inTOXICating LEGACY OF LEHMAN BROTHERS
The world is once again at the precipice of yet another financial crisis, brought on by an overachieving virus and an overreaching Russia. We’re being reminded daily that the global economy could very well descent into the chaos of the 2007 – 2008 global financial crisis where even the mightiest of banks were dropping like radioactive lead zeppelins, including the international investment bank - Lehman Brothers.
After several years of having its name dragged through the mud (quite justifiably), the poster boy of the subprime mortgage crisis seemed to have risen from the ashes, in the guise of a whiskey brand by TIGER LILY VENTURES LTD., a London based company who’s decided that the name Lehman Brothers shall ne’er be too far from the lips of those who’d caused us so much misery in the first place. The resurrection of the name did not sit well with Barclays Bank, which bought over Lehman’s North American operations along with the latter’s trademarks right. Unfortunately, Barclays had allowed all of Lehman Brothers’ US trademark registrations to expire.
In 2013, Tiger Lily filed to register the trademark “LEHMAN BROTHERS” in the States for beer, spirits and F&B services. And in the same year, Barclays filed to re-register the same trademark for various financial services. Both parties then decided to oppose the trademark applications of the other at the United States Patent and Trademark Office (USTPO).
Barclays claimed that Tiger Lily’s use of the Lehman Brothers trademark will cause confusion as the public might think that Tiger Lily’s products and services are somehow related to Barclays. On the other hand, Tiger Lily claimed that Barclays had abandoned the Lehman Brothers trademark and have no genuine intention to ever use it.
The USPTO allowed Barclays opposition, as it was convinced that the use of the Lehman Brothers trademark by Tiger Lily would actually cause confusion. Tiger Lily’s opposition was however rejected as the USPTO found that Barclays had not abandoned the Lehman Brothers trademark and it has intention to use the trademark eventually. Unhappy with the USPTO’s decisions, Tiger Lily decided to appeal at the Federal Circuit.
Unfortunately, the appeal court agreed with USPTO’s decisions. The court found that Tiger Lily’s use of the Lehman Brothers trademark is likely to cause confusion as banks have been known to use their trademarks on merchandises (including food and alcohol) to promote their business. The court also found that Barclays had not abandoned the Lehman Brothers trademark (even though it had not renewed its trademark registrations) as it had continued to use the trademark in various capacity, including in the ongoing bankruptcy proceedings.
This case shows the difficulties that a business may face in using an unrelated legacy brand, especially if the brand is famous. So, for anyone who is banking on a seemingly disused brand, perhaps it’s worth doing a bit of due diligence before you take out that second mortgage.