Garden Party: Trademark Battle Between Sports Arena and Cannabis Dispensary Illustrates "Likelihood of Confusion" Analysis Across Different Industries
Until it was demolished in 1995 and replaced by a shiny new arena now called TD Garden, the Boston Garden was one of the more storied venues in sports. With its distinctive parquet floor and numerous championship banners, the home of the NBA’s Boston Celtics and NHL’s Boston Bruins was well known far beyond New England. So, when a cannabis dispensary called “The Boston Garden” (TBG) opened its doors in its namesake city 4 ½ years ago, decades after the identically named arena closed its doors, the current owners of TD Garden, Delaware North, were none too pleased. Even though TBG had been in business for several years and had secured a trademark registration for its name in 2023 – without any objection by Delaware North – the dispensary now faces a trademark infringement lawsuit recently filed by that entity.
Delaware North, which holds several live, registered marks for “Boston Garden,” asserts that TBG’s use of “The Boston Garden” creates a “likelihood of confusion” between the two marks, alleging in its complaint that "members of the public are likely to be confused as to the source, sponsorship, or other commercial affiliation of TBG's goods and services." (i.e., that the public will think TD Garden has expanded into the cannabis industry).
This dispute implicates a common issue in “likelihood of confusion” cases: what happens when two trademark holders use the same or similar marks in completely different industries? The instinct of most business owners is to assume that if the industries are different - such as sports and pot - there is no conflict and they can keep using the mark. That assumption is understandable, but it is often wrong, and acting on it without proper analysis can expose a company to serious legal and financial risk.
How Courts Approach "Likelihood of Confusion" Analyses
Likelihood of confusion is the central test in both trademark infringement claims under the Lanham Act and in trademark registration disputes before the U.S. Patent and Trademark Office (USPTO). The standard does not ask whether consumers are actually confused; it merely asks whether confusion is likely. That is a meaningful distinction. You do not need a parade of baffled or misled customers to have a viable claim or a winning defense.
Courts across federal circuits apply multi-factor balancing tests to determine whether a likelihood of confusion exists between two competing marks. While the specific factors vary by circuit, the substantive considerations overlap substantially. Among the most critical are:
- The similarity of the marks in appearance, sound, and meaning;
- The relatedness of the goods or services;
- The strength of the senior mark;
- The sophistication of the relevant consumers; and
- Evidence of actual confusion.
Notice that "different industries" is not, by itself, one of these factors. The relevant inquiry is the relatedness of the goods or services, a subtly but critically different question. Industries can overlap in ways that matter to consumers even when the product categories appear distinct at first glance.
TM Classification Is Not Determinative
Trademark applicants register their marks in one or more of 45 international classifications. Many business owners assume that registering in one class creates a clean boundary — that their rights exist within that class and nowhere else.
That is not how the law works. The USPTO and courts have consistently held that registration classes are an administrative convenience, not a substantive legal dividing line. As one court wrote: “The class to which a product may be assigned does not limit or extend the registrant's rights and has no bearing on likelihood of confusion.”
What matters, instead, is whether the consuming public would reasonably believe the two products or services share a common origin, affiliation, or sponsorship. If a company called "SportsPlus" sells running shoes, and another "SportsPlus" begins selling athletic apparel, the different product categories offer very little protection. Consumers who buy running shoes and athletic clothing often buy from the same brands, in the same stores, for the same purpose. Courts call this the "relatedness of goods" inquiry, and it cuts much deeper than classification.
Famous Marks and the Doctrine of Dilution
For highly famous marks, which Delaware North claims Boston Garden is, the analysis shifts further still. The Federal Trademark Dilution Act and its successor, the 2006 Trademark Dilution Revision Act, provide owners of truly famous marks with protection against dilution by blurring or tarnishment, even in the complete absence of competitive overlap or consumer confusion. If you opened a restaurant called "Google Burgers," the global corporate behemoth could likely stop you, not because anyone would confuse fast food with search engines and online services, but because using the mark in an unrelated context erodes its distinctiveness.
This doctrine is reserved for marks that have achieved widespread national recognition. The bar is intentionally high, but it illustrates the outer boundary of the principle: for the strongest brands, industry distance provides essentially no shelter. How this shakes out in the battle between the “famous” arena and the local pot shop remains to be seen. I would argue that Boston Garden is not a famous mark for dilution purposes.
Proactive, Protective Steps For Business Owners
Legal merits of a “likelihood of confusion” claim aside, the Boston Garden dispute illustrates the financial realities and risks involved when a small business finds itself in the trademark infringement crosshairs of a large global corporation armed with unlimited resources and lawyers. That is why caution, care, and comprehensiveness are so critical when adopting a new mark. This involves three primary elements:
- Survey the trademark landscape. Commission a proper, professional trademark clearance search that covers not just identical marks in your class, but similar marks in related classes and industries. A good clearance opinion will map the landscape, identify potential conflicts, and give you a defensible basis for proceeding or reconsidering.
- Different industries do not mean a free pass. If you discover a potential conflict, do not assume that different industries make the problem go away. Consult counsel before sending a cease-and-desist letter or, conversely, before ignoring a demand you receive.
- Register your marks broadly. A federal registration creates a legal presumption of validity and nationwide priority. Registering across multiple relevant classes, where budget allows, signals to competitors and to the USPTO that you take your brand seriously and understand its reach.
If you have any questions regarding “likelihood of confusion” in the context of trademark infringement or otherwise need assistance with a trademark matter, please reach out to Colin O’Brien or your contact at Latimer LeVay Fyock.
