706 F.Supp.3d 181
D. Mass.2023Background
- Dubliner, Inc. (DC) owns and operates "The Dubliner" pub and holds various federally-registered trademarks related to the restaurant and bar business.
- Dubliner sued East Coast Tavern Group and Inishowen Inc. (MA) for the alleged unauthorized use of the DUBLINER mark in connection with their Boston restaurant of the same name.
- Defendants counterclaimed, seeking partial cancellation of Dubliner's registration, alleging fraud and abandonment as to the mark’s use for "beer; ale."
- Defendants argued that Dubliner was not actually using the DUBLINER mark for beer and ale, relying on website menu archives and a photograph of the bar.
- Dubliner moved to dismiss the counterclaims under Fed. R. Civ. P. 12(b)(6), arguing the counterclaims failed to plausibly allege fraud or abandonment.
- The court reviewed the archived menus and other submissions, found insufficient support for defendants’ allegations, and granted Dubliner’s motion to dismiss the counterclaims.
Issues
| Issue | Plaintiff's Argument (Dubliner) | Defendant's Argument (East Coast Tavern/Inishowen) | Held |
|---|---|---|---|
| Fraudulent Procurement of Registration | No fraud in registration or renewal; at most, defendants allege fraud only in the Section 15 Declaration | Dubliner made a knowingly false statement in Section 15 Declaration, intending to deceive the PTO | Dismissed: No fraud properly alleged in registration/renewal; only Section 15 fraud, which doesn’t support cancellation |
| Abandonment of Mark for Beer/Ale | Defendants’ allegations are contradicted by archived menus showing continuous use of the mark for beer/ale | No evidence of DUBLINER-branded beer/ale on menus or in bar photos for relevant time; new registration (AULD DUBLINER) shows intent not to use original mark | Dismissed: Menus show continued use; allegations insufficient for abandonment |
| Menus and Evidence of Use | Archived menu captures confirm actual, continuous use of DUBLINER for beer/ale | Menus and photo (allegedly) show absence of DUBLINER-branded beer/ale | Dismissed: Evidence provided by Dubliner undermines defendants’ claims |
| Impact of Additional Trademark (AULD DUBLINER) | Registering a similar mark does not imply abandonment of prior mark | Registration of AULD DUBLINER for similar goods shows intent to abandon DUBLINER for beer/ale | Dismissed: Registering new mark does not plausibly show intent to abandon original |
Key Cases Cited
- In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) (sets high bar for proving fraud in trademark registration)
- Gen. Healthcare Ltd. v. Qashat, 364 F.3d 332 (1st Cir. 2004) (use in commerce required for trademark rights; rules for abandonment)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (plausibility standard for pleadings)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (plausibility pleading standard)
- Lorenzana v. S. Am. Rests. Corp., 799 F.3d 31 (1st Cir. 2015) (failure to allege actionable false statement warrants dismissal)
- On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080 (Fed. Cir. 2000) (factual nature of abandonment inquiries)