Tiger Lily Ventures Ltd. v. Barclays Capital Inc., 35f4th1352

Lehman Brothers long used the standard-character mark LEHMAN BROTHERS and owned federal registrations pre-2008. Barclays acquired Lehman’s businesses and assigned LEHMAN BROTHERS trademarks and goodwill to Barclays in a 2008 asset sale, and Barclays granted Lehman a limited license back.
Barclays let its LEHMAN BROTHERS federal registrations lapse over time; Lehman (and Barclays in limited ways) continued to use the mark in legacy materials and in winding-up financial activities.
Tiger Lily (unrelated to Lehman/Barclays) filed intent-to-use applications for LEHMAN BROTHERS for beer/spirits (2013) and bar/restaurant services (2014).
Barclays opposed Tiger Lily’s applications under §2(d) (likelihood of confusion) and other theories; Tiger Lily opposed Barclays’ later application claiming lack of bona fide intent and fraud.
The Trademark Trial and Appeal Board found Barclays had not abandoned the LEHMAN BROTHERS mark, had priority, and that Tiger Lily’s applications were likely to cause confusion; the Board dismissed Tiger Lily’s challenges to Barclays’ application. Tiger Lily appealed; the Federal Circuit affirmed.

Issue	Tiger Lily's Argument	Barclays' Argument	Held
Abandonment / Priority of LEHMAN BROTHERS mark	Barclays abandoned the mark by letting registrations expire and publicly distancing itself from Lehman	Continued use (by Lehman under license and limited Barclays uses), plus licensing, shows no nonuse or intent to abandon	Court: Substantial evidence supports Board that mark not abandoned; Barclays has priority
Likelihood of confusion under DuPont	Distinct goods/services (whisky, bars, restaurants vs. financial services); little actual confusion; promotional items don’t show product-line expansion	Marks are identical; fame and historical use on diverse goods (promo items, pop culture) support a viable relationship and risk of consumer association	Court: DuPont analysis supported; identity + fame weigh heavily for likelihood of confusion
Bona fide intent for Barclays’ §1(b) application	Public distancing and past nonuse show lack of bona fide intent to use	Barclays has capacity and demonstrated ties to financial services, licenses, and ongoing legacy use supporting objective intent	Court: Substantial evidence supports Board that Barclays had bona fide intent
Evidentiary rulings (striking testimony)	Certain Barclays witness testimony was hearsay/speculative and should be struck	Board reasonably weighed testimony; no abuse of discretion	Court: No abuse of discretion; Board properly considered testimony

In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973) (establishes DuPont likelihood-of-confusion factors)
On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080 (Fed. Cir. 2000) (abandonment is a factual question reviewed for substantial evidence)
Person’s Co. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990) (limited or intermittent use can defeat abandonment)
M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015) (bona fide intent measured objectively by totality of circumstances)
Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367 (Fed. Cir. 2002) (fame affords broader trademark protection)
In re Majestic Distilling Co., 315 F.3d 1311 (Fed. Cir. 2003) (identity of marks weighs heavily in confusion analysis)
In re Shell Oil Co., 992 F.2d 1204 (Fed. Cir. 1993) (identical marks can lead to assumed common source even for unrelated goods)
Quik-Trip West, Inc. v. Weigel Stores, Inc., 984 F.3d 1031 (Fed. Cir. 2021) (review standards: factual findings for substantial evidence; weighing of DuPont factors de novo)
Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317 (Fed. Cir. 2014) (defines substantial evidence standard)
Recot, Inc. v. Becton, 214 F.3d 1322 (Fed. Cir. 2000) (fame can dominate the balancing of DuPont factors)