I would venture to say that a majority of the population has heard of the former Lehman Brothers investment banking firm. The firm was one of the largest financial institutions in the U.S. and filed for bankruptcy back in 2008. The LEHMAN BROTHERS trademark was well-known and associated with investment banking services and securities brokerage services. The mark is still being used in connection with the winding down of the corporation in the bankruptcy proceedings. Barclays Capital Inc. (“Barclays”) bought assets, including the LEHMAN BROTHERS trademarks, in 2008 after the bankruptcy filing. They subsequently allowed the federal registrations to expire.

History of LEHMAN BROTHERS marks

In March 2013, Tiger Lily Ventures, Ltd. (“Tiger Lily”) filed an intent to use trademark application for LEHMAN BROTHERS for beer in class 32 and spirits in class 33. Additionally, in June 2014, Tiger Lily filed another intent to use application for bar and restaurant services in class 43. Barclays filed an intent to use application for LEHMAN BROTHERS for various investment banking and securities services in class 36 in October 2013.

In November 2014, Barclays instituted opposition proceedings before the Trademark Trial and Appeal Board (TTAB) against both of Tiger Lily’s marks. The opposition proceeding based on its common law rights and cited a likelihood of confusion. Tiger Lily subsequently filed its own opposition against Barclays application for LEHMAN BROTHERS. Tiger Lily alleged grounds of likelihood of confusion and abandonment, among others. All of the opposition proceedings consolidated into a single case.

Abandonment of original LEHMAN BROTHERS mark

In order to show abandonment of a trademark, one must show nonuse of the mark as well as an intent not to resume use. Here, the mere fact that Barclays failed to renew the trademark registrations is not enough to establish abandonment. Barclays still enjoys continuing common law rights in the marks.

The TTAB found that Barclays itself made minimal use of the LEHMAN BROTHERS mark. However, Barclays issued licenses to others to use the LEHMAN BROTHERS mark. The use by a licensee leans in favor of not abandoning the mark. Further, the previous owners of the mark enjoyed a well-known reputation established in the mark. This reputation resulted in a sufficient amount of residual goodwill . As a result, Barclay’s actions have not caused the mark to lose significance as an indication of origin. Accordingly, the TTAB found Barclays did not abandon the mark and dismissed Tiger Lily’s opposition on this ground.

Likelihood of Confusion

With regard to likelihood of confusion, the marks are identical in sound, appearance, and meaning. The goods offered are distinctly different. Tiger Lily intends to offer beer, spirits and bar/restaurant services. Barclays intends to offer investment banking and securities brokerage services. These goods and services are similar to those offered under the original LEHMAN BROTHERS mark.

Barclays submitted evidence that it is common for owners of well-known marks to expand their product lines into a diverse set of goods. Dong so, allows them to capitalize on the renown of their brand. Barclays offered several examples of various promotional items, such as wine gift sets and whiskey decanters, previously offered displaying the LEHMAN BROTHERS mark. They also offered evidence of other well-known third-party marks registered and used for financial services and related services that are also used for food, alcoholic beverage, and bar/restaurant services. Barclays also presented evidence of the well-known nature of the Lehman Brothers mark. Notably, Tiger Lily admitted it wanted to draw a connection between its goods and services and the financial and investment business covered by the LEHMAN BROTHERS mark.

The TTAB found Barclays could reasonably expand their product line to include the goods and services offered by Tiger Lily. Accordingly, the TTAB found a likelihood of confusion between the marks and sustained Barclays opposition on this ground. Since Tiger Lily was unable to establish priority over the Barclay filing, the TTAB dismissed Tiger Lily’s opposition on this ground.

Conclusion

In conclusion, the TTAB upheld Barclay’s opposition against Tiger Lily for a likelihood of confusion. They dismissed the opposition against Barclays by Tiger Lily. Accordingly, Tiger Lily will either have to appeal the decision to the Federal Circuit or abandon its applications.

Takeaways

This case exemplifies that the difficulty in proving abandonment of a trademark. Even minimal use of a mark can be enough to refute a claim of abandonment. This use does not have to be by the trademark owner itself, but rather can be by licensees of the mark. It is also significant that a mark is abandoned only when all trademark significance is gone. Here, the LEHMAN BROTHERS mark enjoyed sufficient residual goodwill even after the bankruptcy of the parent company thus further refuting a claim of abandonment.

The case also illustrates goods and services do not need to be identical or competitive in nature to support a likelihood of confusion. While the goods in this case are markedly different, a likelihood of confusion was found. Evidence produced by Barclays showing well-known marks expanding their product lines into the goods and services offered by Tiger Lily supported a finding of a likelihood of confusion as to the source of the goods.

Michele Lawson

Michele Lawson is a U.S. Registered Patent Attorney.