Federal Circuit Court Denies "Lehman Brothers" Trademark for Whiskey

The U.S. Court of Appeals for the Federal Circuit on June 1, 2022, issued an order in favor of Barclays Capital Inc. (Barclays) in relation to its opposition to a trademark application for LEHMAN BROTHERS. The court affirmed that a trademark application filed by Tiger Lily Ventures Ltd. (Tiger Lily) for the mark LEHMAN BROTHERS is confusingly similar to Barclay's LEHMAN BROTHERS mark. The ruling offers some insight as to how the acquired fame and historical significance of some marks grants advantages on the ability to stop registration of confusingly similar marks.

Case Background

After its bankruptcy, the financial brokerage firm Lehman Brothers sold Barclays all of its assets, including trademarks and accompanying goodwill. Over the years, the original trademark registrations that Barclays purchased from Lehman Brothers expired. In 2013, Barclays filed a new U.S. trademark application with the U.S. Patent and Trademark Office (USPTO) for the mark LEHMAN BROTHERS covering a wide range of banking, investment and brokerage services.

Months before Barclays' trademark application, Tiger Lily filed a mark application for the mark LEHMAN BROTHERS under the goods category for beer and spirits. Not long after that, Tiger Lily filed another LEHMAN BROTHERS trademark application seeking protection of the name in connection with bar services and restaurant services.

Both Barclays and Tiger Lily opposed each other's marks and after almost six years of litigation, the USPTO's Trademark Trial and Appeal Board (Board) ruled in Barclays' favor. After the Board's final decision, the dispute was raised to the U.S. Court of Appeals for the Federal Circuit.

Federal Circuit Court Order

The Federal Circuit Court supported the Trademark Trial and Appeal Board's holding that:

• there is enough evidence to support the Board's finding that Barclays did not abandon its rights in the LEHMAN BROTHERS mark
• Tiger Lily failed to show a lack of bona fide intent by Barclays to use the LEHMAN BROTHERS mark commercially

The Federal Circuit Court affirmed what the Board previously held: there is existent likelihood of confusion between both marks. For determining confusion among marks, the USPTO references the well-established "DuPont Factors." These factors were first enumerated in the precedential ruling In re E. I. du Pont de Nemours & Co. 476 F.2d 1357 (CCPA 1973). Such factors include, among others: the similarity or dissimilarity between marks, comparison of goods and/or services marketed/sold under marks, and comparison of the trade channels involved on marks.

Conclusion and Takeaways

Various U.S. Courts of Appeal have each developed a similar set of factors. Each Circuit Court interprets these factors and, according to the facts presented in trademark disputes, places more importance to one – or many – of the factors for determining the likelihood of confusion among marks.

In the LEHMAN BROTHERS case, the fame of the mark was a major component for determining whether consumers were likely to be confused. As the Federal Circuit Court observed, a "mark with extensive public recognition and renown deserves and receives more legal protection than an obscure or weak mark," and, a famous mark "casts a long shadow which competitors must avoid." For this reason, the court affirmed that Tiger Lily's attempts to capitalize on the fame of the LEHMAN BROTHERS mark weighed heavily in favor of finding the likelihood of confusion.

Surprisingly, the Federal Circuit Court affirmed the Trademark Trial and Appeal Board's decision that Barclays failed to prove that the LEHMAN BROTHERS mark was famous for dilution purposes. Even so, this did not prevent Barclays from blocking Tiger Lily's attempt to register the LEHMAN BROTHERS mark.

The present case provides some guidance as to how some historic marks such as LEHMAN BROTHERS that had – and has – famous significance may consequently carry a certain degree of weight under trademark law.

For more information or questions on the Federal Circuit Court ruling and its potential impact on other famous trademarks, contact the authors.

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