,em>Update: Case settled./em>
Secret Boston, LLC, which has long organized and promoted events in Boston, today sued some New York concern, accusing it of trying to muscle in on their act by using the name Secret Boston.
The issue came to the fore earlier this year when both Secret Boston, LLC and Fever Labs, Inc. of New York, also calling its local Web site Secret Boston, both began promoting two separate "immersive" Van Gogh exhibits this fall, confusing would be ticket purchasers to no end and sparking a Better Business Bureau article.
In its trademark suit, filed in US District Court in Boston, the original Secret Boston says it's been operating under that name since 2010 and that it's built up considerable equity in the trademark, as evidenced by its 93,000 followers on Facebook, 60,000 followers on Instagram and 140,000 subscribers to its e-mail newsletter, not to mention coverage in such media outlets as the Globe. The local company says it also has some 2,000 local "ambassadors" who help promote events on social media.
Based on Secret Boston’s popular social media accounts and thriving email list, Secret Boston has a robust following of individuals, both within and outside of Massachusetts, who are familiar with, and readily associate, the Mark with Plaintiff and Plaintiff’s Services.
The suit says Fever only got into the "Secret" event promotion business in 2016, with a series of "Secret" Web sites in various cities, but not Boston, at least not until last June, when it launched a Boston site.
The local Secret Boston says the out-of-state Secret Boston would have known about the homegrown site in part because it quickly shows up in Google searches and in part because:
Defendant’s CEO and founder, Ignacio Bachiller, was exposed to Plaintiff, Plaintiff’s Mark, and Plaintiff’s Services while living in the Greater Boston area during the four years he attended the Massachusetts Institution of Technology (MIT) in Cambridge, Massachusetts, from 2010 to 2014, a period during which Plaintiff Secret Boston was already actively promoting its services under the SECRET BOSTON Mark in Massachusetts, including to MIT students.
The locals say they've gotten numerous phone calls and e-mail messages from people upset at signing up for what they thought was the locally promoted show, rather than the New York one - which, initially did not have a specific Boston location for where it would take place. They cite several examples, including:
“I would like to know by tomorrow, March 4 where it will be held or I will contact my credit card company to arrange to cancel the tickets. And, before you remind me that the tickets are non-refundable, I’m not sure that will be true if your program has been misrepresented. I would appreciate your prompt attention to my request.”- from an Earthlink.net account on March 3, 2021.
The locals continue:
Defendant’s use of the Infringing Mark has tarnished Plaintiff’s reputation because Defendant’s Services have been provided negligently and have caused numerous problems and consumer complaints, including to the Better Business Bureau.
In its complaint, Secret Boston, LLC asks a judge to Fever to knock it off and stop calling its Boston site "Secret Boston," destroy any promotional material labeled "Secret Boston" and hand over the secretboston.com domain and related social-media accounts to Secret Boston, LLC, The complaint also requests the judge declare Fever violated Secret Boston's trademark and that it has to pay triple damages, the exact amount to be determined at trial.