TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC.

Before Lourie, Bryson, and Prost. Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board.

Summary: A trademark associated with a bankrupt company was not abandoned when the trademark continued to be used during bankruptcy and was the subject of active licenses.

After Lehman Brothers filed for bankruptcy in 2008, Barclays Capital acquired the LEHMAN BROTHERS mark and licensed it back to Lehman Brothers. Subsequently, Barclays allowed all of its acquired LEHMAN BROTHERS trademark registrations to expire. In 2013, Tiger Lily applied to register the mark LEHMAN BROTHERS for beer and spirits. Barclays then filed an application to register the mark LEHMAN BROTHERS for various financial services, and an opposition to Tiger Lily’s applications. Tiger Lily responded by opposing Barclays’ application. The Trademark Trial and Appeal Board (“Board”) found that Barclays had not abandoned its rights to the mark, and had priority of use. Tiger Lily appealed.

On appeal, Tiger Lily challenged the Board’s findings on abandonment, among other issues. The Federal Circuit rejected this challenge, noting Tiger Lily’s admission that Lehman Brothers had continued to use the mark under license from Barclays in the course of winding up its affairs, and that such use was “similar in nature to the context in which Lehman Brothers used the mark for decades.” Regarding the similarity of goods and services, the Federal Circuit found that the use of trademarks on products that differ from the original source of the trademark is common in modern consumer markets. The court pointed to evidence showing that Lehman brothers, in marketing its own banking products and services, had used its LEHMAN BROTHERS mark for promotional products related to whisky and alcoholic beverages. The Federal Circuit rejected Tiger Lily’s admitted attempt to benefit from the fame of Barclays’ LEHMAN BROTHERS mark, and affirmed the TTAB’s judgment in favor of Barclays.

Editor: Paul Stewart

Written by: Makoto Tsunozaki, Ph.D. & Jeremy Anapol