IP Law Daily, TOP STORY—Fed. Cir.: Barclays Capital did not abandon LEHMAN BROTHERS mark, (Jun 1, 2022)

By Brian Craig, J.D.

The LEHMAN BROTHERS mark has been used continuously in the course of winding up the affairs of at least one Lehman Brothers affiliated company.

In a case involving competing applications to register the mark LEHMAN BROTHERS, the U.S. Court of Appeals for the Federal Circuit has affirmed a decision by the Trademark Trial and Appeal Board sustaining Barclay Capital’s opposition to registration of the LEHMAN BROTHERS mark for beer, spirits, and bar and restaurant services. The Federal Circuit agreed with the Board that Barclays Capital had not abandoned the LEHMAN BROTHERS mark based on continuous use of the mark in the course of winding up the affairs of at least one Lehman Brothers affiliated company and Barclays’ limited use of the mark. The Federal Circuit also agreed with the Board that a likelihood of confusion would result from an applicant’s registration of LEHMAN BROTHERS for alcohol and dining services (Tiger Lily Ventures Ltd. v. Barclays Capital Inc., June 1, 2022, Lourie, A.).

Tiger Lily Ventures Ltd. (“Tiger Lily”) filed two intent-to-use applications to register the mark LEHMAN BROTHERS (BROTHERS disclaimed) in standard characters, one for “Bar services; Restaurant services,” and the other for “Spirits” and “Beer.” Barclays Capital Inc. (“Barclays”) filed an intent-to-use application to register LEHMAN BROTHERS in standard characters for securities brokerage and various investment and financial services. Tiger Lily and Barclays opposed each other’s applications. The Board consolidated the opposition proceedings. In September 2017, the Board addressed pre-trial rules in the opposition proceeding. In September 2020, the Board sustained two oppositions that Barclays had filed against Tiger Lily’s applications for registration of the standard character mark LEHMAN BROTHERS. Tiger Lily appealed the Board’s decision.

Abandonment. The Federal Circuit first concluded that Barclays had not abandoned the LEHMAN BROTHERS mark. There are two elements to a claim for abandonment: (1) nonuse; and (2) intent not to resume use. As to the nonuse element, even limited use can be sufficient to avoid a finding that use of a mark has been discontinued. Substantial evidence supported the Board’s conclusion that there had been no abandonment of the LEHMAN BROTHERS mark.

The decisive factor was Tiger Lily’s apparent acknowledgment that the LEHMAN BROTHERS mark has been used continuously in the course of winding up the affairs of at least one Lehman Brothers affiliated company. Tiger Lily attempted to focus on the fact that the bankruptcy proceedings will eventually end and that Lehman Brothers is involved in the type of bankruptcy from which it will not emerge as a continuing enterprise. But the Federal Circuit observed that the bankruptcy proceedings are still ongoing. Evidence relating to the second element, post-bankruptcy use, was thus irrelevant. Barclays itself has continued to use the LEHMAN BROTHERS mark. Barclays’ continued use of the mark, even if limited, was sufficient to avoid a finding that the mark hds been abandoned. Therefore, the Federal Circuit found no abandonment of the LEHMAN BROTHERS mark.

Likelihood of confusion. The Federal Circuit also agreed with the Board’s conclusion that there was a likelihood of confusion with Tiger Lily’s mark. The marks are identical which weighed heavily in favor of a likelihood of confusion. Lehman Brothers used its LEHMAN BROTHERS mark in connection with products that are related to whisky and alcoholic beverages. Because the LEHMAN BROTHERS mark had achieved a high degree of fame, it was afforded a broad scope of protection. The Federal Circuit agreed with Barclays that Tiger Lily placed undue emphasis on a supposed lack of actual confusion. Tiger Lily only offered a declaration from a single witness to support evidence of actual confusion with vague and unsupported statements. Substantial evidence in the record supported the Board’s finding of likelihood of confusion based on the relevant factors.

Bona fide intent. Next, the Federal Circuit concluded that substantial evidence supported the Board’s finding that Barclay’s had a bona fide intent to use the LEHMAN BROTHERS mark. An applicant seeking to register a mark on an intent to use basis must have a bona fide intent to use the mark in commerce at the time of filing, measured by an objective standard. The Board considers whether an applicant had a bona fide intent to use the mark in commerce based on objective evidence of intent, on a case-by-case basis considering the totality of the circumstances. Here, the evidence demonstrates that Lehman Brothers and Barclays have continued to use the LEHMAN BROTHERS mark since 2008. And it was not disputed that Barclays currently offers, and has the capacity to continue to offer, the goods and services identified in its application for registration, nor was it disputed that those were precisely the types of goods and services with which the LEHMAN BROTHERS mark has been associated in the past. Under the totality of the circumstances, the Board’s finding that Tiger Lily failed to show a lack of bona fide intent by Barclays to use the LEHMAN BROTHERS mark commercially was supported by substantial evidence.

Evidentiary rulings. The Federal Circuit found no abuse of discretion with the Board’s evidentiary rulings. The Federal Circuit rejected Tiger Lily’s vague assertions that the testimony was based on hearsay, speculation, and wishful thinking, and that privilege was improperly asserted. Tiger Lily offered no basis for concluding that the Board abused its discretion.

Therefore, the Federal Circuit affirmed the Board’s decision to sustain Barclay Capital’s opposition to Tiger Lily’s application to register the LEHMAN BROTHERS mark for beer, spirits, and bar and restaurant services sought by Tiger Lily. The court also affirmed the Board’s dismissal of Tiger Lily’s opposition to Barclay’s application.

The Case is No 21-1107.

Attorneys: Robert Garson (Garson Segal Steinmetz Fladgate LLP) for Tiger Lily Ventures Ltd. Eric J. Shimanoff (Cowan, Liebowitz & Latman, PC) for Barclays Capital Inc.

Companies: Tiger Lily Ventures Ltd.; Barclays Capital Inc.

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