Federal Circuit Affirms TTAB Ruling Regarding Priority of Mark, Likelihood of Confusion, and Intent to Use

In Tiger Lily Ventures LTD. v. Barclays Capital Inc., Barclays PLC, No. 2021-1107, 2021-1228 (Fed. Cir. 2022), the Federal Circuit considered whether the TTAB properly precluded Tiger Lily (TL) from pursuing Lehman Brothers marks filed years after the bankruptcy of the investment bank and whether Barclays, a successor to Lehman’s preexisting marks, could properly pursue a new application for the mark. The Federal Circuit affirmed the TTAB decision holding that TL’s application did not have priority over Barclays, even though TL filed before Barclays. The Federal Circuit reasoned that although Barclays’ Lehman Brothers registrations had expired, TL admitted the mark was still in continuous use through a license back to Lehman and through Barclays own use. The Federal Circuit also affirmed that there was a likelihood of confusion between TL’s application and Barclays’ mark based on the identical nature of the marks, TL’s marketing tactics, and prior instances of financial service firms using their marks for food and beverages to promote their services. Additionally, the Federal Circuit affirmed that Barclays showed a bona fide intent to use its applied for mark. The Federal Circuit determined that since Barclays continuously used the Lehman Brothers marks up to the time of application and had the capacity to continue use of the mark, its application met the required showing for an intent-to-use application.