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Back Bay academy sues Springfield school over the name ‘Commonwealth’

The Commonwealth School on Commonwealth Ave.Suzanne Kreiter/Globe staff/Globe staff

The Commonwealth School is a serious institution.

The Back Bay private high school occupies a seriously grand pair of townhouses built in the 1870s for the children of a railroad baron. It sends students to serious universities, including MIT and half the Ivy League. It charges a serious $40,000 a year in tuition and fees.

The school is also serious about protecting its brand: It filed a $2 million lawsuit in April against a Springfield private academy for underprivileged students that also has “commonwealth” in its name.

The Boston school asserted in court filings that the public’s confusion between it and Commonwealth Academy, nearly 90 miles away, is causing the institution “irreparable harm” and financial losses that are “presently incalculable.”


It asks a judge to force the academy to change its name.

The Springfield academy fired back in a filing Wednesday in US District Court in Boston, saying the Boston school is trying to “unlawfully expand” the scope of its trademark. The Springfield-based school contends that the Commonwealth School has engaged in threats, harassment, and libel to force a name change.

The academy says it is willing to add “Springfield” to its name, as it has on its website, or make other compromises, but will not willingly give up using “commonwealth” in its name.

The academy’s headmaster, John Foley, has also described the Boston school as elitist and accused it of unfairly targeting an institution that serves minority and low-income students. In an e-mail included in court filings, Foley said the Boston school probably learned the Springfield academy existed only through the success of its basketball team.

The team had a 23-5 record this year and has garnered attention from NCAA recruiters.

The similarity in names, Foley wrote, “is not anything that would cause confusion with your very exclusive, very wealthy, very entitled clientele who do not require an NCAA basketball scholarship in order to afford college.”


Foley declined to be interviewed through the academy’s spokesman, citing the ongoing litigation.

William Wharton, headmaster of Commonwealth School, said the lawsuit was necessary to prevent confusion around the name the Back Bay school has used for nearly six decades.

“It’s a part of our identity, and it’s something that we ultimately have to protect,” Wharton said in an interview.

At the heart of the suit is a question: Should a school be allowed to lay claim to a word that is ubiquitous around the state, one that graces the shingles of plumbers, dentists, auto repair shops, insurance agents, and countless other concerns?

John H. Ray III, the Springfield academy’s attorney, said it should not.

“Their position has been they own the word ‘commonwealth’ in educational services, to the exclusion of all others,” Ray said. “Our position has been, you don’t have a federal trademark for the word ‘commonwealth.’ You have a federal trademark for the words ‘Commonwealth School.’ ”

Stacey Dogan, a Boston University law professor who specializes in trademark and copyright matters, said the word’s frequent use across the Commonwealth of Massachusetts is one factor a judge could weigh.

“I think there’s reason to be skeptical about parties that seem to be trying to appropriate that term to their exclusive use in a particular industry,” Dogan said.

Timing could be a consideration, she said. Though the Boston school was founded in 1958, it filed for a trademark in April 2012, shortly before the Springfield academy opened. The Boston school asserts, though, that it didn’t know the academy existed until October 2015.


Also, US Patent and Trademark Office records show that Commonwealth Academy in Alexandria, Va., holds the trademark for that two-word phrase. Ray said the Virginia institution doesn’t oppose the Springfield academy use of the same name.

Thomas E. Kenney, a trademark litigator at the Beacon Hill firm Pierce & Mandell, said the outcome could be determined by a measure of the actual confusion caused.

“If no one who applies to the Commonwealth School would consider the Commonwealth Academy, and the other way around, that’s . . . very powerful for the Commonwealth Academy,” he said. “But if some students would be in a position to consider both schools, then that, to me, raises the stakes of someone finding a likelihood of confusion.”

The institutions serve starkly different populations.

The Commonwealth School in Boston receives four or five applications for every open seat, Wharton said, and requires an admission exam and interview. The Commonwealth Academy in Springfield, on the other hand, rarely turns away a student, according to a spokesman.

The institutions’ demographics also differ. Minorities make up 97 percent of the Springfield school’s student body, Foley said in the e-mail included in court filings; at the Boston school, 28 percent are minorities.

And the Boston school charges more for two students than the Springfield academy charged all 60 who enrolled there last year. For all those students, the academy took in only $70,000 in tuition, Foley said in the e-mail.

A spokesman for the academy said students pay what their families can afford, and the rest comes largely from private fund-raising.


A status hearing is set for July 12, but the academy hopes to reach a settlement, said Ray, the attorney for the Springfield school.

“We want to be distinct and not be confusing in any way,” he said. “I think the Commonwealth School wants the same thing.”

Jeremy C. Fox can be reached at jeremy.fox@globe.com. Follow him on Twitter @jeremycfox.