Dubliner owns and operates a restaurant, “The Dubliner,” in Washington D.C., and holds a number of federally-registered trademarks in connection with restaurant and bar services. Dubliner accused East Coast Tavern and a second defendant, Inishowen Inc., of state and federal trademark infringement, false designation of origin, and violation of 93A, Massachusetts’ unfair competition law in connection with Boston’s “The Dubliner” restaurant that the Defendants own and operate (and which is coincidentally about a block from my office).
The Defendants asserted counterclaims for cancellation of the marks as applied for beer and ale for abandonment and fraud, which Dubliner moved to dismiss. According to the Defendants, the website for Dubliner’s restaurant had not associated the DUBLINER mark with beer or ale since at least June of 2021, and that the restaurant no longer includes a beer tap displaying the mark, which was the specimen of use that had previously been submitted with the DUBLINER application and 2013 renewal. They assert that the 2023 renewal fraudulently stated that the mark was still in use for beer and ale. Finally, Defendants assert that the registration by Dubliner of a new mark – AULD DUBLINER – for the same goods – beer and ale – demonstrates an abandonment of the DUBLINER mark for those same goods.
Judge Dein granted Dubliner’s motion to dismiss these counterclaims. With respect to the fraud claim, she noted that (among other things) the claim would have to demonstrate an intent to defraud the PTO. Interestingly, Judge Dein noted without deciding that the making of a knowingly false statement in a Section 15 Declaration of Incontestability may not be sufficient, because arguably 15 U.S.C. 1064(3) provides for cancellation only where the registration was fraudulently procured, not the incontestability of the mark (a different part of the Lanham Act deals with fraud in obtaining incontestable status, but only results in elimination of the incontestable status and not cancellation of the mark). In any event, Judge Dein found that the Defendants had failed to allege sufficient actual facts to show that the DUBLINER mark was no longer in use.
Regarding the abandonment argument, Judge Dein noted that, while Defendants alleged that the DUBLINER mark was not used on the menu in close proximity to beer and ale products, they failed to provide screen captures of the Dubliner menu from the relevant time periods. Dubliner provided captures of its menu from the relevant time period, as found on the Internet Archive (the “Wayback Machine”) that showed the mark in continuous use for beer and ale. For example, the menus listed beers under the heading “Dubliner Drinks” and identified a “Dubliner Amber Ale,” as well as “Dubliner Half & Half” and “Dubliner Black and Amber” (both versions of a classic Black and Tan).
Judge Dein gave no weight to the photograph of the Dubliner restaurant, purporting to show that there was no longer a “Dubliner” beer tap as had been shown in the specimens of use, both because the quality of the photograph was insufficient to determine the veracity of the claim and because the removal of that tap would not result in abandonment, provided (as here) that the mark remained in use in other ways.
Finally, she disregarded the registration of AULD DUBLINER because the menu captures provided by Dubliner showed the use of both the DUBLINER and the AULD DUBLINER marks. Accordingly, Judge Dein dismissed the counterclaim for cancellation.
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