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Bar fight: Boston pub called Dubliner counter-sues Washington pub with same name that demands it change its name

The Dubliner in Center Plaza downtown won't give up its name without a fight - it filed a countersuit today against an older Dubliner pub in Washington, DC that demands it change its name.

The DC Dubliner filed a trademark-infringement suit against the Boston Dubliner, which opened last year, where the Kinsale used to be, arguing consumers would get confused and think there was a connection between the two - especially because the DC Dubliner has a line of Dubliner whiskey and ale for sale in many places, including Boston.

In its countersuit, filed today in US District Court in Boston, the Boston Dubliner said, basically: Have you looked around at how many other bars already use the Dubliner name? A Google search shows Dubliner pubs in St. Paul, Omaha, Phoenix, Dallas, New Hope, PA, Lake Tahoe, New York, Kansas City, San Francisco, Tampa, Mornington, Australia and Phi Phi Island, Thailand. And the DC Dubliner knew there were other Dubliners before it trademarked its name, the Boston one declares.

This, the Boston Dubliner says, shows the DC Dubliner has no chance of proving it is being harmed by a similarly named Boston bar in part because it is not actually operating a pub in Boston or any of the other markets with Dubliner pubs and so there is no risk of confusion by consumers. The Bostonians cite the Dawn Donut Rule, which stems from a 1959 case in which a court ruled that Hart's Food Stores, a market chain in the Rochester, NY area, could continue selling "Dawn" donuts because the Dawn Donut Co., which sued Hart's, did not sell donuts anywhere near Rochester and so there was no chance of confusion.

But what about the whiskey? The Boston Dubliner charges the DC Dubliner knew when it applied to sell Dubliner whiskey there were already a large number of pubs everywhere that sold spirits, and that the DC bar misled the US Patent and Trademark Office by claiming it did not know of any other places using the name. Also, it submitted an "intent to use" the name, rather than proof it was actually using it on products, the Boston bar says.

The ale? The DC Dubliner doesn't even have it on tap itself, the Boston Dubliner alleges. Sure, it serves Auld Dubliner Amber Ale, but that's hardly the same as just Dubliner, the Boston Dubliner asserts - adding that, if anything, the DC Dubliner should be stripped of its right to trademark any potable as Dubliner since, the Bostonians charge, it committed fraud on the US Patent and Trademark Office by claiming it was unaware anybody else was using them.

Complete Boston Dubliner answer and counterclaims (2.6M PDF)./

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Comments

I'm really interested in following this case through the courts and how they rule. I don't think the 1959 case law covers everything being brought up here.

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Looks open and shut to me though IANAL. Why have they singled Boston, MA out?

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So they wouldn't automatically be entitled to use the name by virtue of having used it before the DC bar trademarked it.

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Most people don't want to waste time with frivolous lawsuits, but informal shows of support can seem like fun.

Maybe the Boston Dubliner could seek token support from other Dubliners, including those predating the DC Dubliner. Postcards, or what have you.

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You say "postcards," I say "amicus briefs."

Let's call the whole thing off (seriously).

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You say "Postcards," I say "Amicus Briefs"...

Let's hope the Federal Courts say "Let's call the whole thing off."

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This seems as good a time as any to spend a moment contemplating just how despicable Chris Kimball is…

https://www.nytimes.com/2019/08/22/dining/christopher-kimball-americas-t...

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He named his new business after the street it was located on and another business sued him for that apparent affrontery. Obvs, he wasn’t obligated to change the name. Hopefully this Dubliner nonsense will resolve similarly.

(It’s never been clear to me why some people have such an animosity towards Kimball. Anti-nerd prejudice? He invented all the best parts of ATK/CI, and recruited most of the people that still form the backbone of those enterprises. He apparently was forced out amicably separated in large part because he didn’t approve of how moneygrubbing the atk corp had become. He wasn’t wrong!

Imo, Milk Street Kitchen has a better show and website than ATK now. It has a more interesting and diverse group of cooks and recipes. Although I’m still fond of most of the folks at ATK, the show has a bit too much pre-scripted bonhomie these days and rarely shows me something new).

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He named his new business after the street it was located on and another business sued him for that apparent affrontery

I think you meant to write, “for his food business, he helped himself to a name that had already been in use for years by another small independent local food business; when they tried to set it right, his response was, approximately, ‘Eff you, i’ve got deeper pockets and better lawyers, and i’ll just run the clock on litigation until it bankrupts you.’”

It’s never been clear to me why some people have such an animosity towards Kimball.

On top of the shitty way he treated a little local business, there’s the whole thrice-married and treated the middle wife like shit thing. And if ATK’s claims have even a shred of truth to them, that would suggest he’s a cheating weasel in business, too.

He seems to meet all the criteria for “asshole”.

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i didn’t put forth a “narrative” - but you certainly did. Maybe you have behind the scenes knowledge, but everything in the press indicates Milk St Cafe escalated things legally, not Kimball. He didnt take their name, he just had the same street name part - private companies shouldnt get to lay claim to public place names. At this point, MSC’s stated concerns about potential loss of business appear to have been unfounded.

Fwiw, I don’t know bupkiss about his deep personal life, maybe you do. If you have anything from a reliable source to back up your venom, i’m open to seeing it - i dont know the guy, just know his work and what i read and see onscreen.

Like I observed before, most people dissing kimball seem to focus on his on-screen persona, and not the documented facts of his career.

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"I'm a Dubliner, just like me ma and pops."

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Apple is currently trying to trademark the depiction of apples:

The Fruit Union Suisse is 111 years old. For most of its history, it has had as its symbol a red apple with a white cross—the Swiss national flag superimposed on one of its most common fruits. But the group, the oldest and largest fruit farmer’s organization in Switzerland, worries it might have to change its logo, because Apple, the tech giant, is trying to gain intellectual property rights over depictions of apples, the fruit.

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