APPELLATE VICTORY ON BEHALF OF BARCLAYS
We successfully represented Barclays Capital Inc. and Barclays PLC (collectively “Barclays”) before the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office and in a subsequent appeal of the TTAB’s decision before the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) opposing a third-party application to register the LEHMAN BROTHERS trademark for whiskey.
When Lehman Brothers filed for bankruptcy in 2008, it was the fourth largest investment bank in the U.S. with hundreds of billions of dollars’ worth of assets under management. As part of the bankruptcy, Barclays purchased several of Lehman Brothers’ businesses and assets, including the LEHMAN BROTHERS marks. Barclays then granted Lehman Brothers a license to use the marks in connection with its ongoing business, which included investing in, managing and selling its sizable real estate, equity, debt and other assets, whose proceeds ultimately would be used to satisfy its creditors.
In 2013, Tiger Lily Ventures, which had no affiliation with Lehman Brothers or Barclays, sought registration of the LEHMAN BROTHERS mark for beer and spirits. It also replicated the LEHMAN BROTHERS logo on its products and referenced the financial institution in its marketing materials. Barclays opposed Tiger Lily’s trademark application. The TTAB ruled in Barclay’s favor, finding that Barclays had not abandoned its LEHMAN BROTHERS mark and that registration of Tiger Lily’s identical mark would cause confusion therewith.
The Federal Circuit affirmed the TTAB’s decision, sustaining Barclays’ oppositions against Tiger Lily’s applications. In its decision, the court found that Lehman Brothers and Barclays each had continued to use the LEHMAN BROTHERS mark in commerce since 2008. Lehman Brothers had continued to engage in numerous financial transactions as its was winding down its business and Barclays had made available and distributed to clients Lehman Brothers’ branded research reports as part of Barclays’ own financial services. The Court also found that the financial services offered under the LEHMAN BROTHERS mark were related to whisky because there were other financial services companies that had registered marks for both financial services and spirits and Lehman Brothers had a long history of offering “swag” to its clients, such as wine decanters, that are related to alcoholic beverages. Tiger Lily Ventures Ltd. v. Barclays Capital Inc., No. 21-1107 (Fed. Cir. 2022).
Eric Shimanoff represented Barclays with the assistance of Maryann E. Licciardi, Jeremy Berman, Raphael Nemes, and Justin I. Karasick.
Prior results do not guarantee future outcomes.
For further information, contact Eric Shimanoff.