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Western District Denies Preliminary Injunction in Biotech Trademark Dispute

Plaintiff Mirina Corp. is a Seattle-area biotech company. In August 2010, it sued defendant Marina Biotech, a Seattle- and Boston-based biotech company, five days after defendant changed its name from MDRNA, Inc. (Previous post here.) Mirina alleged trademark infringement and moved for a preliminary injunction.

In doing so, it didn’t cite Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008), which revised the standards for obtaining injunctive relief. The Western District of Washington found that was a problem.

“The court notes that the Plaintiff’s briefing was unhelpful regarding the appropriate standards to be applied on a motion for injunctive relief. The Plaintiff did not cite Winter authority until after the Defendant pointed out Plaintiff’s failure to do so in its Opposition. The Defendant had previously pointed out Plaintiff’s failure to address current case authority, and the court is mystified why the Plaintiff did not address the recent changes to standards for injunction relief in its opening brief. Though the Plaintiff attempts to argue that Winter and its progeny do not apply in trademark cases, Plaintiff cited no authority for that proposition and other district courts have applied Winter in trademark cases.”

The court set forth the test for a preliminary injunction, consistent with Winter and its progeny. “The court may issue a preliminary injunction where a party establishes (1) a likelihood of success n 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. A party can satisfy the first and third elements of the test by raising serious questions going to the merits of its case and a balance of hardships that tips sharply in its favor.”

Analyzing the merits, the court found plaintiff’s motion didn’t cut it. “The court finds that, on balance, a consideration of the Sleekcraft factors weigh somewhat in Plaintiff’s 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 Plaintiff’s selective evidence may make it appear, particularly where the evidence currently before the court shows that Plaintiff’s mark is relatively weak. Nonetheless, on that record, the court finds that the Plaintiff has raised serious questions about the likelihood of confusion.”

The case cite is Mirina Corp. v. Marina Biotech, No. 10-1322 (W.D. Wash. March 7, 2011) (Jones, J.).

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