Boston Sports Medicine was founded in 1999, and has operated ever since, specializing in sports, dance, orthopedic and post-surgical physical therapy. BSM has facilities throughout eastern Massachusetts, and offers interactive services through its website, bostonsportsmed.com. BSM registered the “BOSTON SPORTS MEDICINE” mark for physical, muscular and massage therapy in Massachusetts in 2004. It obtained a federal registration of a design mark featuring a silhouette of an athlete kicking a ball with BOSTON SPORTS MEDICINE superimposed in red and teal in 2015, and a standard character registration of the mark in 2018 (although oddly the complaint does not referencethe standard character mark or assert that it is infirnged).
The complaint alleges that BSM discovered in June 2014 that co-defendant Dr. Thomas J. Gill had opened Boston Sports Medicine & Research Institute and registered the domain name bostonsportsmedicine.com. Dr. Gill is well known through his work as the team doctor for the New England Patriots and the Boston Red Sox, among other things. The complaint asserts that Dr. Gill had knowledge of BSM through their referrals to him. It says that BMI sent a pair of cease and desist letters in 2015, to which the defendants responded by asserting that their use of its name would not cause confusion. When actual instances of confusion continued, BSM filed suit in February 2016. BSM says that the parties settled this litigation whereby the defendants agreed to cease using the name and domain, after a wind-down period, despite failing to generate a written memorialization of the terms. The settlement included promises from the defendants to partner with BSM and send referrals, which began to occur. In light of this, BSM dismissed the lawsuit without prejudice in 2017. BSM says that as soon as the dismissal was filed, referrals dried up and defendants withdrew from partnering with BSM. Further, defendants never changed the company’s name, and actual confusion continued to occur. BSM asserts trademark infringement, unfair competition and false advertising, false designation of origin, cybersquatting, dilution, and violation of c. 93A.
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