Tiger Lily Ventures Ltd. v. Barclays Capital Inc.

• Decision Date: 01 June 2022
• Docket Number: 2021-1107, 2021-1228
• Citation: 35 F.4th 1352
• Parties: TIGER LILY VENTURES LTD., Appellant v. BARCLAYS CAPITAL INC., Barclays PLC, Cross-Appellants
• Court: U.S. Court of Appeals — Federal Circuit

35 F.4th 1352

TIGER LILY VENTURES LTD., Appellant

v.BARCLAYS CAPITAL INC., Barclays PLC, Cross-Appellants

2021-1107, 2021-1228

United States Court of Appeals, Federal Circuit.

Decided: June 1, 2022

Robert Garson, Garson Segal Steinmetz Fladgate LLP, New York, NY, argued for appellant. Also represented by Kevin Kehrli, John R. Lane.

Eric J. Shimanoff, Cowan, Liebowitz & Latman, PC, New York, NY, argued for cross-appellants.

Before Lourie, Bryson, and Prost, Circuit Judges.

Lourie, Circuit Judge.

Tiger Lily Ventures Ltd. ("Tiger Lily") appeals from the decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board ("the Board") sustaining two oppositions that Barclays Capital Inc. ("Barclays") had filed against Tiger Lily's applications for registration of the standard character mark "LEHMAN BROTHERS." Barclays Capital Inc. v. Tiger Lily Ventures Ltd. , Trademark L. Guide ¶ 63,767 (T.T.A.B. Sept. 30, 2020) J.A. 30449–511 ("Board Decision "). Tiger Lily also appeals from the Board's dismissal of its opposition to Barclays' application for registration of the standard character mark "LEHMAN BROTHERS." Id. For the reasons set forth below, we affirm.

BACKGROUND

I. Factual Background and Procedural History

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.

On November 24, 2014, Barclays filed Notices of Opposition to Tiger Lily's applications alleging, among other things, that Tiger Lily's LEHMAN BROTHERS marks are likely to cause confusion with Barclays' LEHMAN BROTHERS marks. Board Decision , slip op. at 4. Less than a week later, Tiger Lily filed a Notice of Opposition to Barclays' application alleging, among other things, that Barclays lacked a bona fide intent to use the LEHMAN BROTHERS mark for which it was applying for registration. Id. The Board consolidated the three oppositions into one proceeding. Id.

II. Board Decision

The Board first addressed Barclays' oppositions to Tiger Lily's applications for registration. See id. at 26–58. Because all of Barclays' registrations for LEHMAN BROTHERS and related marks had expired, the Board began by considering whether Barclays had prior ownership of a common law trademark right, and particularly Tiger Lily's argument that Barclays had abandoned its rights in the LEHMAN BROTHERS mark. Id. at 26. The Board found that Tiger Lily failed to show abandonment because LEHMAN BROTHERS continues to function as a mark for Barclays. Id. at 36. Because Tiger Lily's earliest alleged use of the mark was the March 6, 2013 filing date of its earliest-filed application, which was long after Lehman Brothers began using the LEHMAN BROTHERS mark, the Board found that Barclays had shown prior use of the mark for purposes of its oppositions. Id. at 38.

Having found that Barclays had priority of use, the Board proceeded to analyze the likelihood of confusion using the factors set forth in In re E.I. du Pont de Nemours & Co. , 476 F.2d 1357, 1361 (CCPA 1973) ("the DuPont factors"). See Board Decision , slip op. at 38. After noting that Tiger Lily's standard character LEHMAN BROTHERS marks are identical to Barclays' standard character LEHMAN BROTHERS marks, id. at 39, the Board considered the "similarity or dissimilarity and nature of the goods or services as described in [the] application or registration." Id. at 40. The Board found:

The goods and services identified in Tiger Lily's applications are beer and spirits, and bar services and restaurant services. Barclays' services are various financial and investment related services. While the parties['] goods and services are distinctly different, goods and services need not be identical or even competitive in nature to support a finding of likelihood of confusion. Customers encountering Tiger Lily's goods and services under the well-known LEHMAN BROTHERS mark would be likely to mistakenly assume that Tiger Lily's goods are in some way related to Barclays.

Id. at 40–41.

In the context of its analysis, the Board considered evidence submitted by Barclays showing the use of its LEHMAN BROTHERS mark in connection with a diverse set of goods. For example, Barclays provided evidence of promotional materials distributed by Lehman Brothers (including whisky decanters, wine gift sets, wine books, wine carriers, and coasters), which the Board noted are still collected, sold, and traded by members of the consuming public. Id. at 42. Barclays also provided evidence of the prevalence of its LEHMAN BROTHERS mark in pop culture, including movies, television shows, and music. Id. at 46–47. Relatedly, Barclays provided extensive evidence of well-known third-party marks that have been registered and used both in connection with financial services and in connection with alcoholic beverages, food, bar services, and restaurant services. See id. at 43–46 n.68.

The Board noted that Tiger Lily did not dispute the legacy of Lehman Brothers, and specifically that Tiger Lily "admits that it seeks to draw a connection between its goods and services and the financial and investment business LEHMAN BROTHERS, and only filed its application when it believed that the LEHMAN BROTHERS mark was abandoned." Id. at 48 (citing testimony from Tiger Lily's director). Thus, the Board found, based on the evidence, "consumers would view Tiger Lily's goods and services as the types of goods and services that owners of well-known marks, such as Barclays, could expand their product lines to cover." Id.

After completing its analysis of the likelihood of confusion, the Board turned to the three other grounds set forth in Barclays' opposition, namely, false suggestion of a connection, dilution, and lack of bona fide intent. See id. at 52–58. The Board found that Barclays failed to prove the elements required for each of these claims. Id. For the false suggestion claim, the Board found a lack of evidence that Barclays had developed a public identity or persona as LEHMAN BROTHERS. Id. at 54. For the dilution claim, the Board found that Barclays failed to produce sufficient evidence regarding the extent of actual recognition of the LEHMAN BROTHERS mark and thus failed to show that the mark is still famous for dilution purposes. Id. at 56. And for the lack of bona fide intent claim, the Board credited the unchallenged testimony of Tiger Lily's director demonstrating that Tiger Lily intended to make commercial use of the LEHMAN BROTHERS mark. Id. at 57–58.

Finally, the Board turned its attention to Tiger Lily's opposition to Barclays' application. Regarding Tiger Lily's claim that Barclays lacked a bona fide intent to use the LEHMAN BROTHERS mark for the services identified in its application, the Board found that the totality of circumstances—including Barclays' ongoing business in the financial services industry under its other marks as well as active licenses involving the LEHMAN BROTHERS mark—provided sufficient evidence of a good faith intention to eventually use the mark in a commercial sense. Id. at 60–61. Regarding Tiger Lily's fraud claim, the Board found that Tiger Lily could not prevail because it was based on the alleged lack of bona fide intent (which the Board rejected) and because Tiger Lily failed to provide clear evidence that Barclays made false statements in support of its application. Id. at 63. Regarding Tiger Lily's likelihood of confusion claim, the Board found that Tiger Lily did not show priority of use of the LEHMAN BROTHERS mark. Id.

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).

DISCUSSION

On appeal, Tiger Lily raises a number of challenges against the Board's decision. Regarding the Board's decisions sustaining Barclays' oppositions against Tiger Lily's applications for registration, Tiger Lily primarily challenges the Board's decisions on two bases. First, Tiger Lily argues that the Board erred in its determination that Barclays did not abandon its rights in the LEHMAN BRO...