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)./