Developing a name with worldwide recognition is often the goal for brand owners. A globally recognized brand advertises itself and can even be a shorthand descriptor for particular goods or services. In the financial services industry, few names trigger as much recognition (and revulsion) as Lehman Brothers. When the financial firm collapsed in 2008, it was one of the biggest bankruptcies in US history and precipitated a global financial crisis. Now a British company, Tiger Lily Ventures (TLV), wants to re-package the LEHMAN BROTHERS trademark as a line of beer, whiskeys, and restaurants.
During its operation, Lehman Brothers had several trademarks registered for financial services, including LEHMAN BROTHERS. Barclays PLC acquired parts of the failed firm in bankruptcy, including its trademarks. In 2013, Barclays attempted to revive the LEHMAN BROTHERS based on an intent-to-use trademark application for financial services.
TLV’s initial application for LEHMAN BROTHERS was denied by the US Patent and Trademark Office (PTO) because the PTO concluded that consumers would falsely imply an association with the defunct Lehman Brothers and TLV’s LEHMAN BROTHERS mark for beer or spirits. Nevermind that the Lehman Brothers firm was defunct for 5 years this point, the PTO considered the Lehman Brothers mark so famous that consumers would falsely presume a connection to the failed financial firm.
In its response, TLV argued that Lehman Brothers’ failure was such a universal event that it became synonymous with a feeling of “impending doom arising out of imminent failure” – and TLV’s trademark was a parody on this feeling, and thus functional as a trademark.
The PTO eventually allowed TLV’s application to proceed, but it was opposed by Barclay’s, who pointed back to the fame of the LEHMAN BROTHERS mark and it would lead to a false association with the Lehman Brothers firm. Additionally, Barclay’s argued that even though Lehman Brothers (the company) was bankrupt, it continued to use the LEHMAN BROTHERS trademark since 2008 as it wrapped up its affairs.
TLV responded that Barclays had allowed the LEHMAN BROTHERS marks to expire by failing to file the required maintenance filings. TLV further argued that Barclays wanted to distance themselves from the toxic LEHMAN BROTHERS mark by rebranding those trademarks under the Barclays name, and that its attempt to re-file for the LEHMAN BROTHERS trademark was simply an attempt to “squat” on the name and reserve rights in it without ever intending to use it.
Indeed, at least 5 years passed between when Lehman Brothers collapsed (and its trademark ceased to be in “use” for financial services) and when Barclays attempted to re-apply for the LEHMAN BROTHERS mark. When trademarks are not used for 3 consecutive years, and the owner does nothing to try to resume use of the mark, PTO presumes that the mark is abandoned. At that point another user is free to use the mark and attempt to claim trademark rights.
The litigation between TLV and Barclays is ongoing but the lesson for trademark owners is that reviving a famous mark comes with certain risks because of the extra legal protection that famous marks receive under trademark law. Even for goods or services that are unrelated to those that made the old mark famous, the strong public connection that makes a mark famous means that a revival of the mark, even for unrelated goods, may be refused by the PTO.
For now, you can try all three flavors of Lehman Brothers whisky but it remains to be seen whether TLV can raise a glass to a LEHMAN BROTHERS trademark registration.