Internet Trademark Case Summaries
Bay State Savings Bank v. BayState Financial Services, LLC
338 F. Supp. 2d 181 (D. Mass. 2004)
Plaintiff Bay State Savings Bank, a mutual savings bank, offered banking services under the name BAY STATE SAVINGS for over 100 years, and operated a website at “baystatesavings.com.” Plaintiff owned federal and trademark registrations for the marks BAY STATE, BAY STATE SAVINGS BANK and BAY STATE INVESTMENT SERVICES, but only after plaintiff established secondary meaning in the geographic term BAY STATE. Plaintiff began offering investment and insurance services only within the past few years. Defendant Bay State Financial Services, which offered insurance and investment services, was founded as a general agency of New England Life Insurance Co. about 20 years ago. Defendant operated a website at “baystatefinancial.com.” Plaintiff sent defendant a cease-and-desist letter in December 2002 but defendant did not comply. About a year later, defendant merged with a subsidiary of MetLife, Inc., which involved moving to a location across from plaintiff’s headquarters. Plaintiff sued for unfair competition, cybersquatting, and dilution, and moved for a preliminary injunction. The court first analyzed whether plaintiff owned a protectable mark. Because BAY STATE was a geographically descriptive mark, it was entitled to protection only if it had acquired secondary meaning. Plaintiff offered evidence of secondary meaning through extensive advertising expenditures, promotional efforts, and its federal registrations. Even if secondary meaning existed, however, the court concluded that it was insufficient to preclude defendant from using a similar mark “in what amounts to a different industry.” Because of the differences between the parties’ core financial services, and defendant’s status as the prior user of BAY STATE for investment and insurance services, plaintiff failed to demonstrate a likelihood of success on the merits of its infringement claims. In addition, because defendant predated plaintiff’s presence in the investment services market by nearly 20 years, the balance of harms also favored defendant. The court thus denied plaintiff’s motion for a preliminary injunction.