Roche subsidiary sues Bluebird over ‘Spark’ TM

Roche Group’s subsidiary  Spark Therapeutics has filed a complaint against rival gene therapy company  Bluebird Bio, accusing it of infringing its ‘Spark’ trademark.

Spark Therapeutics flagged potential misappropriation of the ‘spark’ mark in several educational and informational campaign materials for sickle cell disease, as well as attempts by Bluebird to file its own ‘spark’ marks, in a complaint filed on May 17.

The company first cited a LinkedIn post made by Bluebird Bio on May 11, 2021, which prominently featured the word ‘Spark’ as an example of the misappropriation.

The  complaint, which was filed with the  United States District Court for the District of Delaware says: “Bluebird is actively using catch phrases such as ‘be the spark,’ ‘let’s spark change in sickle cell,’ ‘sign up to be the spark,’ and ‘be the spark for better care in sickle cell’ on its website and various other marketing materials.”

It also cites attempts by Bluebird to file several ‘spark’-formative trademarks for the marks “be the spark, i am the spark, spark change, and spark action”.

The US trademark applications in question are serial Nos. 79/302,808, 79/301,139, 79/302,887, and 79/304,135 for the marks ‘be the spark’, ‘i am the spark’, ‘spark change’, and ‘spark action’ respectively.

Bluebird also owns the domain name sparksicklecellchange.com.

“Bluebird’s acts are both illegal and upon information and belief intentionally designed to take advantage of the good will in Spark’s name, and to injure Spark,” the complaint says.

The Roche subsidiary claims that Bluebird’s usage of the mark  is “highly likely to confuse consumers and medical professionals in the gene therapy community” and could “weaken Sparks’ brand and position in the market.”

Additionally, it argues that it would be “reasonable” for consumers to think that Spark was expanding its work from hemophilia to sickle cell anemia as gene therapy is considered a “promising field” for sickle cell anemia treatment.

Spark Therapeutics asks the court to order Bluebird Bio to pay damages together with interest and costs, cease the use of the sparksicklecellchange.com domain and abandon its trademark applications containing ‘Spark’.