusions in this order, which serves as a memorandum of the court’s decision. Fed.R.Civ.P. 52(a)(1) (permitting findings and conclusions within “an opinion or a memorandum of decision”);
see also FTC v. H.N. Singer, Inc.,
II. BACKGROUND
In July 2010, Defendant Marina Biotech (“Marina”) changed its business name from MDRNA, Inc. to Marina Biotech. Marina Biotech has offices in Seattle and Boston, and provides services focused on the development and commercialization of therapeutic products based on RNA interference. See French Deck (Dkt. # 54) ¶ 3. MDRNA, Inc. became a publicly traded company in June 2008, and trades on NASDAQ under the “MRNA” ticker symbol. See French Deck ¶ 4.
Plaintiff Mirina Corporation (“Mirina”) is a biotech company based in the greater Seattle area that, since August 2008, has promoted microRNA-based therapeutic research and drug development. See Hoekstra Deck (Dkt. # 43) ¶ 3. Mirina has submitted evidence that its name is pronounced like “marina” both inside and outside the company. See 2d Atwood Deck (Dkt. #35) ¶ 4, Le Deck (Dkt. #46) ¶4, Gray Deck (Dkt. # 39) ¶ 3, Harris Deck (Dkt. # 42) ¶ 3, Schubert Deck (Dkt. # 51) ¶ 3, Hall Deck (Dkt. #41) ¶5, Hubbert Deck (Dkt. # 45) ¶ 5, Hoekstra Deck (Dkt. # 43) ¶ 4, Frey Deck (Dkt. # 38) ¶ 4, Hooper Deck (Dkt. # 44) ¶ 4, Dow Deck (Dkt. #36) ¶ 4, Fleming Deck (Dkt. #37) ¶4.
Five days after Defendant changed its name to Marina Biotech, Plaintiff filed a trademark application for the “Mirina” mark. See Complaint, Ex. A. Plaintiff filed this suit against Defendant, alleging that Defendant’s use of marks and trade name constitutes trademark infringement, trade name infringement, false designation of origin and unfair competition, and a violation of Washington’s Consumer Protection Act (“WCPA”). Mirina moved for a preliminary injunction, asking the court to restrain Defendant from all acts of infringement, including using the “Marina” or “Marina Biotech” marks.
*1156 III. ANALYSIS
A. Legal Standards. 1
The Ninth Circuit has retooled its long-enduring standard for preliminary injunctive relief in the wake of
Winter v. Natural Resources Defense Council, Inc.,
Under the “traditional” criteria, a plaintiff must show (1) a strong likelihood of success on the merits, (2) the possibility of irreparable injury to plaintiff if preliminary relief is not granted, (3) a balance of hardships favoring the plaintiff, and (4) advancement of the public interest (in certain cases). Alternatively, a court may grant the injunction if the plaintiff demonstrates either a combination of probable success on the merits and the possibility of irreparable injury or that serious questions are raised and the balance of hardships tips sharply in his favor.
NRDC v. Winter,
The panel in
Alliance for the Wild Rockies (“Alliance”) v. Cottrell
took a narrow view of
Winter.
This court accordingly applies the following test for a preliminary injunction,
*1157
consistent with
Winter
and
Alliance.
The court may issue a preliminary injunction where a party establishes (1) a likelihood of success on the merits, that (2) it is likely to suffer irreparable harm in the absence of preliminary relief, that (3) the balance of hardships tips in its favor, and (4) that the public interest favors an injunction.
Id.
at 1137-38,
Winter,
B. The Merits of the Plaintiffs Case.
The court will turn to consider the first
Winter
prong: the likelihood that the Plaintiff will succeed on the merits of its trademark infringement claim.
2
A plaintiff alleging trademark infringement must show that the alleged infringer (1) used in commerce “(2) a word, false designation of origin, false or misleading description, or representation of fact,” that “(3) is likely to cause confusion or misrepresents the characteristics of [its] or another [entity]’s goods or services.”
Freecycle Network, Inc. v. Oey,
To determine whether a likelihood of confusion exists for a reasonable consumer in the marketplace, the Ninth Circuit suggests consideration of the following eight factors: (1) strength of the mark, (2) proximity of the mark, (3) similarity of the mark, (4) evidence of actual confusion, (5) marketing channels, (6) type of goods and degree of care by purchaser, (7) the defendant’s intent, and (8) the likelihood of expansion of the product line.
See AMF, Inc. v. Sleekcraft Boats,
The Plaintiff contends that the proximity, similarity, and marketing channels factors weigh heavily in Plaintiffs favor, and that the remaining Sleekcraft factors also support the existence of a likelihood of confusion. Thus, the court will consider all the Sleekcraft factors in numerical order to evaluate whether Plaintiff has shown that confusion is likely-
1. The Strength of Plaintiffs Mark.
Plaintiff contends its mark is strong because “Mirina” is a coined and/or arbitrary term (i.e., it is not a word found in a dictionary); Defendant argues that “Mirina” is a suggestive (and therefore weak) mark because it is a play on “miRNA,” which is a commonly used abbreviation for micro-RNA.
Plaintiffs arbitrariness argument is undercut by its own briefing: Plaintiff admits that Mirina’s spelling “suggests an association with mirco-RNA (sic).” Pltfi’s Reply (Dkt. # 55) at 1.
See also
Scott Decl. (Dkt. # 53), Ex. C at 21:7-18. A suggestive mark is stronger than a generic mark, but not as strong as an arbitrary mark.
See, e.g., E. & J. Gallo,
2. Proximity of the Marks.
Plaintiff contends that this factor weighs heavily in Plaintiffs favor because Plaintiff and Defendant provide “competing, similar, and complementary services (RNA based drug development)[.]” Pltf.’s Mot. at 13. Defendant argues that that assertion is not supported by evidence. See Def.’s Opp’n at 22. To whatever degree a Mirina board member opined that Plaintiff and Defendant offer similar and competitive services, Defendant argues that the value of that opinion is severely undercut by that board member’s deposition testimony, wherein he admits that Plaintiffs “services” are still in the development stage and that his understanding of Defendant’s plans to directly compete with Plaintiff is based on an unidentified press release. See Scott Deck, Ex. C at 52-53, 71; see also Durrance Deck (Dkt. # 56), Ex. C at 68:22-69:24 (Mirina board member explains that though his declaration states that Defendant offers its services to the same investors and customers as Plaintiff, that statement is based on an assumption and not on personal knowledge).
The court agrees with Defendant that the record does not establish a close proximity of the marks. While it is undisputed that both Plaintiff and Defendant are interested in developing products related to RNA, Defendant’s work to date has focused on products based on RNA interference, while Plaintiff intends to develop miRNA drugs. Particularly where Plaintiff has not presented evidence that it has actually developed any product or provided any service, it is difficult to determine exactly how closely related Plaintiffs services would be to Defendant’s services. Thus, this factor does not favor Plaintiff.
3. Similarity of the Marks.
Though Defendant points to some evidence of differences in pronunciation and the distinctions between the logos of each business (see Def.’s Opp’n at 11), Plaintiffs briefing focuses on the fact that “Mirina” and “Marina” “differ by one letter, and that one letter difference does not change their pronunciation^]” Pltf.’s Reply at 4. Thus, Plaintiffs infringement argument is based on the similarity of sound and spelling between “Mirina” and “Marina,” but not on the appearance of logos or meanings of the marks.
While there is some evidence of potential variation in pronunciation of “Mirina” (as either “marina” or “meerina”) (see Scott Deck, Ex. C at 19-20), the Plaintiff has submitted statements from multiple declarants who state that “Mirina” and “Marina” are phonetically indistinct. See Atwood Deck (Dkt. #34) ¶2, Gray Deck (Dkt. # 39) ¶ 3, Hall Deck (Dkt. # 41) ¶ 5; Harris Deck (Dkt. # 42) ¶ 3; Hoekstra Deck (Dkt. # 43) ¶ 4; Hooper Deck (Dkt. #44) ¶ 4; Hubbert Deck (Dkt. #45) ¶5; Le Deck (Dkt. # 46) ¶ 4. Thus, to the extent that Plaintiff argues that the “sound” of Plaintiffs and Defendant’s marks and their spellings are similar, the court agrees.
With regard to visual similarity of Plaintiffs and Defendant’s marks in the form of logos: the Plaintiff has not devoted any briefing to a comparison of Plaintiffs logo with Defendant’s logo, nor submitted any evidence about any perceived similarity between Plaintiffs blue, green, and white logo with a capital “M” and Defendant’s logo depicting a circular cellular construct. Neither has Plaintiff submitted any evidence of a similarity of meaning between Plaintiffs and Defendant’s marks: Plaintiff has submitted evidence that because “Mirina” can be pronounced like “marina,” a hearer would understand “Mirina” to *1159 evoke images of water and boating, but this evocation is undercut by the mark’s intended connection with micro-RNA. Thus, while the court finds that the marks are similar as to sound, this finding of similarity does not extend to sight (in the sense of logo) or meaning.
4. Evidence of Actual Confusion.
Plaintiff has submitted evidence that, at least on a handful of occasions in casual conversation, there has been some confusion as to whether a speaker was referring to “Mirina” or “Marina.” See Frey Decl. (Dkt. # 38) ¶ 3; Gray Decl. (Dkt. # 39) ¶ 6; Harris Decl. (Dkt. # 42) ¶ 4; Hooper Decl. (Dkt. # 44) ¶ 3. Plaintiff has also submitted evidence that out of the seven or eight face-to-face conversations a Mirina affiliate had with potential investors at a conference, six of those potential investors initially confused Mirina for Marina Biotech. See Durranee Decl. (Dkt. # 56), Ex. 1 at 73. Likewise, a Mirina board member spoke to a potential investor who at first believed that the board member was referring to Defendant, but the board member recognized the confusion and clarified. See Le Decl. (Dkt. #46) ¶ 7; 2d Le Decl. (Dkt. # 47) ¶ 4. That same board member spoke with another person who was also at first confused Plaintiff and Defendant, but then the confusion was clarified. See 2d Le Decl. ¶ 6. These instances of confusion total approximately ten or fifteen conversations, and Plaintiff has not provided any evidence that any confusion has led directly to an adverse funding decision. See Durranee Decl. (Dkt. # 56), Ex. 2 at 104:14-105:1; 111:4-112:1 (Mirina affiliate’s deposition testimony that he does not know of any specific adverse funding decision due to confusion), Ex. 3 at 47:3-11 (same).
As Defendant notes, all of the actual confusion described by Plaintiff occurred during conversations, and all of the confusion was cleared up after the confusion became apparent. See Def.’s Opp’n at 16. Defendant argues that these instances are not “actual confusion” in the trademark sense because “they describe instances that do not involve marketing channels” or other circumstances where the usage of the mark is controlled by the trademark owner. Id. at 17-18.
Generally, courts consider evidence of actual confusion to be “persuasive proof that future confusion is likely.”
Sleekcraft,
5. Marketing Channels.
Plaintiff contends that its marketing channels — industry meetings, conferences, and online forums — are the same as Defendant’s. Plaintiff underscores this argument with the evidence of investor confusion at a recent investor forum, arguing that investor familiarity with both Plaintiff and Defendant shows that “the two companies court the same partners and investors.” Pltf.’s Reply at 8. The Defendant does not dispute this argument in its briefing.
*1160 Given that the undisputed evidence in the record shows that Plaintiff and Defendant rely upon at least some of the same marketing channels, the court finds that this factor weighs in Plaintiffs favor, though notes that the record is not particularly deep as to how the Plaintiff and Defendant actually market themselves in those channels. Though Plaintiffs evidence of marketing includes a lot of interpersonal communications, there is also evidence in the record that Plaintiff and Defendant also market themselves using printed or graphic materials (see, e.g., French Decl. ¶¶ 12-13 (describing a typical investor pitch for Defendant, which includes sharing printed materials and occasionally a PowerPoint presentation); Scott Deck, Ex. C at 102-103), which would thereby minimize confusion based on the phonetic similarities between Plaintiff and Defendant.
6. Degree of Care.
The parties agree that their customers (investors) are highly sophisticated. Compare Def.’s Opp’n at 18 with Pltf.’s Reply at 8-9. But, while the Defendant focuses on the high degree of care that must support an investment decision in this field, the Plaintiff focuses on the brief, informal conversations that can result in a decision not to invest (without disputing that a decision to invest would be supported by a high degree of care). Compare Def.’s Opp’n at 18-19 with Pltf.’s Reply at 8-9. According to Plaintiff, Defendant’s use of the “Marina” name has caused potential Mirina investors to reject initial networking conversations because they believe they are being approached on behalf of Defendant instead of Plaintiff. Plaintiff claims that this confusion “supports issuanee of a preliminary injunction as ‘initial interest confusion.’ ” Pltf.’s Mot. at 19.
“Initial interest confusion” occurs when a defendant’s use of confusing trademark initially attracts the consumer to the defendant, and this confusion may still be an infringement even if no sale is consummated as a result of the confusion.
See Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp.,
Nonetheless, the court finds that the Plaintiff has shown that the investor community does — to at least some degree— incorporate previous perceptions (and misperceptions) to influence their willingness to consider investment.
See, e.g.,
Le Deck ¶ 7 (describing a potential investor’s initial belief that he had already considered investing in Plaintiff, but later realized he was thinking of Defendant). Some of Plaintiffs other evidence, however, describes the typical investment procedure,
*1161
which would minimize or eliminate confusion because the Plaintiff initiates investment discussions.
See
Durrance Decl. (Dkt. # 56), Ex. 3 at 15:2-7, 79:2-80:9 (describing the typical investment procedure). Thus, because sophisticated investors make a series of inquiries before making an ultimate investment decision, and confusion could diminish their willingness to continue inquiring, the court finds that this factor weighs only slightly in Plaintiffs favor.
See Morningside Group Ltd. v. Morningside Capital Group,
7. Defendant’s Intent.
The Defendant was aware of Plaintiffs existence at the time Defendant changed its name from MDRNA, Inc. to Marina Biotech.
See
French Decl. (Dkt. # 54) ¶ 15 (describing a brief conversation between Plaintiffs board member and Defendant’s chief executive officer, before Defendant’s name change). Though Plaintiffs board member expressed concern about potential confusion, Defendant’s chief executive officer told him that he believed that potential customers or partners of either Defendant or Plaintiff would not be confused between the two businesses.
See
French Decl. ¶ 7. Though Plaintiff has not presented any evidence of malice on the part of Defendant or any intentional act of deception on the part of the Defendant, the court finds that this factor nonetheless favors Plaintiff.
See Sleekeraft,
8. Likelihood of Expansion.
The parties do not dispute that both parties intend to expand their product offerings, and there is some indication in the record that Defendant intends to expand into Plaintiffs field of miRNA therapeutics.
See, e.g.,
French Deck, Ex. A at 28 (apparently depicting Defendant’s plans to produce microRNA therapeutics by the end of 2011). Thus, this favor weighs in favor of Plaintiff.
See Sleekcraft,
The court finds that, on balance, a consideration of the Sleekeraft factors weigh somewhat in Plaintiffs favor, though not overwhelmingly so. The record before the court emphasizes phonetic similarity between the two business names and how that similarity leads to confusion in interpersonal conversations, but the court is left with some doubt as to whether this confusion is as widespread, invasive, or detrimental as Plaintiffs selective evidence may make it appear, particularly where the evidence currently before the court shows that Plaintiffs mark is relatively weak. Nonetheless, on that record, the court finds that the Plaintiff has raised serious questions about the likelihood of confusion.
C. Irreparable Harm.
Plaintiff argues that it can be presumed that if it does not obtain an injunction, Plaintiff will lose investment opportunities due to confusion and Plaintiff will lose control of its mark. Defendant questions whether such a presumption is still available post-Wmier, given that the Supreme Court requires that a plaintiff seeking preliminary injunctive relief demonstrate that “irreparable injury is likely in the absence of an injunction.”
Though some district courts in the Ninth Circuit have found that irreparable harm may no longer be presumed upon a finding that a likelihood of trademark infringement has been shown, other courts have displayed significant doubt about that approach.
See Aurora World, Inc. v. Ty Inc.,
D. The Balance of the Hardships and the Public Interest.
Plaintiff argues that “Defendant will suffer no harm” if the court grants an injunction, because Defendant has used the “Marina Biotech” name for only a matter of months. Pltf.’s Mot. at 23. Defendant disputes that, pointing to the costs of “rebranding, regulatory compliance, and any loss of shareholder value” that would have to be borne by the publicly traded company. Def.’s Opp’n at 23. Furthermore, Defendant points to the lack of evidence presented as to Plaintiffs investment in and marketing of the “Mirina” mark to argue that the balance of hardships favors Defendant. See, e.g., Durrance Decl. (Dkt. # 56), Ex. 2 at 81:11-82:5, 135:4-135:7 (deposition excerpts highlighting lack of specific evidence about Plaintiffs services), Ex. 3 at 29:15-30:3 (deposition excerpt highlighting lack of specific evidence about Plaintiffs use of “Mirina” mark).
The court agrees with Defendant and finds that the balance of hardships do not tip in Plaintiffs favor. There is no evidence in the record from which the court could conclude that Plaintiff would face more serious impact without an injunction than Defendant would face if one were granted, because the record contains no evidence of Plaintiffs reliance upon the “Mirina” mark. Plaintiff is still in the early stages of development as a business (when compared with Defendant), and the court does not have any evidence of reputation or goodwill linked with the “Mirina” name.
See Playmakers, LLC v. ESPN, Inc.,
Finally, to whatever minimal degree the public has an interest in this case, then the public interest would favor Plaintiff to the degree that Plaintiff can prevail on its infringement claim, because “[t]he public has an interest in avoiding confusion between two companies’ products.”
Internet Specialties West, Inc. v. Milon-DiGiorgio Enters., Inc.,
Because the court finds that the Plaintiff has raised only serious questions on the merits of its infringement claim, and has failed to establish irreparable harm or that the balance of hardships tips in its favor, the Plaintiff is not entitled to injunctive relief.
IV. CONCLUSION
For the reasons stated above, the court DENIES Plaintiffs motion (Dkt. #33).
Notes
. The court notes that the Plaintiffs briefing was unhelpful regarding the appropriate standards to be applied on a motion for injunctive relief. The Plaintiff did not cite
Winter
or post-Winier authority until after the Defendant pointed out Plaintiff's failure to do so in its Opposition.
See
Def.'s Opp'n at 7. The Defendant had previously pointed out Plaintiff's failure to address current case authority (see Def.'s Opp’n (Dkt. #12) at 6), and the court is mystified why the Plaintiff did not address the recent changes to standards for injunctive relief in its opening brief. Though the Plaintiff attempts to argue that
Winter
and its progeny do not apply in trademark cases (see Pltf.'s Reply at 2), Plaintiff cited no authority for that proposition and other district courts have applied
Winter
in trademark cases.
See, e.g., Internet Specialties West, Inc. v. Milon-DiGiorgio Enters., Inc.,
. Though, the Plaintiff's complaint lists several claims, the Plaintiff’s preliminary injunction briefing focuses on the trademark infringement claim. See Pltf.'s Mot. at 11:26-27.
. The court notes that in most of these cases, the products at issue were consumer goods. A purchaser of consumer goods undergoes a very different decisionmaking process than an investor in drug research and development. A “bait and switch”-style scheme would be unlikely to be successful in the investment context, given the protracted process by which an investor decides whether to invest.