IP Law Daily Use of ‘Accuragen’ and ‘Asuragen’ marks by researchers could cause confusion
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Friday, January 26, 2018

Use of ‘Accuragen’ and ‘Asuragen’ marks by researchers could cause confusion

By Brian Craig, J.D.

The federal district court in San Francisco has ruled that a reasonable trier of fact could determine that the trademarks "Accuragen" and "Asuragen"—both used in connection with genetics research services—created a likelihood of consumer confusion. In a trademark infringement action, the court denied the defendant’s motion for summary judgment. While the court considered the decision "a close call," the auditory similarity of the marks and proximity of products and services favored a finding of trademark infringement in the minds of rational factfinders (Asuragen, Inc. v. Accuragen, Inc., January 25, 2018, Seeborg, R.).

Background. Defendant Accuragen, Inc., was founded in August 2013 by former Stanford researchers to develop highly advanced cell-free DNA sequencing technology for personalized cancer treatment. Plaintiff Asuragen, Inc., was a molecular diagnostics company that was founded in 2006. Since 2006, Asuragen had used the ASURAGEN trademark in the United States in connection with its research and analysis services relating to detecting genetic mutations in the human genome, as well as the sale of products for the testing and screening of such mutations. Asuragen’s complaint asserted claims for trademark infringement under the Lanham Act, false designation of origin under the Lanham Act, and unfair competition under California state law. Accuragen filed a motion for summary judgment.

Trademark infringement. To determine whether a likelihood of confusion existed between the parties’ goods and services on the motion for summary judgment, the court applied the eight-factor test articulated used by the Ninth Circuit in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). The Sleekcraft factors evaluated (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of theproduct lines.

Factors favoring summary judgment. Accuragen argued that the hypothetical customers would be medical professionals and researchers, who were sophisticated. The court recognized that while the sophistication and diligence of potential customers favored Accuragen’s position, this factor must be considered with the other Sleekcraft factors.The court also noted that the lack of actual confusion evidence favored Accuragen.

Factors precluding summary judgment. In comparing the similarity of the marks, the court looked at the sight, sound, and meaning of the names "Asuragen" and "Accuragen." While the sight and meaning slightly favor Accuragen, the court concluded that a jury could easily find that the overall audible similarity between the two names was sufficient to introduce confusion. In analyzing the proximity of the goods,thecourt found that there was a genuine issue of material fact as to whether theparties competed directly. The court found that the Asuragen mark was conceptually and commercially strong, which weighed infavor of Asuragen. Both parties marketed their services through the same industry publications and appeared at the same conferences. There was a genuine issue of material fact as to whether there was significant overlap in marketingchannels. Although it was a "close call," the court concluded that a genuine issue of material fact precluded summary judgment.

The case is No. 3:16-cv-05440-RS.

Attorneys: James D. Weinberger (Fross Zelnick Lehrman Zissu, PC) and Warren Metlitzky (Conrad & Metlitzky LLP) for Asuragen, Inc. Anthony J. Weibell (Wilson Sonsini Goodrich & Rosati) for Accuragen, Inc.

Companies: Asuragen, Inc.; Accuragen, Inc.

MainStory: TopStory Trademark CaliforniaNews

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