Delaware North Companies, Inc. – Boston v.
Commonwealth Farm 1761, Inc.
- Case Number
- 1:26-cv-10918-WGY
- Court
- D. Mass. (Judge Young)
- Filed
- February 18, 2026
- Prepared
- March 11, 2026
Introduction & Summary of Defenses
Commonwealth Farm 1761, Inc. d/b/a The Boston Garden Dispensary ("TBG") operates a licensed cannabis dispensary with locations in Athol, Cambridge, and Somerville, Massachusetts. Co-founded by Ivelise Rivera and actor Jonathan Tucker, with its principal place of business at 8 Corinne Parkway, Middleboro, MA 02346, TBG has operated openly and lawfully since 2021 under federally registered trademarks obtained through the proper USPTO process.
Delaware North Companies, Inc. – Boston ("DNCB"), a Delaware corporation located at 100 Legends Way, Boston, MA 02114 that owns the TD Garden arena (and whose controlling Jacobs family also owns the Boston Bruins), filed this eight-count complaint on February 18, 2026 — more than 4.5 years after TBG opened its first location — alleging federal trademark infringement, unfair competition, trademark dilution, cybersquatting, state dilution, common law unfair competition, deceptive trade practices, and seeking cancellation of TBG's federal trademark registration. DNCB demands a jury trial.
DNCB's claims fail for multiple independent reasons:
No Likelihood of Confusion
A cannabis dispensary and a sports arena are completely unrelated. In 4.5 years of co-existence, zero evidence of consumer confusion exists. At least 6 of 8 Pignons factors favor TBG.
Very StrongLaches Bars All Claims
DNCB waited 4.5+ years to file suit, exceeding both the 3-year and 4-year Massachusetts analogous limitation periods. Failure to oppose during USPTO period compounds the delay. $500K rebranding cost constitutes material prejudice.
StrongValid Federal Trademark Registrations
TBG holds federally registered trademarks on the Principal Register. These create a presumption of validity and, under §1125(c)(6), a complete bar to dilution claims.
StrongDilution Claims Fail
"Boston Garden" does not meet the "famous mark" threshold. Courts have denied fame to marks with far greater current recognition. A name voluntarily retired 30+ years ago cannot claim household-name status. Exhibit A confirms all DNCB registrations are §2(f) descriptive — further undermining fame.
StrongDescriptive / Geographic Fair Use
"Boston Garden" is composed of two common, geographically descriptive words. Exhibit A confirms DNCB's own registrations are §2(f) (descriptive) and disclaim exclusive rights to "BOSTON." A cannabis business has obvious descriptive grounds for "garden."
StrongCybersquatting Claim Fails (ACPA)
The boston.garden domain is used for TBG's legitimate, operating business — not to extort, resell, or divert traffic. TBG had reasonable grounds to believe its use was lawful, triggering ACPA's statutory safe harbor.
Cancellation of TBG's Registration Fails
DNCB seeks cancellation of Reg. No. 7,075,795 under 15 U.S.C. §1119, but TBG's registration was properly examined and granted. DNCB's own failure to oppose during the statutory period undermines its standing, and the same confusion/dilution defenses apply.
StrongStatement of Facts
A. Factual Timeline
boston.garden registered.B. Key Facts
Plaintiff's Claims
| Count | Claim | Statutory Basis | Core Allegation |
|---|---|---|---|
| I | Federal Trademark Infringement | 15 U.S.C. §1114 | Colorable imitation of registered BOSTON GARDEN mark creates likelihood of confusion (¶¶21–27) |
| II | Federal Unfair Competition & False Designation of Origin | 15 U.S.C. §1125(a)(1)(A) | False designation of origin likely to cause confusion as to affiliation, connection, or association (¶¶28–32) |
| III | Federal Trademark Dilution | 15 U.S.C. §1125(c) | "Famous" BOSTON GARDEN mark diluted by blurring (lessening capacity to identify) and tarnishment (harming reputation/goodwill) (¶¶33–39) |
| IV | Cybersquatting (ACPA) | 15 U.S.C. §1125(d) | Domain boston.garden is identical to BOSTON GARDEN mark; registered with bad faith intent to profit (¶¶40–47) |
| V | Massachusetts Statutory Dilution | M.G.L. c. 110H | Likelihood of dilution of distinctive quality and/or injury to business reputation under state law (¶¶48–51) |
| VI | Common Law Unfair Competition | Common law | Violation of common law rights; likely to cause confusion, mistake, and deception (¶¶52–58) |
| VII | Unfair & Deceptive Trade Practices | M.G.L. c. 93A, §§2, 11 | Knowing and willful infringement; misrepresenting origin and authenticity of goods (¶¶59–63) |
| VIII* | Cancellation of TBG's Trademark | 15 U.S.C. §1119 | Cancel TBG's U.S. Trademark Reg. No. 7,075,795; registration obtained without consent, in violation of DNCB's prior rights (¶¶64–69) |
Relief Sought (Compl. Prayer ¶¶A–L)
- A. Preliminary and permanent injunctions barring any use of "BOSTON GARDEN" in any trademark, service mark, trade name, corporate name, domain name, website, email, or any other manner
- B. Injunction requiring removal from website, sales aids, ads, and all promotional materials
- C. Order requiring destruction of all literature, signs, prints, advertising materials, catalogues, stationery, and any item bearing the mark (under §1118)
- D. Injunction requiring TBG to abandon pending applications Ser. Nos. 97/076,871 and 90/328,729, and bar on any future BOSTON GARDEN applications (under §1116)
- E. Order directing USPTO to cancel Reg. No. 7,075,795 (under §1119)
- F. Accounting of all profits
- G. Monetary damages + TBG's profits
- H. Cybersquatting actual damages or statutory damages (under §1117(d))
- I. Treble damages (under §1117(a) and/or M.G.L. c. 93A)
- J. Attorney's fees and costs
- K. Pre- and post-judgment interest
- L. Such other relief as the Court deems just
Jury trial demanded on all triable issues.
Argument
A. No Likelihood of Confusion — Pignons 8-Factor Analysis
The First Circuit applies the eight-factor test from Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1st Cir. 1981). The analysis demonstrates that there is no likelihood of confusion.
Factors Favor TBG
The overwhelming weight of the Pignons factors demonstrates no likelihood of confusion. DNCB's infringement claims fail on the merits.
B. Laches Bars All Claims
1. Unreasonable Delay
DNCB's delay is unreasonable by any measure:
| Event | Date | Delay from TBG Opening (~2021) |
|---|---|---|
| TBG trademark applications filed | 2020 | — |
| TBG opens first location | ~2021 | 0 years |
| First cease-and-desist letter | ~Sept 2024 | ~3.5 years |
| TTAB Opposition No. 91301875 | Sep 23, 2025 | ~4 years (5+ years from filing) |
| Lawsuit filed | Feb 2026 | 4.5+ years |
M.G.L. c. 260, §5A / c. 93A, §11 — 4-year limitation for Chapter 93A claims
DNCB's 4.5+ year delay exceeds both, creating a strong presumption of laches.
2. Material Prejudice
- Investment in branding across three retail locations
- Rebranding cost: approximately $500,000 — potentially existential for a small cannabis business
- 4.5 years of customer goodwill and brand recognition
- All business decisions made in reliance on cleared, federally registered trademark
3. Progressive Encroachment Does Not Apply
DNCB's strongest counter is the progressive encroachment doctrine, which resets the laches clock when a defendant "materially alters" its infringing activities. See Oriental Financial Group, Inc. v. Cooperativa De Ahorro Credito Oriental, 698 F.3d 9 (1st Cir. 2012).
(b) No actual confusion even after expansion. Zero instances even after Cambridge and Somerville openings.
(c) DN's own continued delay. DNCB knew of TBG since at least Sept 2024 but waited ~18 more months to file suit.
(d) No entry into plaintiff's market. TBG has not entered sports, entertainment, or the arena business. More dispensaries = growth, not encroachment.
4. Failure to Oppose Constitutes Acquiescence
DNCB's failure to oppose during the statutory opposition period — despite maintaining its own registrations and access to USPTO monitoring — supports laches and may constitute acquiescence. A sophisticated trademark holder cannot claim ignorance of a competing application that passed full USPTO examination.
C. Valid Federal Registrations Establish Presumptive Rights
TBG holds U.S. Trademark Reg. No. 7,075,795 on the Principal Register for "THE BOSTON GARDEN" in connection with cannabis-related smoking accessories, website, and retail services (Compl. ¶12). TBG also has pending applications Ser. Nos. 97/076,871 and 90/328,729.
No class overlap: DNCB's surviving registrations cover only Classes 25, 35, 41, 43 (sport clothing, retail sporting goods, entertainment, restaurant). Classes 16, 20, 21, and 43 (sports cafe) have been cancelled across 3 dead registrations and 3 cancelled classes. TBG holds 4 active registrations covering Classes 034 and 035 (smoking accessories, retail) and 041 (cannabis informational content). Trademark rights are class-specific.
USPTO found no conflict: The examining attorney reviewed DNCB's existing registrations — including Reg. No. 1,595,311 — and concluded no conflict exists. This expert determination is entitled to weight.
Complete bar to dilution: Under 15 U.S.C. §1125(c)(6), TBG's valid federal registration is a complete defense to any dilution claim (Counts III and V).
DNCB's incontestable mark does not override TBG's registration. Incontestability of Reg. No. 1,595,311 under §1065 now applies only to Class 25 (sport clothing) — all other classes are cancelled. It does not grant DNCB exclusive rights over "Boston Garden" in all industries. Multiple defenses remain available under §1115(b), including fair use, prior registration, laches, and estoppel.
D. Dilution Claims Fail
1. "Boston Garden" Does Not Meet the Famous Mark Threshold
For dilution protection under 15 U.S.C. §1125(c), a mark must be "widely recognized by the general consuming public of the United States as a designation of source." This is an exacting standard.
"Boston Garden" fails: it was voluntarily retired 30+ years ago, the building was demolished, and the arena has been "TD Garden" since 2009. Historical nostalgia is not current source identification. DNCB's own portfolio confirms this — Reg. 2,823,675 (Class 020, arena relics/novelty gifts) was cancelled on Sep. 27, 2024 for failure to file §8 maintenance, and Reg. 1,595,311 has lost 3 of 4 classes to §8 cancellation. A mark owner that lets its own registrations lapse is hardly in a position to claim the mark is "widely recognized by the general consuming public" as a designation of source.
| Mark | Evidence of Fame | Held Famous? |
|---|---|---|
| 25 million monthly users | No | |
| THETA CHI | 175,000 members over 160 years | No |
| THE CHILDREN'S PLACE | $280M in annual sales | No |
| XOXO | Hundreds of millions in sales | No |
| ARCSOFT | 20M+ downloads, celebrity endorsements | No |
| BONGO | 15 years of continuous use | No |
| LECHARLES BENTLEY | Known to football/fitness fans | No |
Courts restrict dilution to "those few truly famous marks like Budweiser beer, Camel cigarettes, Barbie dolls." A retired venue name known primarily to older sports fans falls well short.
Exhibit A reinforces this: All three DNCB registrations were granted under §2(f), meaning the USPTO classified "BOSTON GARDEN" as descriptive — not inherently distinctive. A descriptive mark that required proof of secondary meaning to even be registered is highly unlikely to meet the "famous mark" threshold for dilution, which demands recognition by the "general consuming public of the United States" as a designation of source.
DNCB's collapsing portfolio further undermines fame: TSDR records reveal that DNCB has allowed significant portions of its "BOSTON GARDEN" trademark portfolio to lapse. Reg. 2,823,675 (arena relics/novelty gifts) — cancelled entirely on Sep. 27, 2024. Reg. 1,595,311 — lost Classes 16, 21, and 43 to §8 cancellation, retaining only Class 25 (sport clothing). If "BOSTON GARDEN" were truly a famous mark warranting dilution protection, its owner would not be letting registrations expire for failure to file routine maintenance documents. This pattern of abandonment is inconsistent with the vigorous protection courts expect of genuinely famous marks.
2. Tarnishment Fails
Cannabis is legal in Massachusetts (recreational since 2018). TBG is a legitimate, licensed, regulated business. Association with lawful commerce is not reputational harm. Compare Jack Daniel's v. VIP Products, 599 U.S. 140 (2023), involving a poop-themed dog toy mocking a whiskey brand — categorically different.
3. Blurring Fails
Cannabis retail and sports entertainment are so far apart that no blurring can occur. A consumer who associates "Boston Garden" with both an arena and a dispensary does not experience impaired distinctiveness of either brand.
4. Federal Registration Is a Complete Statutory Bar
E. Descriptive / Geographic Fair Use
"Boston Garden" is composed of two common words with straightforward meaning:
- "Boston" — a geographic term identifying the city
- "Garden" — a generic word meaning a place where plants are cultivated
For a cannabis business — selling products derived from cultivated plants — "Garden" is descriptively apt. The name naturally describes a Boston-based business involved with plant cultivation. Geographic and descriptive marks receive weaker trademark protection. See 15 U.S.C. §1125(c)(3) (fair use defense for descriptive/geographic terms).
All three of DNCB's "BOSTON GARDEN" registrations were granted under Lanham Act §2(f), meaning the USPTO determined that "BOSTON GARDEN" is not inherently distinctive — it is a descriptive term that was only registered based on acquired distinctiveness (secondary meaning) in the sports/entertainment context. Furthermore, Reg. No. 1,595,311 explicitly states: "No claim is made to the exclusive right to use 'BOSTON', apart from the mark as shown."
This is devastating to DNCB's infringement claims. A descriptive mark receives the narrowest scope of protection — limited to the specific goods and services for which secondary meaning has been established. DNCB's secondary meaning exists only in sports/entertainment. It has no secondary meaning in cannabis retail. The §2(f) designation on every DNCB registration confirms that "Boston Garden" is a descriptive phrase that others may use in its descriptive sense — exactly as TBG does for a Boston-based plant/cannabis garden business.
F. State Law Claims Fail (Counts V, VI, VII)
Count V: Chapter 110H — Massachusetts Statutory Dilution
DNCB alleges TBG's use creates "likelihood of dilution of the distinctive quality" of the BOSTON GARDEN mark and/or "likelihood of injury to DNCB's business reputation" (Compl. ¶50). This claim requires the same fame/distinctiveness showing as federal dilution and fails for the same reasons. Additionally, TBG's valid federal registration constitutes a complete bar to dilution claims.
Count VI: Common Law Unfair Competition
DNCB alleges TBG's acts "are likely to cause confusion, mistake and deception among consumers and the public as to the source, origin, sponsorship or quality of Defendant's goods and services" (Compl. ¶53). This claim requires the same confusion analysis as the Lanham Act and fails for the same reasons: 6 of 8 Pignons factors favor TBG, and zero actual confusion exists.
Count VII: Chapter 93A — Unfair & Deceptive Trade Practices
DNCB alleges TBG engaged in "unfair methods of competition and unfair or deceptive acts" by "intentionally and willfully infringing upon DNCB's trademarks, misrepresenting the origin and authenticity of goods, and passing off infringing goods as those of DNCB" (Compl. ¶¶60–61). This claim is derivative of the trademark claims and rises or falls with them. Moreover:
- The 4-year statute of limitations (M.G.L. c. 260, §5A) may independently bar this claim — TBG opened ~2021; suit filed Feb 2026 (~5 years later)
- TBG's conduct is not "unfair" or "deceptive" — it obtained legitimate trademark registrations through proper legal channels with counsel
- DNCB's allegation of "willful and knowing violations" entitling it to "multiple damages" (Compl. ¶63) is contradicted by TBG's good-faith registration process
G. Cybersquatting Claim Fails (Count IV)
DNCB alleges that TBG's domain boston.garden is "identical to DNCB's BOSTON GARDEN mark" and was "registered and used...with a bad faith intent to profit from DNCB's BOSTON GARDEN mark" in violation of the Anticybersquatting Consumer Protection Act (15 U.S.C. §1125(d)). Compl. ¶¶40–47.
Elements DNCB Must Prove
- DNCB's mark is distinctive or famous
- TBG's domain is identical or confusingly similar to DNCB's mark
- TBG registered or used the domain with bad faith intent to profit from the mark
Why Element 3 Is Fatal to DNCB's Claim
The ACPA lists nine factors for assessing bad faith intent under §1125(d)(1)(B)(i). Each weighs against a finding of bad faith here:
| ACPA Factor | Analysis |
|---|---|
| (I) TBG's own trademark rights | Favors TBG. TBG holds federal trademark registrations for "The Boston Garden" — establishing bona fide IP rights in the name. |
| (II) Whether domain is TBG's legal name | Favors TBG. TBG operates as "The Boston Garden Dispensary" — the domain matches its trade name. |
| (III) Prior use of domain in bona fide commerce | Favors TBG. The domain has been used continuously for TBG's actual operating dispensary business since ~2021. |
| (IV) Bona fide noncommercial or fair use | Not applicable (commercial use), but commercial use for legitimate business undermines bad faith. |
| (V) Intent to divert consumers from DNCB | Favors TBG. No evidence of intent to divert arena customers. The domain directs to a cannabis dispensary website. No one seeking arena information would be confused. |
| (VI) Offer to sell domain to DNCB | Favors TBG. No evidence TBG has offered to sell or transfer the domain. |
| (VII) False contact information in registration | Favors TBG. No allegation of false registration information. |
| (VIII) Pattern of cybersquatting | Favors TBG. No pattern — TBG registered one domain for its one business. |
| (IX) Extent mark is famous/distinctive | Mixed. "Boston Garden" has historical significance but has been retired as a venue name for 30+ years. |
TBG held federally registered trademarks, retained trademark counsel, invested $10,000+ in the USPTO process, and operated under the domain for 4.5+ years before any legal challenge. TBG had every reasonable ground to believe its use was lawful. This safe harbor is dispositive.
bostongarden.com (registered Jun 19, 2001; registrant: 250 Delaware Ave, Buffalo, NY; email: digitalmarketing@delawarenorth.com). TBG registered boston.garden (Apr 22, 2021 via GoDaddy). These are different domains under different TLDs. DNCB had 7 years (2014–2021) to register boston.garden after the .garden TLD became available in 2014 and chose not to. TBG's use of the .garden TLD further reinforces the cannabis/plant cultivation connection and undermines any claim of bad faith.
H. Cancellation of TBG's Registration Fails (Count VIII)
DNCB seeks cancellation of TBG's U.S. Trademark Reg. No. 7,075,795 under 15 U.S.C. §1119, alleging that TBG's registration "was effected without the consent of DNCB and in violation of DNCB's prior and superior rights" (Compl. ¶66) and "falsely suggests a connection with DNCB" (Compl. ¶67).
Why Cancellation Fails
- DNCB failed to oppose during the statutory period. The Lanham Act provides a specific mechanism for challenging trademark applications before they mature into registrations: the opposition proceeding. DNCB — a sophisticated trademark holder with multiple registrations and experienced IP counsel — failed to file any opposition. Having slept on its rights during the designated period, DNCB cannot now undo through cancellation what it failed to prevent through opposition.
- The USPTO examined DNCB's registrations and found no conflict. The examining attorney specifically reviews existing registrations for potential conflicts. DNCB's Reg. Nos. 7,507,837; 6,623,366; and 1,595,311 were in the database when TBG's application was examined. The USPTO's expert determination that no conflict exists is entitled to weight.
- Laches applies to cancellation proceedings. The same 4.5+ year delay that bars DNCB's infringement and dilution claims also undermines the cancellation claim. TBG has relied on its registration in building a three-location business.
- Different international classes. DNCB's surviving registrations cover sport clothing, retail sporting goods, entertainment, and restaurant services. TBG's Reg. No. 7,075,795 covers cannabis-related smoking accessories. Non-overlapping classes. The cancellation claim depends on the same likelihood-of-confusion analysis that fails under Pignons.
Rebuttal of DNCB's Arguments
The following analyzes DNCB's strongest arguments — drawn from the actual complaint and anticipated trial strategy — and provides counter-arguments for each.
Their Argument
Even if no one thinks the dispensary IS the arena, consumers may believe TD Garden/DNCB sponsors, endorses, or is affiliated with the dispensary. The Lanham Act covers confusion as to "affiliation, connection, or association" — not just source confusion.
Our Response
- Zero actual confusion in 4.5 years. If sponsorship confusion were likely, evidence would have surfaced. None has.
- Cannabis remains federally illegal. No reasonable consumer would believe a major entertainment company and NHL team owner officially sponsors a cannabis dispensary.
- The arena is "TD Garden," not "Boston Garden." The dispensary uses no arena-specific imagery — no sports logos, no arena imagery, no athletes.
- Different trade dress. Cannabis imagery vs. sports branding. Entirely different commercial impression.
- Delta/Delta precedent. Delta Air Lines and Delta Faucet coexist with identical names. No consumer believes the airline sponsors the faucet company.
Their Argument
The names are functionally identical. "Boston Garden" vs. "The Boston Garden" differ by only one article. This extreme similarity should weigh heavily in their favor.
Our Response
- Mark similarity alone is never dispositive. The Pignons test requires all 8 factors; no single factor controls. Pignons, 657 F.2d at 487.
- Overall commercial impression differs dramatically. "The Boston Garden" on a cannabis storefront with cannabis imagery creates an entirely different impression than "Boston Garden" on arena signage.
- Established coexistence: Delta/Delta, Dove/Dove, Apple/Apple — all identical marks in different industries.
- 6 of 8 other factors favor TBG. One factor cannot carry the analysis when the remaining weight is overwhelmingly in the other direction.
Their Argument
Both parties sell accessories/merchandise, creating product overlap. DNCB's registrations cover "apparel, accessories, and memorabilia." The dispensary sells accessories. Same consumer population.
Our Response
- Different International Classes. Sports memorabilia (Classes 25, 16, 41) vs. cannabis accessories (Classes 34, 35). No overlap.
- Entirely different products. Dispensary sells bongs, pipes, rolling papers. Arena sells jerseys, pennants, foam fingers. No cross-shopping.
- Different channels of trade. Arena merchandise at arenas and sports retailers. Cannabis accessories at licensed dispensaries only. Separate regulatory environments.
- USPTO found no conflict. The examining attorney determined the goods/services are sufficiently different.
Their Argument
"Boston Garden" is one of the most iconic names in American sports. Home to the Celtics and Bruins for decades. Legendary moments. The historical goodwill remains enormous.
Our Response
- Statutory test is narrow. Under §1125(c)(2), a mark must be "widely recognized by the general consuming public" as a current designation of source. Nostalgia ≠ source identification.
- Today it identifies a defunct arena, not a current business. Many younger consumers don't associate "Boston Garden" with any current venue.
- Courts reject niche fame. Pinterest (25M users), The Children's Place ($280M sales), and Theta Chi (175K members, 160 years) all failed. A retired venue name falls short.
- DNCB abandoned the name. Fame of a voluntarily retired mark differs fundamentally from fame of an active mark.
- DNCB's own portfolio collapse undermines fame. TSDR records show Reg. 2,823,675 (arena relics) was cancelled Sep. 2024, and Reg. 1,595,311 lost 3 of 4 classes to §8 cancellation. A mark owner that cannot maintain routine filings on its own registrations cannot credibly claim the mark is "widely recognized" as a source identifier.
Their Argument
Under Jack Daniel's v. VIP Products (2023), standard confusion analysis applies when a mark is used as a commercial source identifier. The dispensary's "pun" use doesn't get First Amendment protection, and cannabis association tarnishes the brand.
Our Response
- Distinguishable facts. Jack Daniel's involved a dog toy that physically mimicked a whiskey bottle's trade dress. TBG doesn't imitate the arena's trade dress, logos, or products in any way.
- Cannabis is legal in MA. The Jack Daniel's tarnishment involved poop-themed humor mocking the brand. A legitimate licensed dispensary is categorically different.
- Famous mark threshold still applies. "Boston Garden" likely doesn't meet it, regardless of Jack Daniel's.
- TBG is not asserting a parody defense. Our defenses rest on no confusion, laches, valid registrations, and fame threshold. Jack Daniel's doesn't alter any of these.
- Federal registration = complete bar to dilution under §1125(c)(6).
Their Argument
TBG expanded from rural Athol to Cambridge and Somerville — directly adjacent to TD Garden. Confusion only became actionable as locations approached Boston.
Our Response
- No material alteration. Same business, same name, same products. Opening more locations of an existing business is growth, not the "material alteration" required under Oriental Financial, 698 F.3d at 16.
- Still no confusion. Even after expansion, zero instances cited. If confusion wasn't actionable in Athol and still isn't actionable in Cambridge, the doctrine doesn't apply.
- DN still delayed. Even measuring from Cambridge (2024), DN waited ~2 more years to file suit.
- No market competition. TBG hasn't entered sports or entertainment. The doctrine requires movement toward the senior user's market.
The Risk
DNCB is a multi-billion-dollar corporation. TBG lacks $500K to rebrand. DN may pursue aggressive litigation to force settlement through financial pressure.
Mitigation
- Seek early dispositive motions (motion to dismiss, summary judgment) to resolve cheaply
- Consider pro bono / reduced-fee representation from IP clinics
- Use defense strength as settlement leverage — DNCB's case has significant weaknesses counsel should recognize
- Consider counterclaim for attorney's fees under 15 U.S.C. §1117(a) if claims are found baseless
Their Argument
DNCB claims Reg. No. 1,595,311 is incontestable and "serves as conclusive evidence of DNCB's exclusive rights in the mark" (Compl. ¶10). This means TBG cannot challenge the validity of DNCB's mark and must concede DNCB's ownership.
Our Response
- Reg. 1,595,311 has lost 3 of 4 classes. TSDR records confirm Classes 16 (printed materials), 21 (novelties), and 41 (entertainment facilities) are §8 CANCELLED. Only Class 25 (sport clothing) survives. Incontestability applies only to the surviving class — tee-shirts and sweatshirts. DNCB's entertainment facility class is dead.
- Incontestability is limited to the registered goods/services. Under §1065, incontestability for Class 25 sport clothing does not grant DNCB exclusive rights to "Boston Garden" across all industries — especially not cannabis retail.
- Numerous defenses remain available against incontestable marks under §1115(b), including: descriptive fair use, prior registration by defendant, equitable defenses (laches, acquiescence, estoppel), and abandonment.
- DNCB's Reg. 2,823,675 (arena relics) is also dead — cancelled Sep 27, 2024 for failure to file §8 maintenance. DNCB's complaint references this registration but does not disclose its cancellation.
- We are not challenging DNCB's mark — we are asserting our own. TBG holds its own federal registrations in different classes. The issue is coexistence, not cancellation of DNCB's rights.
Their Argument
DNCB alleges the domain boston.garden is "identical to DNCB's distinctive and famous BOSTON GARDEN mark" and was registered with "bad faith intent to profit from DNCB's BOSTON GARDEN mark" (Compl. ¶¶43–45). They claim TBG's "continued use...after DNCB provided written notice of infringement and dilution evidences willfulness and bad faith" (Compl. ¶46).
Our Response
- ACPA safe harbor is dispositive. §1125(d)(1)(B)(ii): bad faith "shall not be found" where the registrant "believed and had reasonable grounds to believe" the use was lawful. TBG held federal trademarks, retained counsel, and operated the domain for its actual business.
- Every ACPA bad-faith factor favors TBG. TBG has its own trademark rights, the domain matches its trade name, it uses the domain for bona fide commerce, it never offered to sell the domain, and there is no pattern of cybersquatting.
- "Continued use after notice" is not bad faith. DNCB sent its first cease-and-desist in ~Sept 2024. Continuing to use a domain for one's own legitimate business while the legal dispute is pending is not evidence of bad faith — it is the exercise of rights under an existing federal trademark registration.
- The domain is descriptive. "boston.garden" combines a city name with a generic word for a place where plants grow — an apt description for a Boston-area cannabis business.
Their Argument
DNCB claims its operations "encompass a wide array of consumer-facing goods and services" including "apparel, accessories, memorabilia, and home goods, along with diverse food and beverage offerings, event hosting services, and premium hospitality experiences" and that this demonstrates "DNCB's natural zone of expansion into various lifestyle and branded retail categories" (Compl. ¶11). They argue the "extensive marketplace...reaches the same general consumer population" as TBG (Compl. ¶15).
Our Response
- "Natural zone of expansion" does not extend to federally illegal products. Cannabis remains illegal under federal law. No sports/entertainment venue operator has expanded into cannabis retail. The "natural zone" argument is speculative and unsupported.
- Different International Classes, different products, different channels. DNCB sells jerseys, pennants, and foam fingers in arenas and sports retailers. TBG sells bongs, pipes, and rolling papers in licensed dispensaries. No cross-shopping occurs.
- "Same general consumer population" is meaningless. Every retail business in Boston "reaches the same general consumer population." This does not establish proximity of goods or likelihood of confusion.
- The USPTO examined this exact question and found no overlap. The trademark examiner considered DNCB's registrations covering these goods and services and still granted TBG's registration.
Adversarial Intelligence
Research into the parties, counsel, and judge yields several strategically significant findings.
Delaware North has a documented history of aggressive trademark monetization. When DNCB lost the Yosemite National Park concession contract in 2015, it claimed ownership of trademarked names for iconic landmarks — including "The Ahwahnee," "Curry Village," "Badger Pass," and "Yosemite Lodge" — and demanded $51 million from the National Park Service.
The NPS valued the names at $1.6M. Unable to use the names during the dispute, Yosemite was forced to rename its iconic landmarks: The Ahwahnee became "Majestic Yosemite Hotel," Camp Curry became "Half Dome Village," etc. The case was ultimately settled in July 2019 for $12 million ($3.84M from the government, $8.16M from successor concessionaire Aramark).
The Yosemite dispute drew significant negative publicity and was compared to the Maid of the Mist trademark dispute at Niagara Falls. It establishes a pattern: DNCB treats legacy venue names as monetizable intellectual property assets, even when those names are strongly associated with public places rather than private commerce.
Strategic value for our defense: This history can be used to argue that DNCB's lawsuit is part of a pattern of trademark overreach, not a good-faith effort to prevent consumer confusion. It supports: (a) our argument that this is an "exceptional case" warranting attorney's fees; (b) our narrative that DNCB is using litigation as a pressure tactic against a small business; (c) public/jury sympathy for TBG.
Judge Profile: Hon. William G. Young
| Detail | Finding |
|---|---|
| Appointed | 1985 by President Reagan; Chief Judge 1999–2005; Senior status since July 2021 |
| Age | 85 (born Sept. 23, 1940) |
| Trademark Cases | No published opinions on likelihood of confusion or dilution. IP docket skews toward patent cases (biotech, pharma, software). |
| Laches | In WhitServe v. GoDaddy (D. Conn. 2015, sitting by designation), took laches seriously but required concrete evidence of "open and notorious" use creating constructive notice. Fact-intensive approach favors our detailed delay timeline. |
| Judicial Philosophy | Champion of jury trials; fact-intensive; protective of individual rights; willing to issue bold rulings. Won MA Bar Foundation "Great Friend of Justice Award." |
| Notable Cases | Blocked JetBlue-Spirit $3.8B merger (2024) with granular route-by-route analysis; AAUP v. Rubio (2025) sweeping First Amendment ruling; Richard Reid "shoe bomber" sentencing (2003) |
| Case Management | Known for expedited timelines in IP cases. "Courts exist to serve not the lawyers or the lawyers' convenience, but to serve the litigants." |
Plaintiff's Counsel: Hinckley, Allen & Snyder LLP
| Attorney | Role | Profile |
|---|---|---|
| Craig M. Scott (#556210) |
Chair, IP Practice Group; Executive Committee | 30+ years IP trial. "Patent Litigation Lawyer of the Year" and "Trademark Lawyer of the Year" (Best Lawyers). "IP Star" and "Trade Mark Star" (MIP) every year since 2014. Co-founded Scott & Bush, which merged into Hinckley Allen in 2014. |
| Christine K. Bush (#635381) |
Vice-Chair, Litigation Group; IP Group | 20+ years complex IP litigation. Super Lawyers 2009–2025. "IP Star" (MIP) since 2014. Co-founded Scott & Bush with Craig Scott. BC Law, Mount Holyoke. |
| Elizabeth M. Nagle (#696775) |
Associate, Litigation/IP | BU Law, Stanford MA. Best Lawyers 2025 for IP. Prior: Nixon Peabody, Kiva.org, Little Brown. |
Defense Counsel: Adam D. Fine, Vicente LLP
Adam D. Fine is the Managing Partner of Vicente LLP's Boston office and a prominent Massachusetts cannabis attorney. Vicente LLP is a national cannabis-focused law firm. Fine was quoted in media: "Consumers are not confused and won't be." He was recognized by Super Lawyers (2022–2024) and Best Lawyers (2024–2026).
Key Public Statements
- DNCB sent cease-and-desist ~18 months before lawsuit (~August 2024) but "did not contact The Boston Garden's lawyers ahead of filing the lawsuit"
- "If that's amicable, I can't even imagine what Delaware North and the Jacobs family does when they're mad at somebody."
- "We weren't just, like, hunting and pecking on Google" — they used a law firm to verify the name was legally available
- "We're just a small local company trying to serve our communities."
- "We're Boston people, and to get whacked by a family from Buffalo over this and they're getting billions of dollars a year in revenue is really frustrating."
- Estimated rebranding cost: ~$500,000; said the lawsuit could shut down the business
- Claims "Boston Garden" is "among the most recognized brands in Boston sports"
- States it has made "good-faith efforts to resolve the matter amicably"
- This "good faith" claim is contradicted by Tucker's statement that DNCB never contacted TBG's lawyers before filing
Risk Assessment
Overall Assessment
TBG has strong defenses across all eight counts. DNCB's complaint has significant weaknesses — most critically: zero actual confusion in 4.5 years; failure to oppose during the USPTO registration period; the ACPA safe harbor for cybersquatting; the statutory bar on dilution claims against a federal registrant; all DNCB registrations are §2(f) descriptive marks; Reg. 1,595,311 has lost 3 of 4 classes (including entertainment facilities); 3 entire registrations are DEAD (Regs. 1,967,910; 2,301,364; 2,823,675) — all cancelled for §8 failure; and Reg. 2,301,364 used the exact phrase "THE BOSTON GARDEN" before DNCB let it die in 2006. DNCB's portfolio of 6 registrations spanning 9 original classes has collapsed to just 3 surviving registrations with 4 active classes — none covering cannabis. TBG's own TTAB answer (Jan 19, 2026) aggressively asserts abandonment, no confusion, and no fame — and the TTAB found TBG has a "meritorious defense." The dispensary's best path is early dispositive motions while maintaining openness to reasonable settlement.
Prayer for Relief
TBG respectfully requests that this Court:
- Dismiss DNCB's complaint with prejudice on all counts
- Award attorney's fees to TBG under 15 U.S.C. §1117(a) as this is an "exceptional case" — DNCB delayed 4.5+ years, failed to oppose during the USPTO process, and has no evidence of actual confusion
- Award costs to TBG
Recommended Strategy
Immediate Actions
boston.garden expires April 22, 2026 — approximately 6 weeks from today. If DNCB acquires this domain upon expiration, TBG loses its primary web presence and DNCB gains a devastating factual weapon. Renew immediately and enable auto-renewal. Also consider registering defensive variants (e.g., thebostongarden.com, bostongardendispensary.com) if not already held.
File Early Dispositive Motion
File a Motion to Dismiss or early Motion for Summary Judgment. TBG's defenses — particularly laches and the federal registration bar to dilution — are well-suited for early resolution, minimizing litigation costs.
Assert Affirmative Defenses
Assert laches, acquiescence, estoppel, and all applicable affirmative defenses in the Answer.
Monitor for Preliminary Injunction
If filed, the same arguments apply — DNCB's 4.5-year delay fatally undermines any claim of "irreparable harm."
Discovery Strategy
Propound Targeted Early Discovery
Seek: (a) all evidence of actual confusion (expected: none); (b) internal communications regarding TBG from 2020–2024 (expected: showing knowledge and inaction); (c) trademark monitoring and enforcement records (expected: showing sophisticated monitoring capability).
Settlement Posture
Leverage Defense Strength in Settlement
Maintain openness to reasonable settlement while leveraging the strength of TBG's legal position. TBG's founders have publicly expressed willingness to "reach an agreement."
Address Resource Asymmetry
If needed, consider pro bono representation from IP clinics or amicus support from cannabis industry associations.
Counterclaim Considerations
Declaratory Judgment
Consider counterclaim for declaratory judgment of non-infringement, non-dilution, and non-cybersquatting.
Attorney's Fees Counterclaim
Consider counterclaim under 15 U.S.C. §1117(a) (exceptional case) and/or §1120 if DNCB's claims are found baseless. DNCB's 4.5-year delay, failure to oppose, zero actual confusion, and aggressive willfulness allegations unsupported by the record may support an exceptional case finding.
Specific Responses to Complaint Allegations
Defend Against Cancellation (Count VIII)
DNCB seeks cancellation of Reg. No. 7,075,795 under §1119. Priority defense: DNCB's failure to oppose during the statutory window, combined with the USPTO examiner's finding of no conflict. The cancellation claim depends on the same confusion analysis that fails under Pignons.
Cybersquatting — Assert ACPA Safe Harbor
Move for early dismissal of Count IV. The ACPA safe harbor (§1125(d)(1)(B)(ii)) is virtually dispositive: TBG held federal trademarks, retained counsel, and used the domain for its actual operating business. This is a textbook safe harbor case — every bad-faith factor favors TBG.
Rebut Willfulness Allegations
DNCB alleges willfulness throughout the complaint (¶¶19, 25, 36, 39, 45, 46, 56, 61, 63) to support treble damages. Document TBG's good-faith registration process in detail: retention of trademark counsel, $10K+ investment, proper USPTO filings, and reliance on the USPTO's grant of registration. Request early discovery of DNCB's internal deliberations showing they knew the weakness of their position.
Leverage §2(f) Descriptive Status (From Exhibit A)
All of DNCB's registrations were granted under §2(f), meaning the USPTO classified "BOSTON GARDEN" as descriptive. This is a powerful defensive weapon across every claim: (a) narrows the scope of protection to the specific goods/services for which secondary meaning was proven (sports/entertainment only); (b) undermines the "famous mark" threshold for dilution; (c) supports TBG's fair use defense; (d) strengthens TBG's argument that "Boston Garden" is available for descriptive use by other businesses.
Exploit DNCB's Crumbling Trademark Portfolio (From TSDR Verification)
TSDR records reveal DNCB's portfolio is in systemic collapse. Of 6 total registrations spanning 9 original classes: 3 entire registrations are DEAD (Regs. 1,967,910; 2,301,364; 2,823,675 — all cancelled for §8 failure) and 3 additional classes cancelled on Reg. 1,595,311. Only 3 registrations with 4 active classes survive. Most critically, Reg. 2,301,364 used the exact phrase "THE BOSTON GARDEN" (for a sports cafe) — DNCB abandoned it in 2006, 20 years ago. DNCB's complaint does not disclose any of these cancellations. Use these facts to: (a) undermine DNCB's claim of "continuous use since 1990"; (b) prove systematic abandonment/non-use under §45; (c) challenge DNCB's credibility for non-disclosure of dead registrations; (d) argue "Boston Garden" is historical nostalgia, not a current source identifier; (e) argue DNCB cannot claim exclusive rights to "THE BOSTON GARDEN" when it previously held that exact mark and let it die.
Coordinate with TTAB Proceeding (Opposition No. 91301875)
Discovery opens Mar 30, 2026 (~19 days). TBG has already filed an aggressive answer with abandonment counterclaim in the TTAB. Coordinate the federal court defense with the TTAB proceeding — discovery in both can generate evidence useful for the other. Consider whether to move to stay one proceeding pending the other, or pursue both simultaneously for maximum leverage. TTAB ESTTA counsel: Chelsie Spencer, Vicente LLP (Dallas).
Applicable Statutes
Federal
Massachusetts
Key Case Law
First Circuit
| Case | Citation | Relevance |
|---|---|---|
| Pignons S.A. v. Polaroid | 657 F.2d 482 (1st Cir. 1981) | 8-factor likelihood of confusion test |
| Oriental Financial v. Cooperativa | 698 F.3d 9 (1st Cir. 2012) | Laches and progressive encroachment |
| Borinquen Biscuit v. M.V. Trading | 443 F.3d 112 (1st Cir. 2006) | Absence of actual confusion is "telling" |
| Astra Pharm. v. Beckman Instruments | 718 F.2d 1201 (1st Cir. 1983) | Consumer sophistication reduces confusion |
Other Circuits & Supreme Court
| Case | Citation | Relevance |
|---|---|---|
| Nissan Motor v. Nissan Computer | 378 F.3d 1002 (9th Cir. 2004) | Same name, different industry — defendant won |
| Jack Daniel's v. VIP Products | 599 U.S. 140 (2023) | Standard confusion test for commercial marks; distinguishable |
| Kiva Health v. Kiva Cannabis | — | Cannabis trademark laches dispute |
Same-Name Coexistence Precedents
| Names | Industries | Status |
|---|---|---|
| Delta / Delta | Airlines vs. Faucets | Coexist since 1959 |
| Dove / Dove | Soap vs. Chocolate | Coexist |
| Apple / Apple | Music vs. Computers | Coexisted for decades |
| Leafs / Leafs | Cannabis (Snoop) vs. Hockey | Pending — directly analogous |
Trademark Portfolios
DNCB's Registrations (per Complaint ¶10 & Exhibit A — Verified)
| Reg. No. | Mark | Int. Cl. | Goods/Services (Verified from Exhibit A Certificates) | Key Details | Status |
|---|---|---|---|---|---|
| 1,595,311 | BOSTON GARDEN | 25 only |
Cl. 25: Sport clothing (tee-shirts & sweatshirts) — first use 3/1988 — ACTIVE (sole surviving class) |
Filed 7-25-1989; Reg. 5-8-1990 Owner: New Boston Garden Corp. → DNCB (Oct 15, 2004) Ser. No. 73-814,643 §2(f) — DESCRIPTIVE "No claim to exclusive right to use BOSTON" §15 incontestability filed Aug 2, 1996 (Cl. 25 only) Renewed: 2001, 2010, 2020 Specimen: "Boston Garden Society" jacket w/ law firm branding |
Partially Active 3 of 4 classes cancelled |
| 6,623,366 | BOSTON GARDEN | 41, 43 |
Cl. 41: Providing a facility for entertainment events (musical performances, holiday activities, sports activities, dramatic performances) — first use 12/2018 Cl. 43: Restaurant services — first use 12/2018 |
Filed 8-9-2019; Reg. 1-18-2022 Owner: Delaware North Cos., Inc. - Boston Ser. No. 88-983,099 §2(f) — DESCRIPTIVE Refs owner of Reg. 2,823,675 & 1,595,311 |
Active |
| 7,507,837 | BOSTON GARDEN | 35 | Cl. 35: Retail store services featuring clothing, hats/visors, sports clothing/equipment, sports team merchandise, sports memorabilia, pre-recorded videos, CDs/DVDs (sports & history), books, posters, calendars, beverage ware, bedding, toys, plush toys, figurines, gifts — first use 10/2022 |
Filed 8-9-2019; Reg. 9-17-2024 (after TBG opened) Owner: Delaware North Cos., Inc. - Boston Ser. No. 88-573,318 §2(f) — DESCRIPTIVE Refs owner of Reg. 2,823,675 & 1,595,311 |
Active |
| 2,823,675 | BOSTON GARDEN | 20 | Cl. 20: Novelty gifts and collectibles, namely fragments and relics from a sports arena including fragments from seats, flooring and the like — first use 11/17/2003 |
Filed 5-15-2000; Reg. 3-16-2004 Owner: New Boston Garden Corp. → DNCB (Oct 15, 2004) Ser. No. 76-047,009 §2(f) — DESCRIPTIVE Refs Regs. 1,595,311; 1,967,910; 2,301,364 §15 incontestability accepted Mar 23, 2010 Failed to file §8 & 9 maintenance Specimen: Brass plaque "BOSTON GARDEN 1928–1995" with image of demolished arena |
DEAD — CANCELLED Sep 27, 2024 |
| 1,967,910 | BANNER YEARS BOSTON GARDEN 1928–1995 (design mark with arena illustration & championship banners) |
16 | Cl. 16: Printed materials, namely calendars — first use Sep 15, 1994 |
Filed 10-12-1994; Reg. 4-16-1996 Owner: New Boston Garden Corporation (never assigned to DNCB) Ser. No. 74/584,738 Disclaims "BOSTON" and "1928–1995" Failed to file §8 (6-yr) Attorney: Karen Artz Ash, Amster Rothstein & Ebenstein |
DEAD — CANCELLED Jan 20, 2003 |
| 2,301,364 | THE BOSTON GARDEN SPORTS CAFE | 43 | Cl. 43: Restaurant/cafe services (inferred from mark name) |
Filed 11-07-1997; Reg. 12-21-1999 Owner: New Boston Garden Corp. → DNCB (Oct 15, 2004) Ser. No. 75/386,831 Failed to file §8 (6-yr) Attorney: Daniel J. Barnaba, Phillips Lytle (Buffalo, NY) |
DEAD — CANCELLED Sep 23, 2006 |
- All DNCB registrations are §2(f) — Descriptive Marks. Every DNCB registration concedes "BOSTON GARDEN" is descriptive, not inherently distinctive. Descriptive marks receive the weakest trademark protection, especially when used in a completely different industry.
- Reg. 1,595,311 disclaims "BOSTON" and has lost 3 of 4 classes to §8 cancellation. Only Class 25 (sport clothing) survives. Class 41 (entertainment facilities) — the core of DNCB's "arena" identity — is CANCELLED.
- Reg. 2,823,675 is DEAD. DNCB's 4th registration (arena relics/collectibles) was cancelled Sep 27, 2024 because DNCB failed to file §8 maintenance. The specimen was a commemorative plaque reading "BOSTON GARDEN 1928–1995" — literally memorializing the name as belonging to a demolished venue.
- Reg. 7,507,837 was registered September 17, 2024 — more than 3 years after TBG opened. DNCB's "first use" date of October 2022 means DNCB cannot claim priority over TBG's earlier use.
- DNCB's surviving portfolio is razor-thin: Out of 6 total registrations spanning 9 original classes, DNCB retains only 4 active classes across 3 surviving registrations (Cl. 25 sport clothing; Cl. 35 retail store; Cl. 41 entertainment; Cl. 43 restaurant). Three entire registrations are dead and 3 additional classes are cancelled. None cover cannabis.
- Two additional DNCB registrations — BOTH DEAD: Reg. 1,967,910 ("BANNER YEARS BOSTON GARDEN 1928–1995," Cl. 16 calendars) — cancelled Jan 20, 2003. Reg. 2,301,364 ("THE BOSTON GARDEN SPORTS CAFE," Cl. 43 restaurant) — cancelled Sep 23, 2006. Both cancelled for §8 failure. DNCB has now lost 3 entire registrations to maintenance neglect — a devastating pattern undermining any claim of vigorous trademark protection. Notably, Reg. 2,301,364 used the exact phrase "THE BOSTON GARDEN" — the same mark TBG uses — and DNCB abandoned it 20 years ago.
Sources: Exhibit A to Complaint (Doc. 1-1, Filed 02/18/26); TSDR Case Files for Ser. Nos. 73814643, 76047009, 74584738, 75386831, 90328744, 90978600, 90290851 (generated 03/10/26); TTABVUE filings OPP-6 through OPP-9 for Opp. No. 91301875.
TBG's Registrations & Applications (per Complaint ¶12)
| Reg./Ser. No. | Mark | Goods/Services | Status |
|---|---|---|---|
| Reg. 7,075,795 | THE BOSTON GARDEN | Cannabis-related smoking accessories and website and retail services | Active (Principal Register) — DNCB seeks cancellation |
| Ser. 97/076,871 | THE BOSTON GARDEN | Cannabis-related goods/services | Pending — DNCB seeks abandonment |
| Ser. 90/328,729 | THE BOSTON GARDEN | Cannabis-related goods/services | Pending — DNCB seeks abandonment |
| Reg. 7,355,848 Ser. 90/328,744 |
TBG | Cl. 035: Retail & online retail store services featuring stickers, smoking/vaping articles (hemp-based CBD), cosmetic products (hemp-based CBD), smoking accessories Filed Nov 18, 2020 (ITU) • Reg. Apr 9, 2024 • First use Jul 20, 2020 |
Active (Principal Register) |
| Reg. 6,932,242 Ser. 90/978,600 |
TBG | Cl. 035: Website with consumer information re: cannabis, CBD, hemp Cl. 041: Website featuring articles, blogs, news & commentary re: cannabis, CBD, hemp, marijuana Filed Oct 30, 2020 (ITU) • Reg. Dec 20, 2022 • First use Jul 20, 2020 • Child of Ser. 90/290,851 |
Active (Principal Register) |
| Reg. 7,157,843 Ser. 90/290,851 |
TBG | Cl. 034: Smoking accessories, namely, grinders Filed Oct 30, 2020 (ITU) • Reg. Sep 5, 2023 • First use Aug 2021 • Parent of Ser. 90/978,600 |
Active (Principal Register) |
| Ser. 97/567,811 | WHERE THE BOSTON STRONG FIND BOSTON'S STRONGEST | Related slogan (filed Aug 2022) | Pending/Unknown |
TTAB Proceedings (Verified from Primary Source Documents)
| Proceeding No. | Type | Parties | Target | Key Dates & Status |
|---|---|---|---|---|
| 91301875 | Opposition | DNCB v. Commonwealth Farm 1761, Inc. | TBG's Ser. No. 90/328,729 |
Filed: Sep 23, 2025 Answer due: Dec 22, 2025 (missed) Default entered: Jan 16, 2026 TBG answer + show cause response: Jan 19, 2026 (ESTTA #1490979/1490980) Default SET ASIDE: Mar 2, 2026 — TTAB found "meritorious defense" Discovery opens: Mar 30, 2026 (~19 days) Trial ends: Feb 23, 2027 Briefs: Jun–Jul 2027 TBG filed abandonment counterclaim (¶¶22–32) and 3 affirmative defenses. TBG counsel: Chelsie Spencer, Vicente LLP (Dallas). DNCB counsel: Alex Montgomery, Hinckley Allen. |
TBG's verified TTAB answer asserts:
- Abandonment Counterclaim (¶¶22–32): Boston Garden renamed Fleet Center 1995; final event Sep 29, 1995; sat vacant 3 years; demolished 1998; no venue/event/retail services for 20+ years; venue known as TD Garden since 2009 through 2045; DNCB "ceased use of its mark, for a period of more than three years, with intent not to resume use" per §45. Now corroborated by TSDR: DNCB let 3 entire registrations die (Regs. 1,967,910; 2,301,364; 2,823,675) plus 3 classes on Reg. 1,595,311 — all for §8 failure. Reg. 2,301,364 used the exact phrase "THE BOSTON GARDEN" and was abandoned in 2006.
- Denial of fame (¶10): "The BOSTON GARDEN is not a famous trademark and Opposer abandoned any purported rights it had thereto"
- No confusion (¶16, 2nd Aff. Def.): "no chance for consumer confusion" between "an exclusive social club and retail store services related to certain hemp-based and smoking products"
- Reserves right to seek cancellation of DNCB's mark pending discovery results
Sources: TTABVUE filings OPP-6 (default notice), OPP-7 (show cause response), OPP-8 (answer, ESTTA #1490980), OPP-9 (order setting aside default). Access at ttabvue.uspto.gov proceeding 91301875.
Earlier research identified TTAB proceedings 91301552 and 92080891 as DNCB v. TBG. Verified review shows: 91301552 = Wired Business Media v. CyberRisk Alliance (unrelated; dismissed Jan 16, 2026). 92080891 = Shanghai Duohui v. Travel Tao (unrelated; re XTRANSFER mark). The only verified DNCB v. TBG TTAB proceeding is Opposition No. 91301875.
Domain Portfolio (WHOIS Verified)
| Domain | Owner | Registrar | Created | Expires | Notes |
|---|---|---|---|---|---|
| boston.garden | Domains By Proxy, LLC (privacy-shielded; operated by TBG) | GoDaddy.com | Apr 22, 2021 | Apr 22, 2026 | DNS: Cloudflare. DNCB alleges cybersquatting (Count IV). Expires ~6 weeks from today — ensure renewal. |
| bostongarden.com | Delaware North 250 Delaware Ave, Buffalo, NY 14202 digitalmarketing@delawarenorth.com |
Network Solutions | Jun 19, 2001 | Jun 19, 2028 | DNS: WorldNic. DNCB owns the .com but TBG uses the .garden TLD. Different domains, no conflict. |
- boston.garden is a different domain from bostongarden.com. DNCB owns bostongarden.com. TBG registered boston.garden — a distinct TLD (.garden) that aptly describes a cannabis business (plants/gardening). These are not confusingly similar domains.
- No bad faith: TBG registered boston.garden to operate a legitimate business, not to sell it to DNCB or divert traffic. The .garden TLD reinforces the cannabis/plant double entendre.
- DNCB never registered boston.garden itself despite the .garden TLD being available since 2014. This further undercuts any claim that TBG "cybersquatted."
Verification Checklist — All Complete
Completed
- Obtain actual complaint from PACER — DONE: 14-page complaint reviewed, 8 counts identified (Case 1:26-cv-10918-WGY, Doc. 1, Filed 02/18/26)
- Obtain DNCB's trademark registration numbers — DONE: Reg. Nos. 7,507,837; 6,623,366; 1,595,311 (Compl. ¶10)
- Obtain TBG's registration/application numbers — DONE: Reg. No. 7,075,795; Ser. Nos. 97/076,871; 90/328,729 (Compl. ¶12)
- Identify judge assignment — DONE: Senior Judge William G. Young (WGY), appointed 1985 by Reagan, senior status 2021
- Identify plaintiff's counsel — DONE: Hinckley, Allen & Snyder LLP (Craig M. Scott, Christine K. Bush, Elizabeth M. Nagle)
- Confirm no preliminary injunction motion filed — DONE: No PI or TRO filed as of March 11, 2026 despite "irreparable harm" language in complaint
- Review docket for post-complaint activity — DONE: No scheduling orders, no Rule 26(f) conference, no answer/MTD filed yet. Case in earliest stages; answer deadline ~mid-April 2026
- Research Judge Young's trademark track record — DONE: No published trademark LOC/dilution opinions found. In WhitServe v. GoDaddy, took laches seriously but required concrete evidence. Fact-intensive, jury-favoring, protective of individual rights. Blocked JetBlue-Spirit merger with granular analysis.
- Research Hinckley Allen & Snyder LLP — DONE: Scott = 30+ yr IP trial lawyer, "Trademark Lawyer of the Year." Bush = 20+ yr IP litigator. Both co-founded Scott & Bush before joining HA in 2014. Serious, experienced IP team.
- Research DNCB trademark enforcement history — DONE: Critical finding: DNCB demanded $51M for Yosemite National Park names (2015-2019), forcing park to rename The Ahwahnee, Curry Village, etc. Settled for $12M. Documented pattern of aggressive trademark monetization.
- Identify defense counsel — DONE: Adam D. Fine, Vicente LLP (Boston) — prominent MA cannabis attorney, Managing Partner of Boston office
- Confirm TBG's Social Equity status — DONE: TBG is Social Equity and Boston Equity Certified
- Verify boston.garden website — DONE: Active dispensary site operated by Nuestra, LLC. Three locations confirmed. Recreational (21+) only. Products: flower, pre-rolls, vapes, edibles, concentrates. In-house brand "Lobster Pot."
- Confirm DNCB's arena domain — DONE: DNCB operates at tdgarden.com. bostongarden.com confirmed owned by Delaware North (WHOIS: 250 Delaware Ave, Buffalo, NY; digitalmarketing@delawarenorth.com; registered Jun 19, 2001).
Newly Completed (This Session)
- Pull exact international class codes for all DNCB registrations — DONE via Exhibit A: Reg. 1,595,311 = Cls. 16, 21, 25, 41; Reg. 6,623,366 = Cls. 41, 43; Reg. 7,507,837 = Cl. 35. All registered under §2(f) (descriptive). Reg. 1,595,311 disclaims "BOSTON."
- Obtain Exhibit A to the complaint — DONE: 4-page PDF (Doc. 1-1, Filed 02/18/26) containing 3 USPTO registration certificates. Critical findings: all marks registered as descriptive (§2(f)); "BOSTON" disclaimed; Reg. 7,507,837 registered 9/17/2024 (after TBG opened). Also references 4th registration: Reg. 2,823,675.
- Run WHOIS on boston.garden — DONE: Registered Apr 22, 2021 via GoDaddy. Privacy-shielded (Domains By Proxy, LLC). DNS: Cloudflare. Expires Apr 22, 2026 — ~6 weeks away; ensure renewal.
- Run WHOIS on bostongarden.com — DONE: Confirmed owned by Delaware North (250 Delaware Ave, Buffalo, NY 14202; digitalmarketing@delawarenorth.com). Registered Jun 19, 2001 via Network Solutions. Expires Jun 19, 2028.
Newly Completed (TSDR & TTABVUE Documents)
- Verify incontestability of DNCB's Reg. No. 1,595,311 — DONE via TSDR (Ser. 73814643): §15 filed Aug 2, 1996. BUT: 3 of 4 classes CANCELLED (§8). Only Cl. 25 (sport clothing) survives. Cls. 16, 21, 41 all dead. Incontestability applies only to Cl. 25.
- Pull details for Reg. No. 2,823,675 — DONE via TSDR (Ser. 76047009): Cl. 020 (arena relics/collectibles). DEAD — CANCELLED Sep 27, 2024 for failure to file §8 maintenance. Specimen: brass plaque "BOSTON GARDEN 1928–1995." Also revealed Regs. 1,967,910 & 2,301,364.
- Verify TTAB proceedings — DONE via TTABVUE (Opp. 91301875): Obtained notice of default (OPP-6, Jan 16, 2026), TBG's show cause response (OPP-7, Jan 19, 2026), TBG's full answer with abandonment counterclaim (OPP-8, ESTTA #1490980), and TTAB order setting aside default (OPP-9, Mar 2, 2026). Previously identified numbers 91301552 and 92080891 were unrelated cases (corrected).
Completed (Final Research Round)
- Pull details for Reg. No. 1,967,910 — DONE via TSDR (Ser. 74584738): "BANNER YEARS BOSTON GARDEN 1928–1995" (design mark with arena illustration). Cl. 016 (calendars). Owner: New Boston Garden Corporation (never assigned to DNCB). Disclaims "BOSTON" and "1928–1995." DEAD — CANCELLED Jan 20, 2003 for §8 failure.
- Pull details for Reg. No. 2,301,364 — DONE via TSDR (Ser. 75386831): "THE BOSTON GARDEN SPORTS CAFE." Cl. 043 (restaurant services). Owner: New Boston Garden Corp. → DNCB (Oct 15, 2004). DEAD — CANCELLED Sep 23, 2006 for §8 failure. Used the exact phrase "THE BOSTON GARDEN" — abandoned 20 years ago.
- Verify TBG Reg. 7,355,848 — DONE via TSDR (Ser. 90328744): "TBG" (standard characters). Cl. 035 — retail/online retail store services featuring stickers, smoking/vaping articles (hemp-based CBD), cosmetic products (hemp-based CBD), smoking accessories. Filed Nov 18, 2020 (ITU). Reg. Apr 9, 2024. LIVE.
- Verify TBG Reg. 6,932,242 — DONE via TSDR (Ser. 90978600): "TBG" (standard characters). Cl. 035 (cannabis/CBD/hemp website info) + Cl. 041 (cannabis/CBD/hemp articles, blogs, news, commentary). Filed Oct 30, 2020 (ITU). Reg. Dec 20, 2022. Child of Ser. 90/290,851. LIVE.
- Verify TBG Reg. 7,157,843 — DONE via TSDR (Ser. 90290851): "TBG" (standard characters). Cl. 034 — smoking accessories, namely grinders. Filed Oct 30, 2020 (ITU). Reg. Sep 5, 2023. Parent of Ser. 90/978,600. LIVE.
- Confirm TTAB cancellation petition against Reg. 7,075,795 — DONE: No separate TTAB cancellation petition exists. DNCB is pursuing cancellation exclusively through the federal court under 15 U.S.C. §1119 (Count VIII). This is legally permissible — §1119 grants district courts independent authority to order cancellation within a civil action. DNCB's strategy: TTAB opposition (91301875) targets TBG's pending applications; federal court Count VIII targets TBG's existing Reg. 7,075,795.
Prepared for Commonwealth Farm 1761, Inc., d/b/a "The Boston Garden Dispensary"
Case No. 1:26-cv-10918-WGY — U.S. District Court for the District of Massachusetts
PRIVILEGED & CONFIDENTIAL — ATTORNEY WORK PRODUCT