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

Case: 21-1107 Document: 71 Page: 7 Filed: 06/01/2022

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.

Case: 21-1107 Document: 71 Page: 9 Filed: 06/01/2022

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

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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

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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.