Dubliner, Inc.v.The Irish Dairy Board Co-Operative Limited

Trademark Trial and Appeal Board

Aug 30, 2007

No. 92044189 (T.T.A.B. Aug. 30, 2007)

Mailed
30 August 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Dubliner, Inc.
v.
The Irish Dairy Board Co-Operative Limited
_____

Opposition No. 91164315
Cancellation No. 92044189
_____

Joseph D. Lewis of Barnes & Thornburg, LLP for Dubliner,
Inc.

Anthony R. Masiello of Holland & Knight LLP for The Irish
Dairy Board Co-Operative Limited.
______

Before Rogers, Drost, and Mermelstein, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On February, 15, 2005, Dubliner, Inc. filed an
opposition to the registration of Application Serial No.
75922820 for the mark shown below.

THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91164315
Cancellation No. 92044189
2
The application identifies the words in the mark as DUBLINER
IRISH CHEESE PUBLIC BAR. The application also indicates
that applicant has disclaimed the words “Irish Cheese” and
“Public Bar” and that the stippling in the drawing is for
shading purposes only. The goods are identified as “cheese”
in Class 29 and the application’s date of first use anywhere
is listed as April 30, 1996, and the date of first use in
commerce is listed as June 1, 1998. The application, filed
February 17, 2000, is owned by The Irish Dairy Board Co-
Operative Limited, an Irish corporation.
On February 14, 2005, Dubliner, Inc. also filed a
petition to cancel a registration (No. 2,319,632 issued
February 15, 2000) also owned by The Irish Dairy Board Co-
Operative Limited. The mark in the registration is for the
words DUBLINER IRISH CHEESE PUBLIC BAR KERRYGOLD in the
design shown below:

Opposition No. 91164315
Cancellation No. 92044189
3
The goods in the registration are identified as “cheese” in
Class 29 and the registration contains a disclaimer of the
words “Irish Cheese” and “Public Bar.” The underlying
application was filed on September 20, 1995, as an intent to
use application and the date of first use anywhere is listed
as April 30, 1996, and the first use in commerce date is
June 1, 1998. An affidavit under Section 8 of the Trademark
Act has been accepted.
Dubliner, Inc. asserts ownership of two registrations.
Registration No. 1,179,613 issued November 24, 1981 for the
mark THE DUBLINER AN IRISH PUB in the design shown below:

The services in the registration are identified as
“restaurant and bar services” in Class 42 and the words
“Irish Pub” are disclaimed. The underlying application was
filed on February 19, 1980, and the dates of first use
anywhere and in commerce are listed as January 1975. A
first renewal of the registration was filed in 2001.
The second registration (No. 2,724,229) is for the
word DUBLINER in typed or standard character form and lists
the following goods, services, and dates of first use:
Opposition No. 91164315
Cancellation No. 92044189
4
Apparel, namely, t-shirts, sweatshirts, jackets and
hats in Class 25
First use anywhere/in commerce: 1975

Beer and ale in Class 32
First use anywhere/in commerce: 1991

Restaurant and bar services in Class 43[1]
First use anywhere/in commerce: March 8, 1974

The registration issued June 10, 2003, and it is based on an
underlying application that was filed on April 30, 2002.
Inasmuch as Dubliner, Inc. is petitioner in one
proceeding and opposer in the other proceeding, we will
refer to Dubliner as plaintiff. Similarly, we will refer to
The Irish Dairy Board Co-Operative Limited, which is both
the respondent in the cancellation proceeding and the
applicant in the opposition proceeding, as defendant.
In its notice of opposition, plaintiff alleges
likelihood of confusion between its marks and the marks in
defendant’s application and registration. In addition,
plaintiff alleges that defendant “has not used the mark
shown in Respondent’s Registration No. 2319632, since at
least as early as January 1, 2002.” Petition to Cancel at
3. Defendant has denied the salient allegations of
plaintiff’s notice and petition.

1 The International Classification of “restaurant services” has
changed since plaintiff’s first application was filed.
Opposition No. 91164315
Cancellation No. 92044189
5
The Record
The record consists of the files of the opposition and
cancellation proceedings; plaintiff’s notices of reliance on
status and title copies of its registrations, third-
party registrations, defendant’s response to plaintiff’s
requests for admissions, plaintiff’s response to defendant’s
interrogatories 1 and 10, and plaintiff’s responses to
defendant’s requests for admissions; and defendant’s notice
of reliance on printed publications and plaintiff’s answers
to interrogatories and admission requests.
Evidentiary Objection
Defendant submitted a notice of reliance on plaintiff’s
response to three of defendant’s interrogatories. The
interrogatories and responses are set out below.
INTERROGATORY NO. 2
Provide the complete address of each restaurant, bar,
or other service establishment at which Opposer or any
person authorized by Opposer now provides or ever has
provided any service under the service mark DUBLINER in
the United States.
Answer
4 F Street, N.W., Washington DC 20001

INTERROGATORY NO. 4
Provide the names, addresses and other contact
information for the top five (by sales volume)
distributors, retailers and other sellers of Opposer’s
Goods.
Answer
None.

INTERROGATORY NO. 13
To the extent of Opposer’s knowledge, identify each
person or entity, including licensees and third
parties, that uses or has used in the United States a
trademark or service mark that consists of or includes
Opposition No. 91164315
Cancellation No. 92044189
6
the designation DUBLINER in connection with the
marketing of any goods or services, and describe
Opposer’s relationship to such persons and entities.
Answer
Opposer is aware of a bar in Philadelphia that
used the mark DUBLINER. Opposer has no official
relationship with this organization.
In response, plaintiff has submitted copies of its
responses to Interrogatories 1 and 10 because they are
“needed to clarify the answers relied upon by Applicant and
to help avoid any improper inference from the responses
relied upon by Applicant, that the Opposer itself (as
opposed to other retailers, distributors or sellers) did not
use the mark continuously since use began, on the range of
goods and services identified in response to interrogatory
no. 1.” Opposer’s notice of reliance at 1.
INTERROGATORY NO. 1
Identify each product and service which Opposer or its
agents have marketed under or by reference to the mark
DUBLINER and provide dates indicating the periods of
time during which such products and services were
offered under or by reference to the mark DUBLINER.
Answer
Beer and ale, food products, beverages, restaurant
services, bar services, adult and juvenile apparel,
glassware, golf balls and souvenirs. Opposer has
marketed its services and food and beverage products
with reference to the mark DUBLINER since 1974.
Opposer’s apparel products and souvenirs were marketed
at least as early as 1975, with various products added
to the line at a later date. A DUBLINER brand of
Opposition No. 91164315
Cancellation No. 92044189
7
beer/ale has been available since at least as early as
1991.
INTERROGATORY NO. 10
With respect to each product and service identified in
Interrogatory 1, state the dates of each period of time
during which Opposer ceased commercial use of the
trademark DUBLINER for more than six months, and
describe the circumstances under which commercial use
of the trademark DUBLINER ceased, was suspended and/or
resumed.
Answer
None.
Trademark Rule 120(j)(5), 37 CFR 2.120(j)(5), provides:
An answer to an interrogatory, or an admission to a
request for admission, may be submitted and made part
of the record by only the inquiring party except that,
if fewer than all of the answers to interrogatories, or
fewer than all of the admissions, are offered in
evidence by the inquiring party, the responding party
may introduce under a notice of reliance any other
answers to interrogatories, or any other admissions,
which should in fairness be considered so as to make
not misleading what was offered by the inquiring
party. The notice of reliance filed by the responding
party must be supported by a written statement
explaining why the responding party needs to rely upon
each of the additional discovery responses listed in
the responding party’s notice, failing which the Board,
in its discretion, may refuse to consider the
additional responses.

Plaintiff argues that “having relied on three of the
Opposer’s answers to interrogatories, Applicant must
tolerate the Opposer’s reliance on additional answers which
should, in fairness, be considered so as to make not
misleading what was offered by the Applicant.” Reply Brief
at 7. Furthermore, “Applicant appeared to be attempting to
raise the inference that the Opposer’s goods were never
sold. Reliance on Interrogatories 1 and 10 counteracted
Opposition No. 91164315
Cancellation No. 92044189
8
such an inference, by clarifying that Opposer itself, as
opposed to third-party resellers, has sold the goods.” Id.
Despite plaintiff’s arguments, we cannot conclude that
plaintiff’s submission of Interrogatory Nos. 1 and 10 was
necessary to avoid having defendant’s submission be
misleading. First, defendant is not arguing that plaintiff
has not used its mark on the identified goods or services
and it certainly has not petitioned to cancel plaintiff’s
registrations. Second, defendant’s interrogatories were
clearly directed to determining where plaintiff’s
establishment(s) were located and whether any other entities
including third parties and licensees were using the same
mark. Interrogatory Nos. 1 and 10, dealing with the dates
of use of plaintiff’s goods and services, are not needed to
clarify interrogatories 2, 4, and 5. Far from clarifying
the matter, they raise additional questions about common law
use of the mark on goods that are not identified in the
registrations. Therefore, we will not consider plaintiff’s
submission of its own answers to interrogatories.2
Priority
Priority is not an issue in the opposition proceeding
because plaintiff is relying on two registrations for the
mark DUBLINER and THE DUBLINER AN IRISH PUB and design. See

2 We add that as our subsequent discussion on the merits reveals,
our determination would not have changed even if we had
considered plaintiff’s responses to the interrogatories.
Opposition No. 91164315
Cancellation No. 92044189
9
King Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974).
In the cancellation proceeding, because both parties
have registrations, priority is determined differently.
Of course, petitioner or respondent may rely on its
registration for the limited purpose of proving that
its mark was in use as of the application filing date.
Thus, a petitioner -- whose application filing date was
earlier than respondent's application filing date --
could take its chances and elect to make of record
simply a copy(s) of its registration. Trademark Rules
2.122(d)(1) and 2.122 (d)(2). By so doing,
petitioner's proven first use date of its mark would
then be the filing date of the application. However,
if respondent thereafter proved an actual first use
date pre-dating petitioner's filing date, the issue of
priority, and hence petitioner's Section 2(d) claim,
would be resolved in favor of respondent.

Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281,
1284 (TTAB 1998).
Inasmuch as neither party has submitted evidence of a
date of first use,3 priority will be determined by the
underlying applications’ respective filing dates.
Defendant’s application for its registration (No. 2,319,632)

3 We have not considered plaintiff’s reliance on its own answers
to defendant’s interrogatories to establish a date of first use.
We note that “oral testimony, if sufficiently probative, is
normally satisfactory to establish priority of use in a trademark
proceeding.” Powermatics, Inc. v. Globe Roofing Products Co.,
341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965) (emphasis added)
However, such testimony should “not be characterized by
contradictions, inconsistencies and indefiniteness but should
carry with it conviction of its accuracy and applicability.”
B.R. Baker Co. v. Lebow Bros., 150 F.2d 580, 66 USPQ 232, 236
(CCPA 1945). Plaintiff’s discovery responses are not oral
testimony, and the conclusory statements in its responses, even
if we considered them, would not meet this standard.
Opposition No. 91164315
Cancellation No. 92044189
10
was filed on September 20, 1995. Plaintiff’s first
registration (No. 1,179,613) is based on an application
filed on February 19, 1980. Plaintiff’s second registration
(No. 2,724,229) is based on an application filed April 30,
2002. Clearly, plaintiff has priority because of its ‘613
registration that was based on an application filed on
February 19, 1980, while the priority date of defendant’s
registration is September 20, 1995.
Thus, we will consider both of plaintiff’s
registrations when addressing defendant’s application and
plaintiff’s first registration when addressing defendant’s
registration. However, as our discussion of defendant’s
application indicates, the outcome would not be different
even if we considered both registrations in assessing the
likelihood of confusion issue involving defendant’s
registration.
Discussion
There are two questions that we must resolve in this
case. The broader question concerns the likelihood of
confusion between plaintiff’s and defendant’s marks when
used on the identified goods and services. The narrower
question concerns whether defendant has abandoned its
registration (No. 2,319,632) through non-use. We will
address the latter issue first.

Opposition No. 91164315
Cancellation No. 92044189
11
Abandonment
Plaintiff argues that it “requested that Applicant
admit that it has not used the mark in the form depicted in
Reg. No. 2319632 during the years 2005, 2004, and 2003.
Applicant did not deny these Requests for Admission.
Instead, Applicant presented its legal position and
attempted to avert the legal effect of the non-use by
denying that ‘it has abandoned use of the mark as
registered.’” Brief at 14 (citation to record omitted).
Defendant responds by arguing that plaintiff’s “entire
claim of abandonment is built upon the following statement
of Applicant: ‘Applicant denies that it has abandoned use
of the mark as registered. Applicant has made continuous
use of the mark substantially in the form depicted in the
registration….’ There is no reasonable way in which
Applicant’s statement can be interpreted as such an
admission.” Brief at 23.
In response, plaintiff maintains (Reply Brief at 7)
that:
Applicant argues that it did not admit that it had
abandoned its mark. However, Opposer has not claimed
that Applicant made an admission of the legal
conclusion of abandonment. The connection between the
admitted fact of “non-use” and the legal conclusion of
“abandonment” comes from the Trademark Act …
Therefore, based on the admission of non-use, Opposer
has established a prima facie case of abandonment.

Plaintiff points out that, in its response to an
earlier request for admission, defendant had simply denied
Opposition No. 91164315
Cancellation No. 92044189
12
that the mark had not been used during 2001. Brief at 14
n.6. But for the years 2003-2005, defendant asserted that
it had not abandoned its mark and that it “has made
continuous use of the mark substantially in the form
depicted” in the registration.
We agree with plaintiff that as the party seeking
cancellation, it must rebut the presumption of a
registration’s validity by a preponderance of the evidence.
West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d
1122, 31 USPQ2d 1660, 1662 (Fed. Cir. 1994); Cerveceria
Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); Martahus v.
Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846,
1850 (Fed. Cir. 1993). The “challenger’s burden of proof in
both opposition and cancellation proceedings is a
preponderance of the evidence.” Eastman Kodak Co. v. Bell &
Howell Document Management Products Co., 994 F.2d 1569, 26
USPQ2d 1912, 1918 (Fed. Cir. 1993).
However, defendant’s answer to plaintiff’s request for
admission by itself does not make out a prima facie case of
abandonment. Even if we read the admission broadly, it at
best suggests that there might have been some change in
defendant’s mark. In and of itself, that does not mean that
defendant’s use of the mark has been discontinued. “A mark
can be modified or changed without abandonment or loss of
Opposition No. 91164315
Cancellation No. 92044189
13
priority if done in such a way that the continuing common
element of the mark retains its impact and symbolizes a
continuing commercial impression.” McCarthy on Trademarks
and Unfair Competition (4th ed. June 2007) § 17.26. See
also Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F.2d
1156, 17 USPQ2d 1866, 1869 (Fed. Cir. 1991) (Our “inquiry
must focus on both marks in their entirety to determine
whether each conveys the same commercial impression”).
Inasmuch as there is no other evidence on any differences in
the marks or that otherwise supports plaintiff’s argument
that defendant has abandoned its mark, we deny plaintiff’s
petition to cancel on the ground of abandonment.
Likelihood of Confusion
The remaining question concerns whether there is a
likelihood of confusion. In likelihood of confusion cases,
we analyze the facts as they relate to the relevant factors
set out in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
We will begin by comparing the goods and services in
the application and the registrations to determine if they
are related. Defendant’s goods in both the application and
registration are simply identified as “cheese.” Plaintiff’s
Opposition No. 91164315
Cancellation No. 92044189
14
goods and services are identified as restaurant and bar
services as well as beer, ale, t-shirts, sweatshirts,
jackets, and hats.
The first issue we must consider is whether restaurant
and bar services are related to cheese. In cases involving
restaurant services, the Court of Customs and Patent Appeals
has held that: “To establish likelihood of confusion a
party must show something more than that similar or even
identical marks are used for food products and for
restaurant services.” Jacobs v. Int’l Multifoods Corp.,
668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982) (emphasis
added). The Federal Circuit has emphasized that restaurant
services and beer are not related simply because there is
evidence that restaurants also sell private label beer. In
re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063
(Fed. Cir. 2003) (“While the evidence produced by the
examining attorney shows that some restaurants brew or serve
their own private label beer, that evidence does not support
the Board's conclusion that consumers are likely to conclude
that beer and restaurant services with similar marks
emanate from the same source”). The only evidence that
might demonstrate a relationship between cheese and
restaurant services consists of the wording in the marks
themselves (i.e., “Irish Cheese” and “Public Bar”) and
third-party registrations, each showing that a single entity
Opposition No. 91164315
Cancellation No. 92044189
15
uses a common mark for cheese and restaurant services. In
Coors Brewing, the Federal Circuit did not find that the
third-party registrations were sufficient to support a
conclusion that beer and restaurant services are related.
It is not unusual for restaurants to be identified with
particular food or beverage items that are produced by
the same entity that provides the restaurant services
or are sold by the same entity under a private label.
Thus, for example, some restaurants sell their own
private label ice cream, while others sell their own
private label coffee. But that does not mean that any
time a brand of ice cream or coffee has a trademark
that is similar to the registered trademark of some
restaurant, consumers are likely to assume that the
coffee or ice cream is associated with that restaurant.

Id. at 1064.
The Court has cautioned against setting the Jacobs
requirement for “something more” too low. “[I]n light of
the very large number of restaurants in this country and the
great variety in the names associated with those
restaurants, the potential consequences of adopting such a
principle would be to limit dramatically the number of marks
that could be used by producers of foods and beverages.”
Id. at 1064. Here, plaintiff’s submitted third-party
registrations, which often include a wide variety of food
items, would result in almost all food items being related
to restaurant services and thus virtually overrule the
Jacobs requirement.
Also, the wording “Public Bar” and the design that
could be considered a pub is simply not enough to provide
Opposition No. 91164315
Cancellation No. 92044189
16
the “something more” to show that the cheese and restaurant
services are related. We must consider the marks that
defendant has actually applied to register. In the marks,
the words “Public Bar” are very small and difficult to read.
It is unlikely that purchasers will study the mark so
closely that these words in small type and the rather
nondescript drawing of a building will cause consumers to
suddenly believe that cheese and restaurant and bar services
are related. Considering defendant’s marks as a whole, the
words “Public Bar” appear to invoke an Irish street scene,
rather than to indicate an association between defendant’s
goods and plaintiff’s restaurant and bar services.
Therefore, we conclude that plaintiff has failed to show
that restaurant and bar services and cheese are related.
Regarding plaintiff’s clothing and beer and ale, it has
attempted to show that these goods are related to
defendant’s cheese by also submitting copies of trademark
registrations.4 Concerning the relationship between cheese

4 We have not considered those examples that involve expired
registrations, pending or abandoned applications, or additional
marks from the same entity. Action Temporary Services Inc. v.
Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir.
1989) (“[A] canceled registration does not provide constructive
notice of anything”) and In re Phillips-Van Heusen Corp., 63
USPQ2d 1047, 1049 n.4 (TTAB 2002) (“While applicant also
submitted a copy of a third-party application …, such has no
probative value other than as evidence that the application was
filed”). Furthermore, we give less weight to those registrations
that are based on registrations that include a wide variety of
goods and services. In re Mucky Duck Mustard Co., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988).

Opposition No. 91164315
Cancellation No. 92044189
17
and beer, plaintiff specifically points to three
registrations. Brief at 9. Two of the registrations (the
third registration is expired) include a common mark that is
registered for goods that include beer and cheese. The
first registration (No. 2,516,284) is for the mark CHIMAY
PERES TRAPPIST and design, which is translated “Trappist
Monks” and the owner is identified as Abbaye de Scourmont.
The second (No. 2,823,640) is owned by a Swedish company,
although it alleges use in the United States, and it
includes a wide variety of food items including frozen
sandwiches with reindeer meat, non-medicated lozenges, and
tapioca. While the registrations may suggest that beer and
cheese are related, this minimal evidence does not persuade
us that consumers are likely to believe that these common,
yet very different, items would come from a common source.
Regarding cheese and clothing items, plaintiff has
submitted several registrations that show that these goods
are at least associated in some way. See, e.g..
Registration Nos. 2,274,822 (YOU’LL LOVE IT, WE SWEAR for,
inter alia, cheese, horseradish and cocktail sauce, T-
Shirts, and aprons); 2,320,404 (BLASER’S PREMIUM CHEESE for,
inter alia, cheese, T-Shirts, hats, aprons, ceramic plates,
and ceramic figurines); 1,994,942 (FOX’S for, inter alia,
cheese, processed mushrooms, hats, caps, aprons, T-shirts,
pizza dough, and hoagie sandwiches); and 1,559,965 (TREE OF
Opposition No. 91164315
Cancellation No. 92044189
18
LIFE for, inter alia, T-shirts, aprons, cheese, raisins,
honey, and fruit and vegetable juices). We find that this
evidence provides a stronger suggestion that cheese and T-
shirts are related. In re Infinity Broadcasting Corp. of
Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001).
The next question we must address is whether the marks
of the parties, in their entireties, are similar in sound,
appearance, meaning, and commercial impression. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
We take judicial notice of the fact that “Dublin” is the
“capital and largest city of Ireland” and that the suffix
“-er” designates a “person who is born in or lives in a
place.” The American Heritage Student Dictionary (1998).5
As such, the term DUBLINER refers to the city of Dublin in
Ireland and its inhabitants. We note that defendant is an
Irish corporation and that it has disclaimed the term “Irish
cheese” in its marks. Also, plaintiff’s ‘613 registration
contains the disclaimed terms “Irish pub.” Thus, the
commercial impression of both parties’ marks suggest that
the goods or services are associated with Ireland and that

5 We take judicial notice of these definitions. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983). We decline plaintiff’s request that we take judicial
notice that “pubs and restaurants serve cheese.” Brief at 8.
This fact should have been established during the trial.
Opposition No. 91164315
Cancellation No. 92044189
19
the term DUBLINER, which refers to the largest and capital
city of Ireland, is not an arbitrary or fanciful term when
used with the identified goods and services. It is very
suggestive of Irish cheese or an Irish-style pub, beer, or
ale. It certainly is not arbitrary when used on a shirt in
a manner that may suggest that the shirt or the wearer of
the shirt is either from Ireland or has some affinity with
Dublin, Ireland. See, e.g., In re MBNA America Bank N.A.,
340 F.3d 1328, 67 USPQ2d 1778, 1781 (Fed. Cir. 2003) (“The
words MONTANA SERIES and PHILADELPHIA CARD are displayed
prominently on MBNA's promotional materials. The appeal to
regional pride and loyalties is a significant feature of
MBNA's method of promoting and marketing these affinity
credit cards as well as of the services themselves”).
Defendant has submitted evidence that the term
“Dubliner” is often used in publications to refer to Irish
style food or restaurants.
Logan, formerly of St. Paul, was born in London. His
parents were Irish and raised him in Dublin… A
reception will follow at the Dubliner, 2162 University
Av., St. Paul.
Star Tribune (Minneapolis, MN), October 27, 1996.

The Auld Dubliner Irish Pub at the Pike at Rainbow
Harbor, could be open in time for the race.
Long Beach Press Telegram (Long Beach, CA) April 17,
2004.

The Dubliner was named as a toast to the owners, both
former residents of the Irish capital who have settled
in Texas… The pub attracts expatriates from Ireland,
Scotland and England.
Dallas Morning News, March 17, 2006.
Opposition No. 91164315
Cancellation No. 92044189
20

Pub Fare – A guide to Irish bars in the Lowell Area…
The Dubliner
Lowell Sun, March 16, 2006.

In this plate titled the Dubliner, the shrimp turn up
quite tasty and the steak flavorful, though chewy in
spots.
The Daily News of Los Angeles, November 15, 2002.

McGurk’s, Soulard’s proudly Irish pub and saloon… The
only weak spot I found among the main dishes was the
“Dubliner,” an open-faced sandwich of shaved roast
beef, sautéed onions and mushrooms, and Murphy’s amber
barbecue sauce.
Riverfront Times (Missouri), November 13, 2002.

The Dubliner is a working-class Irish pub for the ages.
Star News (Wilmington, NC), September 1, 2005.

Pete McCarthy’s the Dubliner … Lively South Side bar
with a Dublin theme where young crowds gather to drink,
talk and play darts.
Chicago Tribune, March 17, 1989.

Based on the evidence that it is not unusual for the
term Dubliner to be associated with restaurants, bars, and
food in publications, we determine that the term DUBLINER is
not a strong mark, as plaintiff argues (Brief at 11).
Instead the evidence suggests that it is a relatively weak,
highly suggestive mark. Thus, while the marks are similar
inasmuch as they both contain the same suggestive term
“Dubliner,” defendant adds a design and other words that
ensure that the marks, even if we considered plaintiff’s
standard character mark, are not identical. Therefore, we
conclude that the marks are only somewhat similar.
While “it must be presumed that both the application
and the registrations encompass all goods of the type
Opposition No. 91164315
Cancellation No. 92044189
21
described,” this does not mean, as plaintiff argues, that
the “channels of trade certainly overlap.” Plaintiff’s
Brief at 10. These channels of trade would include the sale
of cheese and beer and clothing items in certain large
retail stores but this does not mean that these channels of
trade are closely related. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)("A wide variety of products, not only from different
manufacturers within an industry but also from diverse
industries, have been brought together in the modern
supermarket for the convenience of the consumer. The mere
existence of such an environment should not foreclose
further inquiry into the likelihood of confusion arising
from the use of similar marks on any goods so displayed”).
See also Irwin Auger Bit Co. v. Irwin Corp., 134 USPQ 37, 39
(TTAB 1962):
It is common knowledge that there are sold in many
hardware, grocery, variety and drug stores an almost
unlimited variety of goods including tools, housewares,
electrical appliances, seed, fertilizer, furniture and
toys. The public being well aware of the diversity of
goods to be found in such stores is not going to
believe that all of those goods could originate with a
single source.

When we consider the other factors such as the channels
of trade and the prospective purchasers, we find that they
do not strongly support a likelihood of confusion. Accord
University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) (No
Opposition No. 91164315
Cancellation No. 92044189
22
likelihood of confusion for cheese and college educational
services). We do find that the purchasers of the subject
goods and services are likely to overlap to some degree and
that the purchasers would be ordinary purchasers who may not
necessarily be sophisticated or careful purchasers. In re
Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001)(“There is no
evidence in the record from which we might conclude that
wine and restaurant services, in general, are necessarily
expensive, or that purchasers thereof are necessarily
sophisticated and careful in making their purchasing
decisions”). However, this overlap in consumers would only
be the result of the fact that the purchasers would simply
be ordinary consumers who would purchase common consumer
items and services. As Jacobs and Coors Brewing make clear,
the fact that consumers may patronize restaurants and buy
consumer items does not strongly support an argument that
there is a likelihood of confusion.
In this case, the common term in the marks is the term
“Dubliner,” which is highly suggestive of goods and
restaurant services that either originate in Ireland or have
an Irish theme. The marks are not identical and most of the
goods and services have not been shown to be related. To
the extent that there is some relationship between such
items as cheese and T-shirts, we do not think that it is
likely that more than a de minimis number of purchasers
Opposition No. 91164315
Cancellation No. 92044189
23
would see the word DUBLINER on a T-shirt and assume that
there is an association with a cheese that is identified as
DUBLINER IRISH CHEESE PUBLIC BAR and design. Certainly,
plaintiff has presented no evidence that would permit us to
reach that conclusion. Therefore, we hold that there is no
likelihood of confusion in this case.
Decision: The opposition is dismissed and the petition
to cancel is denied.