Lehman Brothers trademark is still alive and kicking

One interesting trademark dispute from the United States shows how one trademark protection can be still viable even though it’s owner is not operational.

The case at hand concerns the well-known former investment bank Lehman Brothers and its trademarks. After the bank’s bankrupt in 2008 its Lehman Brothers trademarks were transferred to Barclays Capital which licensed them back to the bank for the purpose of the liquidation procedures.

In 2013, Tiger Lily Ventures Ltd applied for a trademark Lehman Brothers for beer, spirits, and bar and restaurant services.

Meanwhile all Lehman Brothers trademark owned by Barclays expired and they applied for a new trademark Lehman Brothers later in 2013. In the use, trademark rights rise based on real market use of a sign.

Barclays filed an opposition against the Tiger Lily Ventures’ application claiming:

  • a prior trademark use for Lehman Brothers and the fact that the later mark application can cause consumer confusion;
  • that LEHMAN BROTHERS mark was famous and Tiger Lily’s use diluted its distinctive quality;
  • that Tiger Lily’s LEHMAN BROTHERS mark falsely suggested an association with Barclays
  • that Tiger Lily did not have a bona fide intent to use the LEHMAN BROTHERS trademark.

Tiger Lily Ventures counter opposed the Barclays’ later Lehman Brothers mark claiming that all previous marks were abandoned.

The Trademark Trial and Appeal Board concluded that Barclays’ Lehman Brothers marks weren’t abandoned. The reason was that they were licensed back and used for the liquidation of the bank which encompasses different financial procedures and assets deals.

After that, the Board considered both marks as identical. For the goods and services similarity assessment, the Board concluded that even though Barclays’ Lehman Brothers marks had been used for financial services, their is a risk of consumer confusion. The argument for this is that many big companies use their brand for different goods and services apart from their main activities. For example for foods, drinks and for different advertising and merchandising products.

In that regard, it is possible the Tiger Lily Ventures’ consumers to think that there is a link with the famous Lehman Brothers bank taking into account its still existing reputation in the market.

Source: Ira S. Sacks and Rachel B. Rudensky – Akerman LLP