Tiger Lily Ventures, a British company was seeking to name their whiskey Lehman Brothers. The trademark lapsed in the U.S. Register. The Barclays failed to renew the trademark in 2013 and Tiger Lily jumped on top of that and filed a trademark for whiskey and beer using the Lehman Brothers name. The argument that Barclay's made about the marks was a) they own the marks, b) the marks are famous and c) clearly if Tiger Lily uses the marks for whiskey, even though it's not the same goods and services as Lehman Brothers Financial Services or Barclays Financial Services, people are going to make some association back to the original owner of the mark, in this case, Barclays, and it would result therefore in dilution of the distinctive quality of Barclay's mark. Further, the Tiger Lily's mark falsely alludes to a connection between Barclay's predecessor in interest Lehman Brothers.
Despite Tiger Lily's defense that Lehman let the mark lapse, all trademark rights derived from use in commerce and common law rights are king if you've been using it first. Registration helps, but it doesn't give you absolute rights to use something. Tiger Lily's defense that they were the "first to file" and that Barclays had abandoned the mark failed and the TTAB, Trademark Trial and Appeals Board eventually found in favor of Barclays sustaining the likelihood of confusion argument, relying on two key considerations in the DuPont analysis. The TTAB said that the similarities between the marks and the similarities between the goods and services, while they're very different, the marks identical in sound appearance and meaning. And because the mark is relatively famous in this case, even where goods and services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there's a common source. The TTAB went on to say the goods and services need not be identical or even competitive to support a finding of likelihood of confusion. And in this case they found Lehman Brothers is famous and that Tiger Lily's goods and services are the type that could be easily encompassed in the commercial repertoire of a famous mark owner, such as Barclays, because Barclays is so huge. So Tiger Lily has the opportunity to appeal this decision, we'll see if they do, but for now they are out of the game.
