By: Isha C. Biswas
The Great Recession of 2008 still influences jurisprudence in a myriad of ways, even fourteen years later. Most recently, a Federal Circuit panel has been questioning whether a small distilling company, Tiger Lily Ventures Ltd., should be allowed to use the Lehman Brothers name on their whiskey bottles.[1]
Barclays acquired Lehman Brothers in a fire sale after the financial crisis of 2008.[2] As part of the purchase, Barclays also assumed ownership of Lehman’s trademarks, including the “Lehman Brothers” name, which was used on a wide variety of corporate merchandise.[3] When the trademarks expired in 2013, Tiger Lily applied to register the name “Lehman Brothers” for their beer and spirits, intending to evoke a parody of the name.[4] In 2020, the Trademark Trial and Appeal Board refused to let Tiger Lily register the name for their whiskey, “ruling that Barclays PLC has not legally abandoned the name of the famously defunct investment bank,” and that consumers may be confused.[5] Tiger Lily’s main argument was that they intended to parody the mark; however, the Board was not convinced.[6] The Board ruled that consumers may associate Tiger Lily’s goods and services with Barclays, as Lehman Brothers had expanded their product lines considerably by 2008 and Barclays still owned the marks and products after the acquisition.[7]
Tiger Lily now contends that Barclays had abandoned the mark and that there was “no ‘bona fide’ use of Lehman Brothers as a consumer-facing service anymore.”[8] Under Section 45 of the Trademark Act, a mark is considered “abandoned” if “the use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from the circumstances. Nonuse for three consecutive years shall be prima facie evidence of abandonment.”[9] Abandonment can also be presumed “when any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services or in connection with which it is used or otherwise to lose its significance as a mark.”[10] Unfortunately for Tiger Lily, the Board decided in 2020 that, although Barclays made no new commercial offerings under “Lehman Brothers,” the name was still used in terms of winding down the company, as well as the bankruptcy estate using the mark to sell its assets.[11]
Can Tiger Lily successfully appeal the Trademark Trials and Appeals Board’s decision and convince the judges that likelihood of confusion is no longer possible? The likelihood of confusion test was most notably used in AMF Inc. v. Sleekcraft.[12] In this case, the Ninth Circuit Court of Appeals put forth eight factors used to assess whether confusion between related goods is likely: “(1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines.”[13]
In Tiger Lily’s case, the likelihood of confusion test may sway in their favor now. The strength of the Lehman Brothers mark is nowhere near as prominent as it was in 2008; it is mainly used for the winding down of the company and the selling of assets in the estate.[14] The proximity of the goods seems vast between whiskey and banking as well. Additionally, the marketing channels used are presumably widely different between liquor and the merchandise the Lehman Brothers mark was used for initially, as well as the marketing channels now used for the estate sales.[15] This applies to the type of goods as well – business merchandise and the high-value assets of the estate (mainly property), versus liquor.[16] The likelihood of expansion is low as Tiger Lily specializes in liquor and has no recorded intent of wanting to use the mark for kinds of merchandise; the Lehman Brothers mark is now being used for estate sales and winding down of the business on Barclays’ end.[17] Lastly, the intent of Tiger Lily to select the mark is one that intends to parody the once bankrupt company, not perform financial services.[18]
Tiger Lily’s main point of contention may be the similarity of the marks, element three.[19] If attempting a parody defense, the Federal Circuit may still not be convinced two years later.[20] “If it is difficult to detect the commentary and instead only the brand attributes are readily apparent in the parodist’s product . . . the brand owner is more readily able to prove that confusion is likely.”[21] It will certainly be an uphill battle for Tiger Lily this time around, but the passage of time since the fall of Lehman Brothers may be in their favor.
[1] See Christopher Cole, Fed. Circ. Wonders If Lehman’s Spirit Lives On, Even in Booze, Law360 (Apr. 5, 2022, 4:44 PM), https://www.law360.com/articles/1480990.
[2] See Heidi N. Moore, Barclays to Buy Lehman Investment Bank, Save at Least 9,000 Jobs, Wall Street J. (Sep. 16, 2008, 3:19 PM), https://www.wsj.com/articles/BL-DLB-3448.
[3] See id. (explaining how Barclays “bought most of Lehman, including its trademarks, for $1.75 billion days after the firm declared bankruptcy.”).
[4] See id.
[5] See Bill Donahue, Barclays Beats ‘Lehman Brothers’ Whiskey Trademark, Law360 (Oct. 2, 2020, 4:13 PM), https://www.law360.com/articles/1316305/barclays-beats-lehman-brothers-whiskey-trademark.
[6] See Donahue, supra note 5 (discussing that although the “’fame and renown’” of Lehman Brothers has faded over time, consumers may still presume that Barclays and Tiger Lily are connected).
[7] See id.
[8] See Cole, supra note 1.
[9] 12 U.S.C. §1127.
[10] Id.
[11] See Ira S. Sacks & Rachel B. Rudensky, Lehman Brothers is Gone but Not Abandoned, Akerman (Oct. 8, 2020), https://www.marksworksandsecrets.com/2020/10/lehman-brothers-is-gone-but-not-abandoned/.
[12] 599 F.2d 341, 348-49 (9th Cir. 1979).
[13] See id.
[14] See Sacks & Rudensky, supra note 15.
[15] See Cole, supra note 1.
[16] See id.
[17] See id.
[18] See id.
[19] See Moore, supra note 2.
[20] See Cole, supra note 1.
[21] Kathleen McCarthy, Trademark Parody and Freedom of Speech in the U.S., JD Supra (Aug. 31, 2020), https://www.jdsupra.com/legalnews/trademark-parody-and-freedom-of-speech-70581/.
