Saturday, June 11, 2022

Tiger Lily Ventures loses trademark appeal at CAFC

Some background

Until 2008, Lehman Brothers1 was one of the largest investment banks in the United States, with hundreds of billions of dollars in assets under management and more than 25,000 employees in offices worldwide. Lehman Brothers owned trademark rights in connection with its name, including a number of federal trademark registrations for the standard character mark LEHMAN BROTHERS. Immediately after Lehman Brothers filed for bankruptcy in 2008, it sold several of its businesses and other assets to Barclays for approximately $1.5 billion. As part of that sale, Lehman Brothers assigned to Barclays all of its LEHMAN BROTHERS trademarks and accompanying goodwill. Shortly thereafter, Barclays granted Lehman Brothers a worldwide, non-exclusive license to use the LEHMAN BROTHERS trademarks in connection with Lehman Brothers’ retained and continuing businesses and operations. The term of the license was two years for use in connection with Lehman Brothers’ investment banking and capital markets businesses and perpetual for use in connection with other Lehman Brothers businesses and operations. Over the years that followed, however, Barclays allowed all of its acquired LEHMAN BROTHERS trademark registrations to expire. On March 6, 2013, Tiger Lily, a company with no corporate affiliation to Lehman Brothers or Barclays, filed Application No. 85/868,892 for registration of the standard character mark LEHMAN BROTHERS for beer and spirits. A few months later, on October 2, 2013, Barclays filed Application No. 86/081,143 to register the standard character mark LEHMAN BROTHERS for use in connection with various financial services. And not long after that, on June 2, 2014, Tiger Lily filed Application No. 86/298,069 for registration of the same standard character LEHMAN BROTHERS mark for bar services and restaurant services.


In view of its findings, the Board sustained Barclays’ oppositions on the grounds of likelihood of confusion but dismissed Barclays’ oppositions on the grounds of false suggestion of a connection, dilution, and lack of bona fide intent. Id. And the Board dismissed Tiger Lily’s opposition in its entirety. Id. Tiger Lily appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B).


Tiger Lily attempts 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. See, e.g., Oral Arg. at 3:39–4:22. But we are unpersuaded that these facts are material to the issue at hand. Regardless whether Lehman Brothers will cease to exist after the bankruptcy concludes, it is not disputed that the bankruptcy has not yet concluded, and the record lacks clear evidence as to when any such conclusion is expected. Thus, any evidence about Lehman Brothers’ intentions after the conclusion of the bankruptcy proceedings relates only to the second element of Tiger Lily’s abandonment claim—i.e., whether Barclays intends not to resume use of the LEHMAN BROTHERS mark. As discussed above, Tiger Lily has failed to show that use of the mark has yet been discontinued, and indeed Tiger Lily appears to concede that it has not. Evidence relating to the second element, post-bankruptcy use, is thus irrelevant. Additionally, separate from Lehman Brothers’ use of the mark, the evidence shows that Barclays itself has continued to use the LEHMAN BROTHERS mark.

(...) Of interest

Turning to Tiger Lily’s arguments concerning the similarity of the goods and services, Tiger Lily emphasizes abstract distinctions between whisky on the one hand and financial services on the other. For example, Tiger Lily asserts that the consuming public would not assume that the Lehman Brothers company began “selling whisky commercially or open[ed] up a bar or a restaurant,” see Appellant Br. at 30. But that assertion, while likely true, is also irrelevant; the relevant inquiry considers “if the respective products are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369 (Fed. Cir. 2012) (quoting 7-Eleven, Inc. v. Wechsler, 83 U.S.P.Q.2d 1715, 1724 (T.T.A.B. 2007).3 In short, Tiger Lily’s arguments ignore the context-specific realities of the consumer markets in which the parties’ goods and services are offered. Barclays is correct that in modern consumer markets commercial trademarks are often licensed for use on products that may differ from the original source of the trademark. See, e.g., L.C. Licensing Inc. v. Berman, 86 U.S.P.Q.2d 1883, 1889 (T.T.A.B. 2008) (“It is common knowledge, and a fact of which we can take judicial notice, that the licensing of commercial trademarks on ‘collateral products’ has become a part of everyday life.”). In this regard, the Board relied on Barclays’ extensive evidence showing examples of companies that have promoted financial services through use of their trademarks in connection with alcohol, food, and beverages. See, e.g., Board Decision, slip op. at 43–46 n.68. And the evidence demonstrates that, in marketing its own banking products and services, Lehman Brothers used its LEHMAN BROTHERS mark in connection with products that are related to whisky and alcoholic beverages. See, e.g., J.A. 17664 (Lehman Brothers Whisky Decanter), J.A. 17696 (Lehman Brothers Beverage Cooler). As a legal principle, because the LEHMAN BROTHERS mark has achieved a high degree of fame, it is afforded a broad scope of protection. See Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002); see also Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 353 (Fed. Cir. 1992) (“[A] mark with extensive public recognition and renown deserves and receives more legal protection than an obscure or weak mark.”). Our precedent makes clear that a famous mark “casts a long shadow which competitors must avoid.” Kenner Parker Toys, 963 F.2d at 353 (citing Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 889 F.2d 1070, 1074 (Fed. Cir. 1989)). In this case, it may very well be true that Tiger Lily is not actively “confusing” consumers into believing that Lehman Brothers or Barclays is selling whisky. See, e.g., Oral Arg. 9:12– 9:20 (Tiger Lily arguing that there is no “deception” and that there are no “consumers that stand to be confused”). But the evidence shows that, by referencing the Lehman Brothers history in its marketing materials and by copying Lehman Brothers’ logo, Tiger Lily is seeking to take advantage of the widespread consumer recognition of Barclays’ LEHMAN BROTHERS mark. Tiger Lily attempts to draw a distinction between “consumer recognition” as compared with “goodwill,” and argues that it is actually trying to trade on the “bad will” associated with the LEHMAN BROTHERS mark. See Oral Arg. at 9:54–9:59; 11:01– 11:15. But we find no legal support for these subtle distinctions, and we thus find that Tiger Lily’s attempts to capitalize on the fame of the LEHMAN BROTHERS mark weighs in favor of finding a likelihood of confusion. We also agree with Barclays that Tiger Lily is placing undue emphasis on a supposed lack of actual confusion. Tiger Lily’s evidence on this point appears to consist of two vague unsupported paragraphs in a declaration from a single witness who generally asserted that the whisky has been selling since early 2016 in the United Kingdom and the United States without providing details to demonstrate the scope of the sales activity. See J.A. 25580. The mere fact that Tiger Lily’s whisky customers have not affirmatively said that they are confused by “ask[ing] for a banking product or service” or “indicat[ing] that they felt deceived,” see id., does not prove that customers have not in fact been confused about whether the whisky is affiliated with Lehman Brothers; the “absence of evidence is not always evidence of absence.” See, e.g., Int’l Ass’n of Machinists & Aero. Workers, Local Lodge 964 v. BF Goodrich Aero. Aerostructures Grp., 387 F.3d 1046, 1055 (9th Cir. 2004).

note also Supreme Court Passes on Tiger Trademark Dispute link and


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