“Lehman Brothers” Whiskey Suffers Hangover in Trademark Dispute

Melissa Oxford Professional Headshot

By Melissa Oxford

Oxford is Senior Associate with Dunlap Bennett & Ludwig in Tulsa Office. 

 

Tiger Lily Ventures, Ltd. (“Tiger Lily”) is a small British company seeking to name their whiskey “Lehman Brothers.” They were unsuccessful in their trademark application, which was opposed by Barclays Capital Inc. and Barclays PLC (“Barclays”). Barclays is an international investment bank and financial services company who purchased the “Lehman Brothers” mark in 2008.  The Trademark Trial and Appeal Board (TTAB) denied Tiger Lily’s application on the basis their “Lehman Brothers” mark would cause an impermissible likelihood of confusion the product was affiliated with Barclays’ predecessor in interest, Lehman Brothers.

As most readily recall, Lehman Brothers was the fourth largest investment bank in the United States, and the behemoth financial firm’s collapse precipitated the 2008 global financial crisis. Lehman Brothers’ failure resulted in the largest bankruptcy filing in United States history. Following the filing, Barclays purchased several Lehman Brothers businesses for $1.3B in 2008. The Asset Purchase Agreement included the “perpetual, worldwide non-exclusive license to use “Lehman” trademarks and tradenames, including “Lehman Brothers.”

In an interesting “whoopsie” that initiated this conflict, Barclays allowed the mark for “Lehman Brothers” to lapse in 2013. Tiger Lily, aware of the lapse, filed an application for the “Lehman Brothers” mark as a name for beer and spirits and for bar and restaurant services. Barclays filed an application to re-register “Lehman Brothers” for securities brokerage purposes. Each party opposed the other’s respective applications. The cases were consolidated, and ultimately the TTAB held a hearing on January 20, 2020.

Barclays argued the following points in opposition to Tiger Lily’s trademark application: 1) Barclays owns the “Lehman Brothers” common law mark by assignment; 2) the mark is famous; 3) Barclays has priority of use of the mark, and there is a likelihood of confusion if Tiger Lily were to prevail; 4) registration of Tiger Lily’s mark would result in dilution of the distinctive quality of Barclays’ mark. 5) Tiger Lily’s mark falsely alludes to a connection between Barclays’ predecessor in interest, Lehman Brothers; 6) Tiger Lily has no bona fide intent to use the mark in commerce.

Turning to Tiger Lily’s opposition of Barclays’ application, Tiger Lily argued 1) Tiger Lily had priority and likelihood of confusion to Tiger Lily’s detriment because they were “first to file” following the 2013 lapse; 2) Barclays had no bona fide intent to use “Lehman Brothers” for the applied-for services, 3) Barclays abandoned the mark, and 4) fraud.

The TTAB found in favor of Barclays’, specifically sustaining their likelihood of confusion argument, and dismissed Tiger Lily’s Application and their Opposition to Barclays’ Application. To determine the likelihood of confusion, the TTAB applies the thirteen Dupont[6] Factors to the facts in evidence, if relevant.[7] Here, the TTAB identified two key considerations under the Dupont analysis: the similarities between the marks and the similarity between the goods and/or services. It is undisputed the marks at issue are identical in sound, appearance, and meaning. The glaring dissimilarity in this analysis is whiskey/beer/spirits for sale and bar/restaurant services are quite different from the financial services industry.

Notwithstanding this hurdle, the TTAB noted, “even when goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source.”[8] The TTAB further opined “goods and services need not be identical or even competitive in nature to support a finding of likelihood of confusion.”[9] Barclays provided photographic evidence of various promotional merchandise, including whiskey decanters, that were branded with the “Lehman Brothers” mark prior to the firm going belly-up. The TTAB was also persuaded by evidence supporting “Lehman Brothers” as a pop-culture phenomenon referenced in movies and songs due to their notorious and perilous end. The TTAB reasoned “Lehman Brothers” is a famous mark and Tiger Lily’s goods and services are the type that could be easily encompassed in the commercial repertoire of a famous mark’s owner, such as Barclays. The likelihood of causing consumers to incorrectly view the “Lehman Brothers” whiskey as an expansion of the famous mark is impermissible, per the TTAB’s decision.

 Tiger Lily attempted to allege their mark as a parody, but the TTAB was not convinced because “a parody relies upon a difference from the original mark, presumably a humorous difference in order to produce its desired effect[10] As noted above, the marks were identical, so the parody argument obviously fell short.

Tiger Lily has the right to appeal the TTAB decision to the Federal Circuit.

 


References

[6] In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
[7] In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010).
[8] In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
[9] Gen. Mills Fun Grp., Inc. v. Tuxedo Monopoly, Inc., 204 USPQ 396 (TTAB 1979)
[10]Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 84 USPQ2d 1969, 1973 (4th Cir. 2007).

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Posted in: Intellectual Property - Trademarks

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