Law & Practice


Published: August 2, 2022

Bob Felber Jr

Bob Felber Jr Waller Lansden Dortch & Davis, LLP Nashville, Tennessee, USA INTA Bulletins—North America Subcommittee


Tim Lockhart

Tim Lockhart Willcox & Savage P.C. Norfolk, Virginia, USA INTA Bulletins—North America Subcommittee

The U.S. Court of Appeals for the Federal Circuit has affirmed the decision of the Trademark Trial and Appeal Board (TTAB) sustaining the opposition of Barclays Capital Inc. (Barclays) to the applications of Tiger Lily Ventures Ltd. (Tiger Lily) to register the mark LEHMAN BROTHERS for beer and spirits, and bar and restaurant services. Tiger Lily Ventures Ltd. v. Barclays Capital Inc., Barclays PLC, No. 2021-1107, 2021-1228 (Fed. Cir. June 1, 2022).

Barclays purchased Lehman Brothers’ (Lehman’s) assets, including the LEHMAN BROTHERS trademarks and accompanying goodwill, after Lehman filed for bankruptcy in 2008. Barclays licensed the mark back to Lehman for use in certain operations and made limited use of the mark itself but allowed the registrations for LEHMAN BROTHERS to lapse.

Tiger Lily applied to register LEHMAN BROTHERS first for beer and spirits, and then for bar and restaurant services. Barclays opposed Tiger Lily’s applications and the TTAB sustained the oppositions.

Tiger Lily appealed, arguing that Barclays had abandoned the LEHMAN BROTHERS mark by allowing the registrations to expire and by making only limited use of the mark. Tiger Lily also argued that the goods and services in its applications are so different from the financial services provided by Barclays and its licensee that confusion was unlikely.

While acknowledging that Barclays’ use had not been extensive, the court found that substantial evidence supported the TTAB’s determination that Barclays and Lehman’s continued use of the mark for financial services sufficed to avoid abandonment. Consequently, Barclays maintained common law rights and priority in the mark.

The court stated the fact that the parties’ marks are identical weighs heavily in a likelihood-of-confusion analysis. Barclays introduced evidence that Lehman had used the LEHMAN BROTHERS mark in connection with products that were related to whiskey and other alcoholic beverages. Because LEHMAN BROTHERS had acquired a high degree of fame, the court afforded it a broad scope of protection. Evidence indicating that Tiger Lily had intended to capitalize on the fame of the LEHMAN BROTHERS mark also weighed in favor of finding a likelihood of confusion.

The court dismissed Tiger Lily’s counterclaims challenging Barclays’ own, later-filed application to register the LEHMAN BROTHERS mark for financial services, alleging a lack of bona fide intent, likelihood of confusion, and fraud because Barclays had continuously used the mark since 2008 and had the capacity to provide financial services.

Thus, the court affirmed the TTAB decision.

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