Tiger Lily Ventures Ltd. v. Barclays Capital Inc., No. 21-1107 (Fed. Cir. 2022)
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Until 2008, Lehman Brothers, a large investment bank, owned federal trademark registrations for the standard character mark LEHMAN BROTHERS. Lehman Brothers filed for bankruptcy in 2008 and sold several of its businesses and other assets to Barclays for $1.5 billion, assigning all of its LEHMAN BROTHERS trademarks and accompanying goodwill. Barclays granted Lehman Brothers a worldwide, non-exclusive license to use the LEHMAN BROTHERS trademarks in connection with continuing businesses and operations. The term of the license was two years for use in connection with investment banking and capital markets businesses and perpetual for use in connection with other operations. Barclays allowed its LEHMAN BROTHERS trademark registrations to expire. In 2013, Tiger Lily, which has no affiliation to Lehman Brothers or Barclays, sought registration of the mark LEHMAN BROTHERS for beer and spirits. A few months later, Barclays applied to register LEHMAN BROTHERS for use in connection with financial services. In 2014, Tiger Lily applied for registration of the LEHMAN BROTHERS mark for bar services and restaurant services. Barclays and Tiger Lily filed Notices of Opposition.
The Federal Circuit affirmed the Trademark Trial and Appeal Board in sustaining Barclay’s oppositions against Tiger Lily’s applications and in dismissing Tiger Lily’s opposition to Barclays’ application, noting that Lehman Brothers and Barclays have continued to use the LEHMAN BROTHERS mark since 2008.
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