Roche unit accused of stepping on D&I pledge with lawsuit

Roche unit Spark Therapeutics (STI) is pursuing a “misguided” lawsuit that contravenes its stated mission to combat systemic racism, according to gene therapy developer Bluebird Bio.

Bluebird filed a counterclaim yesterday, July 7, at the US District Court for the District of Delaware, disputing allegations contained in a complaint lodged by STI in May.

The dispute centres on the use of “spark” in an educational campaign centring on sickle cell disease, a genetic disorder that results in abnormal, sickle-shaped hemoglobin. According to scientific research, African Americans are at a much higher risk of experiencing SCD than other racial groups.

Massachusetts-based biotech Bluebird launched its unbranded “Be the Spark” educational and campaign in April aimed at promoting awareness about SCD to existing patients,  people who are genetically predisposed to SCD, their families, and their caregivers.

In its suit, STI insisted that the biotech’s use of the word “spark” in its campaign material would lead to confusion among patients and doctors and would damage Spark’s brand and reputation.

‘Harm to SCD community’

In its counterclaim, Bluebird accused the Roche unit of embarking on a legal action that could potentially harm the SCD community, which is predominantly African American, and patients’ caregivers, by seeking an injunction or otherwise trying to shut down, compromise, and/or silence Bluebird’s campaign.

Bluebird held that consequently, the suit conflicted with Roche’s strong statements that it seeks to combat systemic racism, advance the cause of racial purity, and use its power and resources to advocate for equity and justice.

“This suit is a misguided exercise by a large pharmaceutical company to assert its trademarks beyond their registered scope, which will disadvantage patients and families living with the devastating effects of SCD,” said Bluebird.

STI’s suit also lacks credibility because the Roche unit does not compete with Bluebird, does not market any therapeutics for SCD, and its gene therapy platform is unlikely to lead to a potential therapy for SCD, the biotech argued.

“STI is not financially harmed by an educational outreach campaign directed to SCD. Bluebird does not infringe or dilute STI’s trademark by using ‘spark’ in its ordinary, everyday sense to educate the SCD community,” said Bluebird.

Spark is ‘descriptive’

Bluebird also insisted that the word “spark” can be a noun or verb, with several meanings, including “anything that activates or stimulates; inspiration or catalyst” and that Bluebird uses “spark” in its ‘Be The Spark’ campaign in a “non-trademark” manner.

Bluebird added that it does not use the phrase “spark” alone and never uses it in reference to “Spark Therapeutics”.

“There has not been, and will not be, any likelihood of confusion in the minds of those seeing the ‘Be The Spark’ campaign between STI and bluebird. STI has not identified any evidence of actual confusion between STI and bluebird’s...campaign,” insisted Bluebird.

Bluebird also pointed out that the word “spark” is used in thousands of US trademark registrations. It stated that there are 1,384 live registrations using the word “spark” and 1,517 dead registrations that use the word “spark”, 33,362 US trademarks that include “spark” as a design search code, while a Google search for the word “spark” yielded 799 million hits.

The biotech concluded that no basis exists for STI’s claims as no likelihood of confusion between Bluebird and STI exists, and that Bluebird’s use of “spark” constitutes “descriptive fair use”.

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