Tiger Lily Ventures Ltd. v. Barclays Capital Inc.

Case: 21-1107 Document: 71 Page: 1 Filed: 06/01/2022
United States Court of Appeals
for the Federal Circuit
______________________
TIGER LILY VENTURES LTD.,
Appellant
v.
BARCLAYS CAPITAL INC., BARCLAYS PLC,
Cross-Appellants
______________________
2021-1107, 2021-1228
______________________
Appeals from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Nos.
91219477, 91219478, 91219549.
______________________
Decided: June 1, 2022
______________________
ROBERT GARSON, Garson Segal Steinmetz Fladgate
LLP, New York, NY, argued for appellant. Also repre-
sented by KEVIN KEHRLI, JOHN R. LANE.
ERIC J. SHIMANOFF, Cowan, Liebowitz & Latman, PC,
New York, NY, argued for cross-appellants.
______________________
Before LOURIE, BRYSON, and PROST, Circuit Judges.
LOURIE, Circuit Judge.
Case: 21-1107 Document: 71 Page: 2 Filed: 06/01/2022
2 TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC.
Tiger Lily Ventures Ltd. (“Tiger Lily”) appeals from the
decision of the United States Patent and Trademark Office
Trademark Trial and Appeal Board (“the Board”) sustain-
ing two oppositions that Barclays Capital Inc. (“Barclays”)
had filed against Tiger Lily’s applications for registration
of the standard character mark “LEHMAN BROTHERS.”
Barclays Capital Inc. v. Tiger Lily Ventures Ltd., Trade-
mark L. Guide ¶ 63,767 (T.T.A.B. Sept. 30, 2020) J.A.
30449–511 (“Board Decision”). Tiger Lily also appeals from
the Board’s dismissal of its opposition to Barclays’ applica-
tion for registration of the standard character mark
“LEHMAN BROTHERS.” Id. For the reasons set forth be-
low, we affirm.
BACKGROUND
I. Factual Background and Procedural History
Until 2008, Lehman Brothers 1 was one of the largest
investment banks in the United States, with hundreds of
billions of dollars in assets under management and more
than 25,000 employees in offices worldwide. Lehman
Brothers owned trademark rights in connection with its
name, including a number of federal trademark registra-
tions for the standard character mark LEHMAN
BROTHERS.
Immediately after Lehman Brothers filed for bank-
ruptcy in 2008, it sold several of its businesses and other
assets to Barclays for approximately $1.5 billion. As part
1 We use the term “Lehman Brothers” to refer collec-
tively to the company Lehman Brothers Holdings Inc.
(“LBHI”), along with its current and former subsidiaries
and affiliates (including, for example, LBHI’s brokerage
subsidiary Lehman Brothers Inc.). In contrast, we use the
capitalized term “LEHMAN BROTHERS” to refer to the
standard character mark for which both parties in this ap-
peal have sought registration.
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TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC. 3
of that sale, Lehman Brothers assigned to Barclays all of
its LEHMAN BROTHERS trademarks and accompanying
goodwill. Shortly thereafter, Barclays granted Lehman
Brothers a worldwide, non-exclusive license to use the
LEHMAN BROTHERS trademarks in connection with
Lehman Brothers’ retained and continuing businesses and
operations. The term of the license was two years for use
in connection with Lehman Brothers’ investment banking
and capital markets businesses and perpetual for use in
connection with other Lehman Brothers businesses and op-
erations. Over the years that followed, however, Barclays
allowed all of its acquired LEHMAN BROTHERS trade-
mark registrations to expire.
On March 6, 2013, Tiger Lily, a company with no cor-
porate affiliation to Lehman Brothers or Barclays, filed Ap-
plication No. 85/868,892 for registration of the standard
character mark LEHMAN BROTHERS for beer and spir-
its. A few months later, on October 2, 2013, Barclays filed
Application No. 86/081,143 to register the standard char-
acter mark LEHMAN BROTHERS for use in connection
with various financial services. And not long after that, on
June 2, 2014, Tiger Lily filed Application No. 86/298,069
for registration of the same standard character LEHMAN
BROTHERS mark for bar services and restaurant services.
On November 24, 2014, Barclays filed Notices of Oppo-
sition to Tiger Lily’s applications alleging, among other
things, that Tiger Lily’s LEHMAN BROTHERS marks are
likely to cause confusion with Barclays’ LEHMAN
BROTHERS marks. Board Decision, slip op. at 4. Less
than a week later, Tiger Lily filed a Notice of Opposition to
Barclays’ application alleging, among other things, that
Barclays lacked a bona fide intent to use the LEHMAN
BROTHERS mark for which it was applying for registra-
tion. Id. The Board consolidated the three oppositions into
one proceeding. Id.
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4 TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC.
II. Board Decision
The Board first addressed Barclays’ oppositions to
Tiger Lily’s applications for registration. See id. at 26–58.
Because all of Barclays’ registrations for LEHMAN
BROTHERS and related marks had expired, the Board be-
gan by considering whether Barclays had prior ownership
of a common law trademark right, and particularly Tiger
Lily’s argument that Barclays had abandoned its rights in
the LEHMAN BROTHERS mark. Id. at 26. The Board
found that Tiger Lily failed to show abandonment because
LEHMAN BROTHERS continues to function as a mark for
Barclays. Id. at 36. Because Tiger Lily’s earliest alleged
use of the mark was the March 6, 2013 filing date of its
earliest-filed application, which was long after Lehman
Brothers began using the LEHMAN BROTHERS mark,
the Board found that Barclays had shown prior use of the
mark for purposes of its oppositions. Id. at 38.
Having found that Barclays had priority of use, the
Board proceeded to analyze the likelihood of confusion us-
ing the factors set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 1361 (CCPA 1973) (“the DuPont fac-
tors”). See Board Decision, slip op. at 38. After noting that
Tiger Lily’s standard character LEHMAN BROTHERS
marks are identical to Barclays’ standard character
LEHMAN BROTHERS marks, id. at 39, the Board consid-
ered the “similarity or dissimilarity and nature of the goods
or services as described in [the] application or registration.”
Id. at 40. The Board found:
The goods and services identified in Tiger Lily’s ap-
plications are beer and spirits, and bar services and
restaurant services. Barclays’ services are various
financial and investment related services. While
the parties[’] goods and services are distinctly dif-
ferent, goods and services need not be identical or
even competitive in nature to support a finding of
likelihood of confusion. Customers encountering
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TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC. 5
Tiger Lily’s goods and services under the well-
known LEHMAN BROTHERS mark would be
likely to mistakenly assume that Tiger Lily’s goods
are in some way related to Barclays.
Id. at 40–41.
In the context of its analysis, the Board considered ev-
idence submitted by Barclays showing the use of its
LEHMAN BROTHERS mark in connection with a diverse
set of goods. For example, Barclays provided evidence of
promotional materials distributed by Lehman Brothers (in-
cluding whisky decanters, wine gift sets, wine books, wine
carriers, and coasters), which the Board noted are still col-
lected, sold, and traded by members of the consuming pub-
lic. Id. at 42. Barclays also provided evidence of the
prevalence of its LEHMAN BROTHERS mark in pop cul-
ture, including movies, television shows, and music. Id.
at 46–47. Relatedly, Barclays provided extensive evidence
of well-known third-party marks that have been registered
and used both in connection with financial services and in
connection with alcoholic beverages, food, bar services, and
restaurant services. See id. at 43–46 n.68.
The Board noted that Tiger Lily did not dispute the leg-
acy of Lehman Brothers, and specifically that Tiger Lily
“admits that it seeks to draw a connection between its
goods and services and the financial and investment busi-
ness LEHMAN BROTHERS, and only filed its application
when it believed that the LEHMAN BROTHERS mark was
abandoned.” Id. at 48 (citing testimony from Tiger Lily’s
director). Thus, the Board found, based on the evidence,
“consumers would view Tiger Lily’s goods and services as
the types of goods and services that owners of well-known
marks, such as Barclays, could expand their product lines
to cover.” Id.
After completing its analysis of the likelihood of confu-
sion, the Board turned to the three other grounds set forth
in Barclays’ opposition, namely, false suggestion of a
Case: 21-1107 Document: 71 Page: 6 Filed: 06/01/2022
6 TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC.
connection, dilution, and lack of bona fide intent. See id.
at 52–58. The Board found that Barclays failed to prove
the elements required for each of these claims. Id. For the
false suggestion claim, the Board found a lack of evidence
that Barclays had developed a public identity or persona as
LEHMAN BROTHERS. Id. at 54. For the dilution claim,
the Board found that Barclays failed to produce sufficient
evidence regarding the extent of actual recognition of the
LEHMAN BROTHERS mark and thus failed to show that
the mark is still famous for dilution purposes. Id. at 56.
And for the lack of bona fide intent claim, the Board cred-
ited the unchallenged testimony of Tiger Lily’s director
demonstrating that Tiger Lily intended to make commer-
cial use of the LEHMAN BROTHERS mark. Id. at 57–58.
Finally, the Board turned its attention to Tiger Lily’s
opposition to Barclays’ application. Regarding Tiger Lily’s
claim that Barclays lacked a bona fide intent to use the
LEHMAN BROTHERS mark for the services identified in
its application, the Board found that the totality of circum-
stances—including Barclays’ ongoing business in the fi-
nancial services industry under its other marks as well as
active licenses involving the LEHMAN BROTHERS
mark—provided sufficient evidence of a good faith inten-
tion to eventually use the mark in a commercial sense. Id.
at 60–61. Regarding Tiger Lily’s fraud claim, the Board
found that Tiger Lily could not prevail because it was based
on the alleged lack of bona fide intent (which the Board re-
jected) and because Tiger Lily failed to provide clear evi-
dence that Barclays made false statements in support of its
application. Id. at 63. Regarding Tiger Lily’s likelihood of
confusion claim, the Board found that Tiger Lily did not
show priority of use of the LEHMAN BROTHERS mark.
Id.
In view of its findings, the Board sustained Barclays’
oppositions on the grounds of likelihood of confusion but
dismissed Barclays’ oppositions on the grounds of false sug-
gestion of a connection, dilution, and lack of bona fide
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TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC. 7
intent. Id. And the Board dismissed Tiger Lily’s opposition
in its entirety. Id. Tiger Lily appealed. We have jurisdic-
tion under 28 U.S.C. § 1295(a)(4)(B).
DISCUSSION
On appeal, Tiger Lily raises a number of challenges
against the Board’s decision. Regarding the Board’s deci-
sions sustaining Barclays’ oppositions against Tiger Lily’s
applications for registration, Tiger Lily primarily chal-
lenges the Board’s decisions on two bases. First, Tiger Lily
argues that the Board erred in its determination that Bar-
clays did not abandon its rights in the LEHMAN
BROTHERS mark and, relatedly, that the Board erred in
finding that Barclays established priority with respect to
the LEHMAN BROTHERS mark. And second, Tiger Lily
argues that the Board erred in finding that its proposed
mark for beer and spirits and its proposed mark for bar
services and restaurant services would cause a likelihood
of confusion with Barclays’ LEHMAN BROTHERS mark. 2
2 There was some confusion during the oral argu-
ment regarding the Board’s statement that Tiger Lily ad-
mitted that “[i]ts proposed services in Application No.
Serial No. 86298069,” namely bar services and restaurant
services, “are services that consumers would perceive as
being related to, similar to or an extension of the goods and
services that have been, could be and are used, offered in
connection or associated by consumers with [Barclays’]
LEHMAN Marks, including the mark LEHMAN
BROTHERS.” Board Decision, slip op. at 6 (fourth bullet
point); Oral Arg. at 8:05–9:00, 12:21–12:43, 29:30–29:45,
https://oralarguments.cafc.uscourts.gov/default.aspx?fl=21
-1107_04052022.mp3. The confusion stems from the fact
that Tiger Lily filed two answers prior to the consolidation
of the oppositions into one proceeding. See J.A. 205–18;
J.A. 219–32. As the source for the supposed admission, the
Board cited “paragraph 47” in Tiger Lily’s answer in
Case: 21-1107 Document: 71 Page: 8 Filed: 06/01/2022
8 TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC.
Regarding the Board’s dismissal of Tiger Lily’s own oppo-
sition to Barclays’ application for registration, Tiger Lily
argues that the Board erred in finding that Barclays had
bona fide intent to use the LEHMAN BROTHERS mark in
commerce. Finally, as a general challenge to the proceed-
ings below, Tiger Lily contends that the Board erred by fail-
ing to strike certain testimony from Barclays’ witnesses.
We review the Board’s legal conclusions de novo and its
factual findings for substantial evidence. Cai v. Diamond
Hong, Inc., 901 F.3d 1367, 1371 (Fed. Cir. 2018) (citing In
re N.C. Lottery, 866 F.3d 1363, 1366 (Fed. Cir. 2017)).
“Substantial evidence is ‘such relevant evidence as a rea-
sonable mind would accept as adequate to support a con-
clusion.’” Stone Lion Capital Partners, L.P. v. Lion Capital
LLP, 746 F.3d 1317, 1321 (Fed. Cir. 2014) (quoting Consol.
Edison Co. of N.Y. v. N.L.R.B., 305 U.S. 197, 229 (1938)).
We review the Board’s evidentiary rulings for abuse of dis-
cretion. Chen v. Bouchard, 347 F.3d 1299, 1307 (Fed. Cir.
2003). With these standards in mind, we address each of
Tiger Lily’s challenges in turn.
Opposition No. 91219477, in which Tiger Lily stated that it
“admits the allegations contained in Paragraph 47 of the
Consolidated Notice of Opposition.” J.A. 199. But the rel-
evant allegation by Barclays appeared in Paragraph 47 of
its Notice of Opposition in Opposition No. 91219478, see
J.A. 103, in response to which Tiger Lily stated that it “de-
nies the allegations contained in Paragraph 47 of the No-
tice of Opposition as they are both errant and
preposterous.” J.A. 215. Accordingly, we attribute no sub-
stantive significance to any alleged admission on this
point, and we consider the likelihood of confusion on the
merits.
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TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC. 9
I
We first consider Tiger Lily’s challenge that the Board
erred in its determinations regarding abandonment and
priority. Under the Lanham Act, a party may file an oppo-
sition on the basis of “a mark or trade name previously
used in the United States by another and not abandoned.”
15 U.S.C. § 1052(d). Abandonment of a trademark is a
question of fact, which we review for substantial evidence.
On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080,
1087 (Fed. Cir. 2000).
A trademark is considered “abandoned” if its “use has
been discontinued with intent not to resume such use.” 15
U.S.C. § 1127. There are two elements to a claim for aban-
donment: (1) nonuse; and (2) intent not to resume use. See
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGaA v. New Millennium Sports, S.L.U., 797 F.3d 1363,
1368 (Fed. Cir. 2015) (citing J. Thomas McCarthy, 3
McCarthy on Trademarks and Unfair Competition § 17:26
(4th ed. 2015)). Regarding the “nonuse” element, our case
law suggests that even limited use can be sufficient to
avoid a finding that use of a mark has been “discontinued”
under the statute. See, e.g., Person’s Co. v. Christman, 900
F.2d 1565, 1571 (Fed. Cir. 1990) (“Although sales by
Christman and his corporation Team Concepts, Ltd. were
often intermittent and the inventory of the corporation re-
mained small, such circumstances do not necessarily imply
abandonment. There is also no rule of law that the owner
of a trademark must reach a particular level of success,
measured either by the size of the market or by its own
level of sales, to avoid abandoning a mark.” (citing Wallpa-
per Mfrs., Ltd. v. Crown Wallcovering Corp., 680 F.2d 755,
759 (CCPA 1982))).
According to Tiger Lily, the evidence shows that Bar-
clays abandoned its mark by allowing its registrations to
expire and affirmatively disavowing its association with
Lehman Brothers across all of Barclays’ businesses. Tiger
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10 TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC.
Lily insists that the Board erred by placing undue empha-
sis on Lehman Brothers’ actions in winding up its business
during bankruptcy and by drawing impermissible and un-
reasonable inferences based on a license to Bloomberg LP
that fails to identify any specific mark in the agreement.
Barclays responds that Lehman Brothers has continu-
ously used the mark in connection with numerous public-
facing financial and business transactions since it licensed
the use of the LEHMAN BROTHERS mark from Barclays
immediately after the asset sale in 2008. For example, un-
der its license from Barclays, Lehman Brothers has used
the LEHMAN BROTHERS mark in signage, email signa-
tures, web addresses, reports, correspondence, business
cards, and corporate and regulatory filings. Barclays also
contends that Barclays itself has used the mark in connec-
tion with its own financial services, including legacy
LEHMAN BROTHERS research materials. Barclays ar-
gues that the ongoing bankruptcy proceedings of individual
Lehman Brothers affiliates, which will conclude on unspec-
ified dates in the future, do not negate the dispositive fact
that Lehman Brothers continues to use the LEHMAN
BROTHERS mark in connection with financial transac-
tions just as it has always done. And regarding the Bloom-
berg LP license, Barclays contends that, at a minimum, it
disproves any notion that Barclays intends not to resume
use of trademarks it acquired from Lehman Brothers.
We agree with Barclays that substantial evidence sup-
ports the Board’s conclusion that there has been no aban-
donment of the LEHMAN BROTHERS mark. The decisive
factor is Tiger Lily’s apparent acknowledgment that the
LEHMAN BROTHERS mark has been used continuously
in the course of winding up the affairs of at least one Leh-
man Brothers affiliated company. See, e.g., Appellant Br.
at 20–21. As Barclays argued:
When Lehman Brothers filed for bankruptcy in
2008, it was left with hundreds of billions of dollars’
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TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC. 11
worth of assets. Since that time, it has basically
been acting as an asset manager. Investing in,
maintaining, [and] selling its vast portfolio of com-
mercial real estate, securities, [and] derivative
swaps. All of this has been a service provided for
the benefit of the creditors of Lehman Brothers.
Oral Arg. at 13:29–13:58. By admitting that Lehman
Brothers has continued to use the LEHMAN BROTHERS
mark in at least this context, which is similar in nature to
the context in which Lehman Brothers used the mark for
decades, Tiger Lily essentially concedes that it cannot
prove the “nonuse” element of its claim that the LEHMAN
BROTHERS mark was abandoned under 15 U.S.C. § 1127.
Tiger Lily attempts to focus on the fact that the bank-
ruptcy proceedings will eventually end and that Lehman
Brothers is involved in the type of bankruptcy from which
it will not emerge as a continuing enterprise. See, e.g., Oral
Arg. at 3:39–4:22. But we are unpersuaded that these facts
are material to the issue at hand. Regardless whether Leh-
man Brothers will cease to exist after the bankruptcy con-
cludes, it is not disputed that the bankruptcy has not yet
concluded, and the record lacks clear evidence as to when
any such conclusion is expected. Thus, any evidence about
Lehman Brothers’ intentions after the conclusion of the
bankruptcy proceedings relates only to the second element
of Tiger Lily’s abandonment claim—i.e., whether Barclays
intends not to resume use of the LEHMAN BROTHERS
mark. As discussed above, Tiger Lily has failed to show
that use of the mark has yet been discontinued, and indeed
Tiger Lily appears to concede that it has not. Evidence re-
lating to the second element, post-bankruptcy use, is thus
irrelevant.
Additionally, separate from Lehman Brothers’ use of
the mark, the evidence shows that Barclays itself has con-
tinued to use the LEHMAN BROTHERS mark. See, e.g.,
J.A. 18152, 18160–62 (declaration of a Barclays’ Vice
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12 TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC.
President that Barclays maintains a Lehman Brothers
website, offers legacy LEHMAN BROTHERS research ma-
terials, uses Lehman Brothers’ Market Participant Identi-
fier code, and maintains worldwide LEHMAN BROTHERS
domain name and trademark registrations). We
acknowledge that Barclays’ use of the mark has not been
extensive, and it is possible that Barclays cannot quantify
any financial success that may be specifically attributable
to its offering of legacy Lehman Brothers market research
materials. But under the law, Barclays’ continued use of
the mark, even if limited, is sufficient to avoid a finding
that the mark has been abandoned. See Person’s, 900 F.2d
at 1571.
Tiger Lily acknowledges that the issues of priority and
abandonment “are the obverse and reverse of the same
coin” in this case. See Appellant Br. at 23. Accordingly,
because we find that substantial evidence supports the
Board’s finding that Barclays has not abandoned its rights
in the LEHMAN BROTHERS mark, we also find for the
same reasons that the Board did not err in concluding that
Barclays had priority with respect to the standard charac-
ter LEHMAN BROTHERS mark for purposes of filing its
oppositions.
II
We next turn to Tiger Lily’s challenge that the Board
erred in finding a likelihood of confusion between the par-
ties’ marks. Tiger Lily contends that the Board made a
number of errors in analyzing and weighing the DuPont
factors. First, Tiger Lily argues that the Board failed to
give proper weight to the lack of actual confusion. Second,
with respect to the similarity between the goods and ser-
vices of the parties, Tiger Lily argues that the Board made
an unsupported inference that consumers would assume
Barclays expanded its product lines into new types of goods
and services. And third, Tiger Lily contends that the Board
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TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC. 13
improperly equated the distribution of promotional items
with an expansion of product lines.
Barclays responds that the Board’s DuPont factor anal-
ysis is supported by substantial evidence. Barclays notes
that the LEHMAN BROTHERS mark is a famous mark
that is entitled to broad protection. Barclays emphasizes
that, far from avoiding confusion, Tiger Lily has actually
attempted to capitalize on a likelihood of confusion by tar-
geting its goods and services to consumers familiar with
the LEHMAN BROTHERS mark. Moreover, Barclays ar-
gues that, regardless whether promotional items bearing
the LEHMAN BROTHERS mark are evidence of expand-
ing product lines, they demonstrate that the mark has, in
fact, been used in connection with a broad range of goods,
including several relating to alcohol and beverages, which
makes it more likely that consumers will mistakenly con-
fuse Tiger Lily’s goods and services with those distributed
by Lehman Brothers and Barclays. And Barclays contends
that the issue of actual confusion is immaterial because
Tiger Lily filed only intent to use applications and has pro-
vided no details regarding the scope of its commercial ac-
tivity.
Under § 2(d) of the Lanham Act, a mark may be refused
registration on the principal register if it is “likely, when
used on or in connection with the goods of the applicant, to
cause confusion” with another registered mark. 15 U.S.C.
§ 1052(d). Likelihood of confusion is a legal determination
based on underlying findings of fact relating to the DuPont
factors. See In re Chatam Int’l, Inc., 380 F.3d 1340, 1342
(Fed. Cir. 2004) (citing On-Line Careline, 229 F.3d at
1084); see also E.I. du Pont, 476 F.2d at 1361. “Not all of
the DuPont factors are necessarily ‘relevant or of equal
weight in a given case, and any one of the factors may con-
trol a particular case.’” Citigroup Inc. v. Capital City Bank
Grp., Inc., 637 F.3d 1344, 1355 (Fed. Cir. 2011) (quoting In
re Majestic Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir.
2003)). Only the DuPont factors “of significance to the
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14 TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC.
particular mark need be considered” in the likelihood of
confusion analysis. In re Mighty Leaf Tea, 601 F.3d 1342,
1346 (Fed. Cir. 2010).
“We review the Board’s factual findings on each rele-
vant DuPont factor for substantial evidence, but we review
the Board’s weighing of the DuPont factors de novo.” Quik-
Trip West, Inc. v. Weigel Stores, Inc., 984 F.3d 1031, 1034
(Fed. Cir. 2021). Under this standard of review, we agree
with Barclays that the Board’s analysis of the DuPont fac-
tors was supported by substantial evidence, and its overall
conclusion regarding likelihood of confusion in view of
those factors was correct.
Regarding the first DuPont factor—similarity of the
marks—Tiger Lily does not dispute the Board’s finding
that the marks are identical. See Appellant Br. at 28–32.
Thus, this factor weighs heavily in favor of a likelihood of
confusion because identicality of the marks is likely to lead
to the assumption that there is a common source for the
parties’ goods and services. See Board Decision, slip op. at
39 (citing In re i.am.symbolic, 66 F.3d 1315 (Fed. Cir.
2017); In re Majestic Distilling Co., Inc., 315 F.3d 1311(Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204 (Fed.
Cir. 1993); In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565 (Fed. Cir. 1984)).
Turning to Tiger Lily’s arguments concerning the sim-
ilarity of the goods and services, Tiger Lily emphasizes ab-
stract distinctions between whisky on the one hand and
financial services on the other. For example, Tiger Lily as-
serts that the consuming public would not assume that the
Lehman Brothers company began “selling whisky commer-
cially or open[ed] up a bar or a restaurant,” see Appellant
Br. at 30. But that assertion, while likely true, is also ir-
relevant; the relevant inquiry considers “if the respective
products are related in some manner and/or if the circum-
stances surrounding their marketing are such that they
could give rise to the mistaken belief that they emanate
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TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC. 15
from the same source.” Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 1369 (Fed. Cir. 2012) (quot-
ing 7-Eleven, Inc. v. Wechsler, 83 U.S.P.Q.2d 1715, 1724
(T.T.A.B. 2007). 3 In short, Tiger Lily’s arguments ignore
the context-specific realities of the consumer markets in
which the parties’ goods and services are offered.
Barclays is correct that in modern consumer markets
commercial trademarks are often licensed for use on prod-
ucts that may differ from the original source of the trade-
mark. See, e.g., L.C. Licensing Inc. v. Berman, 86
U.S.P.Q.2d 1883, 1889 (T.T.A.B. 2008) (“It is common
knowledge, and a fact of which we can take judicial notice,
that the licensing of commercial trademarks on ‘collateral
products’ has become a part of everyday life.”). In this re-
gard, the Board relied on Barclays’ extensive evidence
showing examples of companies that have promoted finan-
cial services through use of their trademarks in connection
3 As cited by the parties, the Board’s case law has
framed the relevant legal test in instances when the marks
are identical as requiring a “viable relationship” between
the goods and services. See, e.g., In re Thor Tech Inc., 90
U.S.P.Q.2d 1634, 1636 (T.T.A.B. 2009); In re Opus One Inc.,
60 U.S.P.Q.2d 1812, 1815 (T.T.A.B. 2001); In re Concordia
International Forwarding Corp., 222 U.S.P.Q. 355(T.T.A.B. 1983). This court has never expressly endorsed
the “viable relationship” test, but the Board’s decisions
generally cite this court’s holding that “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.” Shell Oil, 992 F.2d at 1207. Recently,
in Micro Mobio Corp. v. General Motors, LLC, No. 2021-
1591, 2021 WL 4735312, at *3 (Fed. Cir. Oct. 12, 2021)
(nonprecedential), we concluded that, regardless whether
the term “viable relationship” is used, the legal test re-
mains the same.
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16 TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC.
with alcohol, food, and beverages. See, e.g., Board Decision,
slip op. at 43–46 n.68. And the evidence demonstrates that,
in marketing its own banking products and services, Leh-
man Brothers used its LEHMAN BROTHERS mark in con-
nection with products that are related to whisky and
alcoholic beverages. See, e.g., J.A. 17664 (Lehman Broth-
ers Whisky Decanter), J.A. 17696 (Lehman Brothers Bev-
erage Cooler).
As a legal principle, because the LEHMAN
BROTHERS mark has achieved a high degree of fame, it is
afforded a broad scope of protection. See Bose Corp. v. QSC
Audio Prods., Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002); see
also Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963
F.2d 350, 353 (Fed. Cir. 1992) (“[A] mark with extensive
public recognition and renown deserves and receives more
legal protection than an obscure or weak mark.”). Our
precedent makes clear that a famous mark “casts a long
shadow which competitors must avoid.” Kenner Parker
Toys, 963 F.2d at 353 (citing Nina Ricci, S.A.R.L. v. E.T.F.
Enters., Inc., 889 F.2d 1070, 1074 (Fed. Cir. 1989)). In this
case, it may very well be true that Tiger Lily is not actively
“confusing” consumers into believing that Lehman Broth-
ers or Barclays is selling whisky. See, e.g., Oral Arg. 9:12–
9:20 (Tiger Lily arguing that there is no “deception” and
that there are no “consumers that stand to be confused”).
But the evidence shows that, by referencing the Lehman
Brothers history in its marketing materials and by copying
Lehman Brothers’ logo, Tiger Lily is seeking to take ad-
vantage of the widespread consumer recognition of Bar-
clays’ LEHMAN BROTHERS mark. Tiger Lily attempts to
draw a distinction between “consumer recognition” as com-
pared with “goodwill,” and argues that it is actually trying
to trade on the “bad will” associated with the LEHMAN
BROTHERS mark. See Oral Arg. at 9:54–9:59; 11:01–
11:15. But we find no legal support for these subtle distinc-
tions, and we thus find that Tiger Lily’s attempts to
Case: 21-1107 Document: 71 Page: 17 Filed: 06/01/2022
TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC. 17
capitalize on the fame of the LEHMAN BROTHERS mark
weighs in favor of finding a likelihood of confusion.
We also agree with Barclays that Tiger Lily is placing
undue emphasis on a supposed lack of actual confusion.
Tiger Lily’s evidence on this point appears to consist of two
vague unsupported paragraphs in a declaration from a sin-
gle witness who generally asserted that the whisky has
been selling since early 2016 in the United Kingdom and
the United States without providing details to demonstrate
the scope of the sales activity. See J.A. 25580. The mere
fact that Tiger Lily’s whisky customers have not affirma-
tively said that they are confused by “ask[ing] for a banking
product or service” or “indicat[ing] that they felt deceived,”
see id., does not prove that customers have not in fact been
confused about whether the whisky is affiliated with Leh-
man Brothers; the “absence of evidence is not always evi-
dence of absence.” See, e.g., Int’l Ass’n of Machinists &
Aero. Workers, Local Lodge 964 v. BF Goodrich Aero. Aero-
structures Grp., 387 F.3d 1046, 1055 (9th Cir. 2004).
In sum, the Board’s findings with respect to the rele-
vant DuPont factors were supported by substantial evi-
dence in the record, and we need not consider additional
DuPont factors that have no relevance to the marks at is-
sue in this case. See Mighty Leaf Tea, 601 F.3d at 1346.
Moreover, Tiger Lily’s attempt to benefit from the fame of
the LEHMAN BROTHERS mark “plays a ‘dominant role in
the process of balancing the DuPont factors.’” See Bose, 293
F.3d at 1371 (quoting Recot, Inc. v. Becton, 214 F.3d 1322,
1327 (Fed. Cir. 2000)). Thus, we agree with the Board’s
legal conclusion that, in view of the DuPont factors, there
would be a likelihood of confusion.
III
Next, we turn to Tiger Lily’s argument that the Board
erred in finding that Barclays had a bona fide intent to use
its LEHMAN BROTHERS mark commercially. Relying on
the same evidence that it did for abandonment, Tiger Lily
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18 TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC.
insists that Barclays’ actions in publicly distancing itself
from the LEHMAN BROTHERS mark over the course of a
decade of nonuse demonstrate an intent not to use the
mark. Under these circumstances, Tiger Lily contends,
Barclays’ capacity to use the LEHMAN BROTHERS mark
is insufficient to demonstrate a bona fide intent to use it.
Barclays responds that its capacity to provide the fi-
nancial services listed in its application, in combination
with its longstanding and widespread offering of those ser-
vices in connection with other marks it owns, is substantial
evidence to support the Board’s finding that it did not lack
bona fide intent. Barclays also points to the same evidence
that supported its argument that the mark was not aban-
doned, namely, its licensing of the mark and its continued
use of the mark.
Under Lanham Act § 1(b), an applicant seeking to reg-
ister a mark on an intent to use basis must have a bona
fide intent to use the mark in commerce at the time of fil-
ing, measured by an objective standard. See 15 U.S.C.
§ 1051(b); M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368,
1377 (Fed. Cir. 2015). The Board considers whether an ap-
plicant had a bona fide intent to use the mark in commerce
based on objective evidence of intent, “on a case-by-case ba-
sis considering the totality of the circumstances.” M.Z.
Berger, 787 F.3d at 1376; see also Boston Red Sox Baseball
Club LP v. Sherman, 88 U.S.P.Q.2d 1581 (T.T.A.B. 2008);
Lane Ltd. v. Jackson Int’l Trading Co., 33 U.S.P.Q.2d 1351,
1355 (T.T.A.B. 1994). Bona fide intent is an issue of fact,
which we review for substantial evidence. M.Z. Berger, 787
F.3d at 1376–77.
In this case, we agree with Barclays that substantial
evidence supports the Board’s finding regarding Barclays’
bona fide intent. Under our case law, “the evidentiary bar
is not high,” and the circumstances must simply indicate
“that the applicant’s intent to use the mark was firm and
not merely intent to reserve a right in the mark.” Id. at
Case: 21-1107 Document: 71 Page: 19 Filed: 06/01/2022
TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC. 19
1376. The Board relied on Barclays’ clearly demonstrated
capability of using the LEHMAN BROTHERS mark, com-
bined with “the existence of a successful ongoing concern
such as Barclays has in the United States albeit under its
other marks,” as evidence that Barclays had a bona fide
intent to use the mark. Board Decision, slip op. at 59–60.
The Board pointed to the testimony of Barclays’ witness,
who testified regarding Barclays’ longstanding engage-
ment in the type of financial services identified in its appli-
cation. Id. at 60 (citing testimony from Alexander
Greenberg). And the Board also pointed to the licenses to
Lehman Brothers and Bloomberg LP as further evidence of
a “good faith intention to eventually use the mark in a com-
mercial sense.” Id.
Tiger Lily insists that Barclays has provided only a
“mere statement of subjective intent,” which under the
Board’s case law is insufficient to establish a bona fide in-
tent. See Appellant Br. at 25 (citing Lane, 33 U.S.P.Q.2d
at 1356). To support that position, Tiger Lily argues that
Barclays’ witness did not know details about a specific in-
tent to use the mark in connection with a specific set of ser-
vices. See id. at 26. But such evidence is not required to
meet the evidentiary threshold, nor did the Board rely on
Barclays’ witness’s testimony regarding any such specifics.
As noted above, the evidence demonstrates that Leh-
man Brothers and Barclays have continued to use the
LEHMAN BROTHERS mark since 2008. And it is not dis-
puted that Barclays currently offers, and has the capacity
to continue to offer, the goods and services identified in its
application for registration, nor is it disputed that those are
precisely the types of goods and services with which the
LEHMAN BROTHERS mark has been associated in the
past. Under the totality of the circumstances in this case,
the Board’s finding that Tiger Lily failed to show a lack of
bona fide intent by Barclays to use the LEHMAN
BROTHERS mark commercially is supported by substan-
tial evidence.
Case: 21-1107 Document: 71 Page: 20 Filed: 06/01/2022
20 TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC.
IV
Tiger Lily’s final challenge is based on the Board’s
treatment of certain testimony provided by Barclays’ wit-
nesses. Specifically, Tiger Lily argues that the Board erred
by failing to strike testimony from lawyer witnesses and
that the Board afforded such testimony improper weight.
Barclays responds that the Board did not abuse its discre-
tion in considering and affording proper weight to any of
the testimony.
We review the Board’s evidentiary rulings for abuse of
discretion, and we overturn them “only if they: (1) were
clearly unreasonable, arbitrary, or fanciful; (2) were based
on [] erroneous conclusion of law; (3) rest on clearly errone-
ous findings of fact; or (4) follow from a record that contains
no evidence on which the Board could rationally base its
decision.” Crash Dummy Movie, LLC v. Mattel, Inc., 601
F.3d 1387, 1390–91 (Fed. Cir. 2010) (citing Chen, 347 F.3d
at 1307). Decisions about credibility of witnesses and
weight of evidence are committed to the sound discretion of
the Board as the trier of fact. See Inwood Labs., Inc. v. Ives
Labs., Inc., 456 U.S. 844, 856 (1982) (“Determining the
weight and credibility of the evidence is the special prov-
ince of the trier of fact.”); see also Shoes by Firebug LLC v.
Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 1371 (Fed.
Cir. 2020) (“[I]t is not for us to second-guess the [Patent
Trial and Appeal] Board’s assessment of the evidence.”
(quoting Velander v. Garner, 348 F.3d 1359, 1378 (Fed. Cir.
2003))); Jandreau v. Nicholson, 492 F.3d 1372, 1376 (Fed.
Cir. 2007) (“[T]he Board [of Veterans’ Appeals] retains dis-
cretion to make credibility determinations and otherwise
weigh the evidence submitted, including lay evidence.” (cit-
ing Buchanan v. Nicholson, 451 F.3d 1331, 1336–37 (Fed.
Cir. 2006))).
Here, Tiger Lily objected to Barclays’ submission of cer-
tain testimonial evidence, and the Board stated that it
“carefully reviewed all of the testimony depositions” and
Case: 21-1107 Document: 71 Page: 21 Filed: 06/01/2022
TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC. 21
considered them in view of the objections. Board Decision,
slip op. at 15–16. On appeal, Tiger Lily simply repeats the
allegations that it made at the Board—namely, that the
testimony was based on hearsay, speculation, and wishful
thinking, and that privilege was improperly asserted. But
Tiger Lily’s vague assertions lead only to the conclusion
that Tiger Lily disagrees with the Board’s rulings on the
evidentiary issues and the weighing of the evidence. Tiger
Lily offers no basis to conclude that the Board abused its
discretion.
V
Before concluding, we note that Barclays filed a cross-
appeal purporting to challenge the Board’s dismissal of its
alternative grounds for opposing Tiger Lily’s marks,
namely, false suggestion of connection, dilution, and lack
of bona fide intent. Tiger Lily argues that, because Bar-
clays ultimately prevailed in its oppositions at the Board,
Barclays’ cross-appeal is improper under Federal Circuit
Rule 28.1 and this court’s decision in Bailey v. Dart Con-
tainer Corp. of Mich., 292 F.3d 1360 (Fed. Cir. 2002). We
agree with Tiger Lily.
Barclays responds that its cross-appeal is proper under
our precedent in Real Foods Pty Ltd. v. Frito-Lay N. Am.,
Inc., 906 F.3d 965, 980 (Fed. Cir. 2018). In that case, Frito-
Lay had opposed registration of Real Foods’ applied-for
marks on two separate grounds. First, Frito-Lay chal-
lenged that the marks were merely descriptive and had not
acquired distinctiveness, which the Board sustained. Id. at
971. And second, Frito-Lay challenged that the marks
were generic, which the Board dismissed. Id. Real Foods
appealed from the Board’s decision on lack of distinctive-
ness, and Frito-Lay cross-appealed on the issue of generic-
ness. Id. This court specifically considered whether Frito-
Lay’s cross-appeal was proper, finding that:
Frito-Lay has standing to challenge the [Board]’s
finding of non-genericness because Frito-Lay is
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22 TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC.
adversely affected by registrability on the supple-
mental register of a descriptive term that has not
acquired secondary meaning and therefore may
eventually become eligible for registration on the
principal register, while a generic term cannot.
Id. at 980 n.8. Thus, the court found that because the dis-
missed genericness claim would have resulted in a broader
preclusion than the sustained lack of distinctiveness claim,
Frito-Lay’s cross-appeal on the genericness issue sought to
expand its rights and was proper.
The instant case is distinguishable from Frito-Lay.
Here, Barclays presented four distinct grounds for oppos-
ing Tiger Lily’s marks, but each ground asks for the same
result—that the Board refuse registration of Tiger Lily’s
marks. Said differently, if Barclays prevails on any of its
other three grounds, the result will be exactly the same as
it currently stands. Accordingly, because under Federal
Circuit Rule 28.1 Barclays cannot appeal from a judgment
in which it prevailed, Barclays’ cross-appeal on the issues
of false suggestion, dilution, and lack of bona fide intent is
improper.
Notwithstanding the impropriety of Barclays’ cross-ap-
peal, we may consider Barclays’ arguments as alternative
grounds for affirmance. See Droplets, Inc. v. E*TRADE
Bank, 887 F.3d 1309, 1322 (Fed. Cir. 2018). However, be-
cause we affirm the Board’s decision with respect to likeli-
hood of confusion, we need not reach any alternative
grounds for affirmance.
CONCLUSION
We have considered Tiger Lily’s remaining arguments
but we find them unpersuasive. Accordingly, for the rea-
sons set forth, we affirm the Board’s decision with respect
to all aspects of Tiger Lily’s appeal, and we dismiss Bar-
clays’ cross-appeal.
AFFIRMED-IN-PART, DISMISSED-IN-PART
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TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC. 23
COSTS
No costs.