[00:00:00] Speaker 03:
Our first case is Tiger Lilly Ventures versus Barclays Capital, 2021-1107.

[00:00:08] Speaker 03:
Before we begin, the panel has determined that Barclays has an improper cross appeal, and so you can

[00:00:26] Speaker 03:
Continue to make the points in your normal time.

[00:00:30] Speaker 03:
You will not get a second argument time.

[00:00:34] Speaker 03:
And the added word count was improper.

[00:00:39] Speaker 03:
But that is in the past.

[00:00:41] Speaker 03:
So without further ado, we'll proceed.

[00:00:44] Speaker 03:
Mr. Carson.

[00:00:53] Speaker 01:
May I please the court?

[00:00:54] Speaker 01:
My name is Robert Gass and I appear here together with John Lane on behalf of Tiger Lily Ventures Limited.

[00:01:04] Speaker 01:
We are being haunted by the ghosts of trademarks past where the malevolent spirit in this case is not the whiskey brand of the appellant but rather say we

[00:01:18] Speaker 01:
Barclays Capital for you see in nearly 14 years the court should note ever since the fabled collapse of Lehman Brothers Bank and Barclays Capital purchased the assets of Lehman Brothers but not the companies themselves.

[00:01:35] Speaker 01:
There has been no bona fide use by Barclays Capital in the ordinary causes as contemplated by the Lanham Act section 1127.

[00:01:45] Speaker 01:
There's been no services, or there have been no services.

[00:01:49] Speaker 01:
There have been no goods developed.

[00:01:51] Speaker 01:
There's been no marketing of any form of Lehman Brothers banking product or services.

[00:01:58] Speaker 04:
Well, now, the services, as to services, the appellees urge that there's evidence that under the Lehman Brothers mark,

[00:02:12] Speaker 04:
persons operating the winding down process for Lehman Brothers have, among other things, managed properties.

[00:02:20] Speaker 04:
Why isn't that a service?

[00:02:23] Speaker 01:
Because it's dependent upon, and this was a question, actually, that we asked Mr. Greenberg during cross-examination in deposition as to, well, how is this a service?

[00:02:34] Speaker 01:
Is this a license?

[00:02:35] Speaker 01:
Is it a controlled license?

[00:02:38] Speaker 01:
What are they doing?

[00:02:39] Speaker 04:
Well, let me divide the question.

[00:02:42] Speaker 04:
The one question is, is this a service that's attributable to Barclays?

[00:02:46] Speaker 04:
The other is, is this a service being done

[00:02:49] Speaker 04:
under the Lehman Brothers mark.

[00:02:51] Speaker 04:
Do you dispute that the management of properties, which I assume involves, for example, if they're commercial properties, maintenance, refunding, and so forth, is it your view that that doesn't constitute a service even with respect to the Lehman Brothers employees themselves?

[00:03:12] Speaker 01:
Well, in respect of the Lehmann Brothers employees, that's difficult to define because this, in our respect for submission, was a winding down process.

[00:03:20] Speaker 04:
Right, but winding down can involve, as in this case, an elaborate set of activities, right?

[00:03:27] Speaker 01:
very much so if there's an intent to resume use if there's still an intent for that to be a goodwill that's being maintained within the mark there can be two different types of bankruptcies and we appreciate that there's a bankruptcy where there is an underlying business which is going to emerge

[00:03:43] Speaker 01:
from bankruptcy at the end of the day so whereby a company for example will still wish to maintain goodwill within the mark within a brand for the purposes hypothetically of either emerging from bankruptcy at the end of the day or alternatively selling that mark at the end of the day

[00:04:01] Speaker 01:
That's one type of bankruptcy.

[00:04:02] Speaker 01:
There's another type of bankruptcy, which is an asset strip or which is a winding down of a company where there's no intent to resume any use of the mark, where whilst you do have bankruptcy functions and bankruptcy business and even services.

[00:04:18] Speaker 04:
But I'm not clear that I understand exactly the distinction you're drawing because are you saying that on the day after a bankruptcy,

[00:04:26] Speaker 04:
which is designed to wind down the assets, close the business, not reemerge from bankruptcy as an ongoing enterprise.

[00:04:35] Speaker 04:
On that day that the mark becomes abandoned because there is no intent at the end of the entire winding down period

[00:04:45] Speaker 04:
to resume business as it had been done before?

[00:04:48] Speaker 01:
That's a great question, and it's a very fact-intensive inquiry, which the board should go into and probably go into.

[00:04:56] Speaker 01:
But we find on October the 21st of 2008, Barclays Capital putting out a press release stating, we are rebranding the entirety of Lehman Brothers.

[00:05:06] Speaker 01:
Everything that was a Lehman Brothers good or service, if it was an index,

[00:05:10] Speaker 01:
We state that is now no longer going to be, that's no longer going to be Lehman Brothers anymore, that is now going to be Barclays.

[00:05:19] Speaker 01:
So anything that they had taken over to themselves and were looking for there to be a further goodwill that was going to inure into the mark, they were publicly stating, and there was a public statement and a marketing campaign to say, we are no longer that.

[00:05:32] Speaker 01:
So it's not necessarily the case that it can never be the case, we're dealing in law.

[00:05:36] Speaker 01:
There's a level of artistry with respect, Your Honor, that one can never lay hard and fast mathematical rules and say, is it always the case that that can transpire?

[00:05:49] Speaker 01:
The question is, what transpired here in these circumstances?

[00:05:53] Speaker 01:
Here in these circumstances, Barclays branded away.

[00:05:57] Speaker 01:
Barclays said no more.

[00:05:58] Speaker 02:
But this is a substantial evidence review, correct?

[00:06:01] Speaker 02:
So where does that leave us?

[00:06:02] Speaker 02:
You're not seeking a reversal.

[00:06:04] Speaker 02:
You're seeking a remand.

[00:06:06] Speaker 02:
So you're essentially saying they reviewed the evidence, but what?

[00:06:10] Speaker 02:
What are they supposed to do on remand that they didn't do?

[00:06:13] Speaker 02:
Re-evaluate the facts the way you'd like them re-evaluated?

[00:06:16] Speaker 01:
Well, not to take the inferences that they shouldn't have taken in those circumstances, because we only deal here with two levels of evidence.

[00:06:26] Speaker 01:
The maximum, in the 30,000 pages,

[00:06:29] Speaker 01:
that was served by Barclays in these circumstances.

[00:06:34] Speaker 01:
There was a deep trawl of any reference to Lehman Brothers anywhere.

[00:06:38] Speaker 01:
There were two aspects that they stated should in your to benefit for them.

[00:06:43] Speaker 01:
The first was a brace license, which was a British license.

[00:06:47] Speaker 01:
The second was in respect to the winding down process.

[00:06:51] Speaker 01:
What we respectfully submit is that first and foremost, there should that the Tiger Lily did meet its burden

[00:07:02] Speaker 01:
in respect to showing abandonment on a presumptive level.

[00:07:06] Speaker 01:
Secondly, that the evidence that was submitted by Barclays in the course of the record did not displace that presumptive burden that was advanced by Tigerlily.

[00:07:20] Speaker 01:
And thirdly, that the inferences that were drawn should not have been drawn in these circumstances.

[00:07:24] Speaker 01:
The evidence is the same that we have.

[00:07:29] Speaker 01:
But with respect, on the face of the case law that we have, Your Honor, and on the face of what was in fact argued before the lower court, before the board, there should never have been a finding in these circumstances that first

[00:07:43] Speaker 02:
that there was no abandonment and secondly so you're asking for a do-over you're asking for a reversal you're saying even under the substantial evidence standard they were wrong yes okay let me turn before your time runs out to the likelihood of confusion in this case because

[00:07:59] Speaker 02:
I appreciate you've got financial services in one corner and then you've got these bar and stuff.

[00:08:06] Speaker 02:
But in the other related case, you all conceded or admitted or gave in that bar services were a related service, right?

[00:08:17] Speaker 01:
Not quite.

[00:08:19] Speaker 01:
I don't quite see the concession that was there.

[00:08:23] Speaker 02:
Didn't, in that other related case, you say that your bar services are related to Barclays Services?

[00:08:29] Speaker 01:
No.

[00:08:30] Speaker 01:
I don't believe so.

[00:08:32] Speaker 02:
So your view is that bar services and whatever the other stuff?

[00:08:37] Speaker 01:
And financial services, between bar services and financial services.

[00:08:40] Speaker 02:
So you've never made any admission or concession that bar services are related to services?

[00:08:45] Speaker 01:
To financial services, no.

[00:08:47] Speaker 01:
Not as far as I'm aware.

[00:08:49] Speaker 01:
And I might be wrong.

[00:08:50] Speaker 01:
And I could stand to be corrected on the face of my own briefs.

[00:08:53] Speaker 01:
But I don't believe so.

[00:08:55] Speaker 01:
One is a whiskey, and one is financial services.

[00:08:59] Speaker 01:
And my respectful submission, the twain do not meet.

[00:09:03] Speaker 01:
And one of the questions that we've been asking all the way along, and if we might say, is who are the consumers here that stand to be confused?

[00:09:15] Speaker 01:
There is no deception that's going on here from Tiger Lilly's perspective.

[00:09:21] Speaker 02:
But isn't the analysis a bit different?

[00:09:24] Speaker 02:
If we're talking about generic terms, blue moon or whatever, then certainly there's a small likelihood that a consumer is going to be confused when it sees these generic terms, however, put together versus something else.

[00:09:38] Speaker 02:
Here we've got the actual mark.

[00:09:39] Speaker 02:
We've got Lehman Brothers.

[00:09:41] Speaker 02:
Lehman Brothers doesn't have any other arguable meaning

[00:09:44] Speaker 02:
other than Lehman Brothers.

[00:09:46] Speaker 02:
The meaning is the same no matter whether you put it on financial services or on beer.

[00:09:51] Speaker 01:
So let's call it the difference between consumer recognition

[00:09:55] Speaker 01:
and goodwill.

[00:09:57] Speaker 01:
And there's a difference between the two.

[00:09:58] Speaker 01:
Tiger Lily Ventures, what they're seeking to do is to amuse and not confuse.

[00:10:06] Speaker 01:
It is a ridicule of the fact that a bank is now putting out a whiskey.

[00:10:13] Speaker 01:
So you're in effect arguing parody.

[00:10:16] Speaker 01:
Tantamount to parody.

[00:10:18] Speaker 04:
There's no real... I didn't see.

[00:10:20] Speaker 04:
I didn't really see an argument about the parody line of authority in your brief.

[00:10:25] Speaker 04:
It seemed to me you were arguing no likelihood of confusion simply because the products are different.

[00:10:33] Speaker 01:
That's because within trademark law, with respect, parody has not been fully fleshed out.

[00:10:41] Speaker 04:
Right.

[00:10:42] Speaker 04:
I understand that.

[00:10:42] Speaker 04:
But I would have thought that

[00:10:45] Speaker 04:
If you are really pressing this as a parody case, you would have taken

[00:10:50] Speaker 04:
The parody line of cases, fleshed or not.

[00:10:55] Speaker 01:
Your Honor's correct.

[00:10:58] Speaker 01:
There are arguments throughout our brief that do speak to, that do bespeak to, the fact that what Tiger Lilly is seeking to do here is to trade upon the bad will rather than the good will of the brand.

[00:11:11] Speaker 01:
You see, Your Honor, we're dealing here with a remarkable, a case of first impression, if it were,

[00:11:19] Speaker 01:
to put it in this regard.

[00:11:22] Speaker 01:
The case of first impression is this, there's never been, as far as I've seen on the case law, a time where a mark has had a cataclysmic turn into collapse whereby, whereas within its main

[00:11:36] Speaker 01:
Business it had goodwill and then it descended into badwill a made off the intern if one could If one could put it at that level and what and what Tiger Lily is seeking to do is to take a sardonic sarcastic approach if one sees its branding is Lehman Brothers ashes of disaster

[00:11:56] Speaker 01:
And so that, rather than seeking to trade on somebody's goodwill, that which a business has built up, is to trade on the badwill which has come on the back end of its collapse.

[00:12:08] Speaker 01:
So people can, for want of better phraseology, give a proverbial gesture to the banking industry through the medium of alcohol.

[00:12:18] Speaker 03:
Council, you enter your rebuttal time.

[00:12:20] Speaker 03:
You can continue or say what as you wish.

[00:12:23] Speaker 01:
I will continue later during my rebuttal.

[00:12:27] Speaker 01:
Thank you very much.

[00:12:27] Speaker 02:
Could I just make one other point?

[00:12:29] Speaker 02:
Just maybe while you're sitting down for rebuttal on Appendix 7, the fourth bullet point, it seems that the board, at least, thought that you concede at that point.

[00:12:41] Speaker 02:
So tell me.

[00:12:42] Speaker 02:
Maybe you could look at that and tell me why I'm wrong, because it seems to me appropriate.

[00:12:47] Speaker 01:
I will do you.

[00:12:47] Speaker 03:
Thank you.

[00:12:49] Speaker 03:
Thank you for that.

[00:13:07] Speaker 00:
May it please the court, I'm Eric Shimanoff from Cal and Leibowitz & Lappman on behalf of the appellees Barclays PLC and Barclays Capital Inc.

[00:13:16] Speaker 00:
To misquote Mark Twain, the news of Lehman Brothers' death has been greatly over-exaggerated.

[00:13:24] Speaker 00:
The TTAB correctly found that substantial evidence showed the Lehman Brothers mark had not been abandoned.

[00:13:32] Speaker 00:
When Lehman Brothers filed for bankruptcy in 2008, it was left with hundreds of billions of dollars worth of assets.

[00:13:41] Speaker 00:
Since that time, it has basically been acting as an asset manager.

[00:13:45] Speaker 00:
investing it, maintaining, selling its vast portfolio of commercial real estate, securities, derivative swaps.

[00:13:55] Speaker 00:
All of this has been a service provided for the benefit of the creditors of Lehman Brothers.

[00:14:01] Speaker 02:
But this is a process, the bankruptcy, which is going to eventually conclude.

[00:14:06] Speaker 02:
I assume it's still ongoing.

[00:14:09] Speaker 00:
Yes.

[00:14:09] Speaker 02:
And so we all contemplate a conclusion.

[00:14:13] Speaker 02:
And at that conclusion, it will be over, final, right?

[00:14:17] Speaker 00:
At that conclusion, Lehman Brothers' use of the Lehman Brother mark will be over.

[00:14:22] Speaker 00:
That is correct.

[00:14:23] Speaker 00:
However, that has not happened yet.

[00:14:25] Speaker 00:
And the first prong of the statutory definition of abandonment is cessation of use.

[00:14:32] Speaker 00:
Tiger Lilly is putting the car before the horse by focusing on an intent not to resume.

[00:14:38] Speaker 00:
That only comes into play once you show the first prong of abandonment, which is cessation of use.

[00:14:44] Speaker 00:
Here, there has not been a cessation of use.

[00:14:46] Speaker 00:
Both Lehman Brothers and Barclays itself consistently and continuously have utilized the Lehman Brothers mark in connection with various planning.

[00:14:54] Speaker 02:
And you don't think it would be fair to surmise that that will come to an end, that when we're looking in the future in terms of what the future holds, that we're on a wind down, not a continuing path and not a wind down?

[00:15:09] Speaker 02:
Is that fear?

[00:15:10] Speaker 00:
I think it's fair to say, yes, at some point that will come to an end.

[00:15:14] Speaker 00:
But I do want to point out that has been an argument Tiger Lilly has made for the last eight years, consistently saying that eventually this will wind down, or saying this is coming soon.

[00:15:25] Speaker 00:
But it hasn't happened.

[00:15:26] Speaker 00:
It hadn't happened by the time of trial.

[00:15:28] Speaker 00:
And that's the evidence that you see if you rely on it.

[00:15:30] Speaker 02:
So you're saying if next year notices it's all done, they can run back to the PTAB and say, OK, now we're in?

[00:15:37] Speaker 00:
Well, I do not agree that they would still be entitled to register the Lehman Brothers mark because there are additional grounds upon which we sought to oppose that mark.

[00:15:47] Speaker 00:
One being false suggestion of a connection, which the board made a legal error in analyzing it.

[00:15:53] Speaker 00:
They required that Barclays was required to show that Lehman Brothers was its own identity to establish a Section 2A false suggestion of a connection claim.

[00:16:04] Speaker 00:
That holding is expressly contrary to this court's opinions and Jula's vigilance.

[00:16:10] Speaker 00:
This court twice told the TTAB,

[00:16:14] Speaker 00:
that so long as a party can maintain what was formerly known as standing in the TTAB, now it's called Entitlement to a Statutory Cause of Action, so long as you could make the basic showing of standing at the TTAB, then you could bring a Section 2A false suggestion claim or even a Section 2D likely confusion claim on behalf of a third party.

[00:16:35] Speaker 04:
Where would the standing be, say, 10 years after the winding down process is complete?

[00:16:42] Speaker 00:
The standing would be, one, that Barclays is the owner of the Lehman Brothers' trademarks.

[00:16:49] Speaker 00:
Right.

[00:16:50] Speaker 04:
Let's assume that there is an ironclad case of abandonment after no further services are being provided under Lehman.

[00:17:00] Speaker 04:
The people with Lehman cards and Lehman offices have been closed.

[00:17:05] Speaker 04:
The cards are gone.

[00:17:06] Speaker 04:
No further activity, so that there's an ironclad abandonment case.

[00:17:11] Speaker 04:
There wouldn't be any 2A case, would there?

[00:17:14] Speaker 00:
I respectfully disagree.

[00:17:16] Speaker 00:
First of all, the statute expressly allows a section 2A claim for false suggestion, whether an institution is, quote, living or dead.

[00:17:24] Speaker 00:
In fact, the 2A determination is irrespective.

[00:17:27] Speaker 00:
Well, but who would have standing in that situation?

[00:17:29] Speaker 00:
Well, with respect to standing,

[00:17:32] Speaker 00:
That actually was not raised on the appeal.

[00:17:35] Speaker 00:
And that issue was waived.

[00:17:37] Speaker 00:
I understand that Article 3 standing cannot be waived.

[00:17:41] Speaker 00:
But this court made clear last year that if you do not raise whether a party had an entitlement to a statutory cause of action at the DPAD.

[00:17:51] Speaker 00:
Wait, waived on appeal?

[00:17:51] Speaker 02:
I mean, this wasn't a basis for which the board decided this case, right?

[00:17:56] Speaker 02:
So you're saying they waived their argument by not responding to your cross appeal?

[00:18:03] Speaker 00:
No, no.

[00:18:04] Speaker 00:
My point is that they didn't contend on their appeal

[00:18:08] Speaker 00:
that the parties, meaning Barclays, had a lack of standing to bring the case before the TTAB.

[00:18:15] Speaker 00:
They argued it below.

[00:18:16] Speaker 00:
They lost.

[00:18:17] Speaker 00:
They did not appeal that issue on their primary appeal of likely confusion.

[00:18:21] Speaker 00:
And if you show standing for one aspect of an opposition, you have standing for any claim in an opposition.

[00:18:28] Speaker 00:
And that is well established.

[00:18:29] Speaker 04:
What about the parody argument?

[00:18:32] Speaker 00:
I also think the parody argument was waived.

[00:18:34] Speaker 00:
It was not raised on appeal.

[00:18:36] Speaker 00:
It was raised specifically below and briefed very, very thoroughly by both parties.

[00:18:42] Speaker 00:
But in terms of a claim of likely dilution, the statute makes clear that parity is not a defense to registration of a mark.

[00:18:51] Speaker 00:
And this court has also made clear that in the context of likely confusion, parity is not a defense to a mark that otherwise would be confusingly similar, as we have seen here.

[00:19:01] Speaker 04:
Do you regard the Lehman Brothers' mark as cleanest?

[00:19:06] Speaker 00:
I think the Lehman Brothers mark is one of the most famous marks in the world.

[00:19:10] Speaker 04:
And yet the board found that it was for the purpose of dilution that it was not famous.

[00:19:16] Speaker 04:
So does that apply to the likelihood of confusion issue as well?

[00:19:21] Speaker 00:
Well, two points, Your Honor.

[00:19:22] Speaker 00:
First of all, the level of fame required for a claim of likely dilution is much higher than it is for a claim of likely confusion.

[00:19:30] Speaker 00:
And second, that's not exactly what the TTAB said.

[00:19:34] Speaker 00:
The TTAB said that Barclays had not proffered evidence concerning some of the enumerated fame factors in the statute.

[00:19:42] Speaker 00:
And we disagree with that, because the two factors, meaning publicity of the mark by third parties and actual recognition of the mark, we believe there was significant evidence submitted, including in the nature of third party, thousands of third party articles, thousands of pop culture references, Academy Award winning films, TV shows.

[00:20:03] Speaker 00:
Lyrics, movies, books have all been written about Lehman Brothers, including a play that just ran on Broadway called The Lehman Trilogy.

[00:20:11] Speaker 02:
Well, your friend called it fabled.

[00:20:13] Speaker 02:
You know, this is getting harder rather than easier for me, at least.

[00:20:18] Speaker 02:
And that's because it seems like a lot of your answers, which may be complete and persuasive, are based not on arguing for an affirmance of what the board did, but arguing for

[00:20:31] Speaker 02:
They were wrong, but if they had been right, that would have gone this way.

[00:20:36] Speaker 02:
Do you understand my concern here?

[00:20:39] Speaker 02:
It seems like all of your answers in defense to the conclusion the board reached are based on an analysis and legal questions where the board didn't go the way you wanted it to.

[00:20:52] Speaker 00:
Well, with respect first, because we got into the other questions, I haven't really discussed likely confusion, which we obviously believe the board got correct.

[00:21:03] Speaker 00:
And this court should affirm on those grounds alone.

[00:21:07] Speaker 02:
If Judge Bryson is done with his question.

[00:21:10] Speaker 02:
Can we talk a little about what the board concluded?

[00:21:12] Speaker 02:
Because it seems to me

[00:21:14] Speaker 02:
The footnote contains 50 references to Trump.

[00:21:19] Speaker 02:
Well, Trump seems to me to be sui generis in this context with respect to fame and the wide swath of services that he may be involved in.

[00:21:29] Speaker 02:
So leave that aside.

[00:21:30] Speaker 02:
So then we're talking about Capital One.

[00:21:33] Speaker 02:
Well, when somebody puts their name, a company puts its name on a baseball stadium or a basketball stadium, that brings in a whole swath of services that wouldn't otherwise inure to the company in the absence of that.

[00:21:46] Speaker 02:
So what's the basis other than, and I don't know if you have a comment on the question I asked your friend, which is whether they made an admission or a concession about bar services in the related proceeding.

[00:21:58] Speaker 02:
So tell me about why there's likelihood of confusion.

[00:22:01] Speaker 00:
Of course.

[00:22:03] Speaker 00:
Well, all of the relevant DuPont factors support a finding of likely confusion.

[00:22:08] Speaker 00:
The marks are identical in sight, sound, and connotation, as Your Honor said.

[00:22:12] Speaker 00:
But that's not enough.

[00:22:12] Speaker 02:
As the board said, there needs to be more.

[00:22:15] Speaker 00:
Yes.

[00:22:15] Speaker 00:
And I would be happy to go through all the relevant factors, including the relatedness.

[00:22:19] Speaker 04:
Please do.

[00:22:19] Speaker 04:
I'm interested as well.

[00:22:21] Speaker 00:
So would you like me just to go directly?

[00:22:22] Speaker 04:
Go through the factors and tell us why Lehman Brothers, a financial institution with a mark that was initially registered bar financial services,

[00:22:31] Speaker 04:
is similar enough to bar services and the like?

[00:22:36] Speaker 00:
Of course.

[00:22:36] Speaker 00:
So why don't I just skip right to the relatedness of the services?

[00:22:39] Speaker 00:
Because I think everyone sees that the other factors, the marks are identical.

[00:22:44] Speaker 00:
The Lehman mark is famous.

[00:22:47] Speaker 00:
Clearly, there was an intent here by Tiger Lilly to create an association and ride on the goodwill.

[00:22:53] Speaker 00:
of Lehman Brothers, calling it an obvious mark with great intrinsic value.

[00:22:58] Speaker 00:
They used the Lehman Brothers fonts, they referenced Lehman Brothers in their marketing materials, and they admitted on two office action responses to the USPTO that they intended to create this association.

[00:23:12] Speaker 00:
But the big question is how are the services related?

[00:23:15] Speaker 00:
Well, because the marks are identical, Barclays need only show

[00:23:19] Speaker 00:
viable relationship between the goods and this court in the TTAB have made clear for decades that goods need not be readily related or even marketed to the same class of consumers for there to be a relationship sufficient to show likely confusion.

[00:23:36] Speaker 00:
Here first and foremost Lehman Brothers itself in the past

[00:23:40] Speaker 00:
has released numerous promotional items with the Lehman Brothers brand, from pens to t-shirts to hats, including those related to alcoholic beverages.

[00:23:51] Speaker 02:
But aren't those just, I'm sorry to interrupt, but just on that point itself, weren't those done internally and for swag and for its customers?

[00:24:00] Speaker 02:
And doesn't the case law draw a distinction between stuff that's on the market for sale and stuff that's used internally for promotion?

[00:24:09] Speaker 00:
Okay, well I would disagree it was used internally.

[00:24:12] Speaker 00:
As Your Honor noted, it was distributed directly to clients.

[00:24:15] Speaker 00:
That is the public.

[00:24:16] Speaker 00:
That is the relevant audience in a question of likelihood of confusion.

[00:24:21] Speaker 00:
So with respect to that, they were publicly disseminated.

[00:24:24] Speaker 00:
They're still traded by members of the public today.

[00:24:28] Speaker 00:
But the fact that they did this shows that there is a connection between the goods.

[00:24:33] Speaker 00:
And the standard here is very minimal when the marks are identical.

[00:24:37] Speaker 00:
And as Your Honor pointed out, there's no other meaning of Lehman Brothers.

[00:24:41] Speaker 00:
With respect to other evidence, it's clear that Tiger Lilly was seeking to target those familiar with the Lehman Brothers mark.

[00:24:51] Speaker 00:
That also shows the relationship goods.

[00:24:54] Speaker 00:
They thought consumers would make that connection.

[00:24:57] Speaker 04:
If you could go back to your answer to Judge Prost, I think you mentioned the swag.

[00:25:05] Speaker 04:
Was there anything else that you

[00:25:07] Speaker 04:
relates the financial services of Lehman Brothers to the activities of Tigard and Moses.

[00:25:14] Speaker 00:
The other evidence we relied upon, setting the Trump marks aside, were significant evidence of third parties who had registrations or common law use for a single mark that covered both parties' goods and services.

[00:25:29] Speaker 00:
And again, that kind of evidence is typically relied upon and approved by this court to show the relatedness of the parties' goods.

[00:25:36] Speaker 00:
Because if consumers see that other companies are offering

[00:25:40] Speaker 00:
both party services from a single source, they're more likely to think that the party services and goods here emanate from a single source.

[00:25:49] Speaker 03:
Is there anything in the record evidencing that financial people drink?

[00:25:55] Speaker 00:
That, I think, probably is an admission that maybe is implied somewhere in Tiger Lilly's marketing materials.

[00:26:04] Speaker 00:
I will concede I don't recall them admitting that the services were related.

[00:26:09] Speaker 00:
I will concede that.

[00:26:10] Speaker 00:
That was an argument.

[00:26:11] Speaker 00:
And we believe the TTAB correctly found, based on the substantial evidence, that there was a viable relationship between the parties, goods, and services.

[00:26:21] Speaker 00:
And, Your Honor, to just address one point you made before, I don't think we're saying that the TTAB got the facts wrong.

[00:26:29] Speaker 00:
With respect to the Section 2A claim, they didn't determine that Lehman Brothers wasn't Lehman Brothers' identity.

[00:26:36] Speaker 00:
I think we all agree it is.

[00:26:38] Speaker 00:
They just made an error of law, precluding Barclays from even raising that argument

[00:26:44] Speaker 00:
because they said it was not Barclay's identity.

[00:26:47] Speaker 00:
Barclays didn't argue it was Barclay's identity.

[00:26:50] Speaker 00:
We argued from the start that it was Lehman Brothers' identity.

[00:26:53] Speaker 00:
We argued under Jeweler's vigilance.

[00:26:56] Speaker 00:
And this court affirmed most recently in the piano case that you can assert the right of a third party.

[00:27:03] Speaker 00:
You don't have to show it's your own identity.

[00:27:05] Speaker 00:
In Jeweler's vigilance, the identity for De Beers

[00:27:08] Speaker 00:
was a third party.

[00:27:10] Speaker 00:
It wasn't even a member of the Opposers Trade Association group.

[00:27:14] Speaker 00:
It was wholly unrelated.

[00:27:16] Speaker 04:
I'm trying to think of a case that you would agree would be outside of the realm of what the Lehman Brothers mark would protect for purposes of likelihood of confusion.

[00:27:32] Speaker 04:
Suppose a rock band called themselves Lehman Brothers.

[00:27:37] Speaker 04:
Covered?

[00:27:37] Speaker 04:
Not covered.

[00:27:39] Speaker 00:
I hate to speak in hypotheticals, obviously.

[00:27:41] Speaker 00:
Oh, that's when you deal in hypotheticals all the time.

[00:27:44] Speaker 00:
Of course, Your Honor.

[00:27:45] Speaker 00:
Obviously, there are numerous factors to consider under the DuPont test.

[00:27:52] Speaker 00:
I can't say in the abstract whether certain services would or not be confusingly similar, especially when you have to look at other factors here, like intent to create association.

[00:28:02] Speaker 04:
Well, let me put it this way.

[00:28:04] Speaker 04:
Your evidence had a bottle

[00:28:07] Speaker 04:
of alcohols of some form, I guess whiskey, that had Lehman Brothers on it, I believe.

[00:28:12] Speaker 04:
I believe that was an item that was in evidence.

[00:28:14] Speaker 04:
Am I correct?

[00:28:15] Speaker 00:
Your Honor, I see I'm out of time.

[00:28:17] Speaker 00:
May I continue to answer?

[00:28:18] Speaker 00:
Of course, yeah.

[00:28:18] Speaker 00:
Thank you, Your Honor.

[00:28:19] Speaker 00:
The evidence we showed from Lehman Brothers' own swag, is that what you're referring to?

[00:28:25] Speaker 00:
Yes.

[00:28:25] Speaker 00:
There were, I believe there was a decanter, there was a wine set, and one wine book, and there may have been a few others.

[00:28:33] Speaker 04:
So I'm trying to get a sense of whether, to the extent to which you're relying on those pieces of swag as the basis for your suggestion that there's a likelihood of confusion.

[00:28:45] Speaker 04:
If those particular exhibits were not in the record,

[00:28:49] Speaker 04:
Would you still have a likelihood of confusion, and if so, why?

[00:28:53] Speaker 00:
Yes, I believe I would, because of the other evidence we submitted, which includes their intent to target the same class of consumers, those familiar with the Lehman Brothers financial firm, and also because of the evidence of the third party registrations and common law uses that show both parties' products emanating from a single source.

[00:29:13] Speaker 00:
OK, thank you.

[00:29:14] Speaker 00:
Thank you.

[00:29:19] Speaker 01:
Your Honours, three points if I may.

[00:29:26] Speaker 01:
First and foremost, Your Honours, on the face of the record, Your Honours, correct.

[00:29:29] Speaker 01:
I can't go back from what it says in the answer.

[00:29:32] Speaker 01:
There seems to be an admission there.

[00:29:34] Speaker 01:
The only thing I can state is Mayor Culper.

[00:29:37] Speaker 01:
That seems to have been an error on the face of the amended answer.

[00:29:42] Speaker 01:
Three points realistically to deal with.

[00:29:44] Speaker 01:
The swag point.

[00:29:46] Speaker 01:
Your Honour, the law is clear that resales by third parties, things that go on eBay, Craigslist, etc.

[00:29:56] Speaker 01:
do not in your back because it's not coming from the original source.

[00:29:59] Speaker 01:
Otherwise, my firm GS2 Law would be known for very ropey golf umbrellas that fall apart at a breath of wind.

[00:30:07] Speaker 01:
That swag is there to be promotional throwaway items that are part of yesteryear.

[00:30:15] Speaker 01:
One of the second questions that comes to mind from having heard my own friend, Mr. Shimanoff, is what class of customers are we talking about here?

[00:30:26] Speaker 01:
Barclays sold off its entire banking division regarding Lehman Brothers.

[00:30:32] Speaker 01:
it sold them off.

[00:30:33] Speaker 01:
So who are these consumers, this mythical consumer that Barclays is talking about?

[00:30:38] Speaker 01:
Or is it talking about the public at large?

[00:30:40] Speaker 01:
The public at large knows that there was a bank at a certain point called Lehman Brothers that had its own downfall and therefore

[00:30:49] Speaker 01:
they are the generalized consumers to whom Barclays does not currently target and hasn't targeted arguably since 2008.

[00:30:58] Speaker 01:
There is no consumer from which they can talk to.

[00:31:02] Speaker 01:
Then the third point, which is where they spoke about the relatedness of services of other third parties.

[00:31:08] Speaker 01:
And we should just dwell on that briefly because there is not one case that they can talk about where somebody used a mark way back when

[00:31:16] Speaker 01:
and there is a third party service to which they can then draw a correlation.

[00:31:22] Speaker 01:
The third party registrations that we're talking about was Harley Davidson, which sells motorcycles and financial products to be able to purchase those motorcycles.

[00:31:32] Speaker 01:
So for example, like going to buy a BMW and leasing it, that is a financial product that is related to the motorcycles.

[00:31:41] Speaker 01:
Similarly in those circumstances, when Sotheby's has a wine selling division,

[00:31:45] Speaker 01:
And it sells insurance to go along with its wine-selling division.

[00:31:50] Speaker 01:
There is a necessary correlation between one business in the ordinary course and another business in the ordinary course.

[00:31:57] Speaker 04:
Let me offer you a hypothetical that may be not quite as easy for you as those two.

[00:32:04] Speaker 04:
Suppose that I am selling jumpsuits and I want to fancy them up and give them some panache.

[00:32:14] Speaker 04:
So I put the Ferrari logo on my jumpsuit right on the breast of the suit.

[00:32:22] Speaker 04:
I have nothing to do with Ferrari.

[00:32:25] Speaker 04:
Do you think there is a risk of confusion in that setting?

[00:32:28] Speaker 04:
Now, mind you, the logo is a completely accurate copy of the Ferrari logo with the rearing horse and the colors and even the signature and the unusual font.

[00:32:41] Speaker 04:
Likelihood of confusion in that setting.

[00:32:43] Speaker 01:
You're on a course first.

[00:32:46] Speaker 01:
Of course first and foremost Ferrari does sell jumpsuits.

[00:32:49] Speaker 01:
Secondly, the Ferrari drivers wear them when they're driving Formula One.

[00:32:53] Speaker 04:
Well let's suppose then instead of jumpsuits let's say that I'm selling some form of... Whiskey.

[00:33:02] Speaker 04:
Whiskey.

[00:33:02] Speaker 01:
Whiskey.

[00:33:03] Speaker 01:
Well hopefully they're not... I'm out of time as I answer your honour.

[00:33:08] Speaker 01:
Well, first, hopefully the drivers aren't drinking whilst driving.

[00:33:11] Speaker 01:
We should caution that on the record.

[00:33:13] Speaker 04:
Say, to make it slightly different from this case, either whiskey or shoes.

[00:33:17] Speaker 01:
Certainly, if there is an active business that is out there where you've got a controlled licensing function, of course there would be confusion in those circumstances because it is a current famous mark.

[00:33:31] Speaker 04:
Even if they were selling the shoes with the Ferrari mark on it.

[00:33:33] Speaker 04:
And Ferrari, let's fight by hypothesis, does not sell shoes.

[00:33:38] Speaker 04:
I would be foreclosed from doing that.

[00:33:40] Speaker 04:
Are you saying that?

[00:33:40] Speaker 01:
Your Honour, could be, because we're dealing with an incredibly famous mark that hasn't gone through the cataclysmic change that Lehman Brothers has gone through, that is still an active business that has a consumer-facing arm in the ordinary course.

[00:33:58] Speaker 04:
But it sounds like you're really relying more on the abandonment point than on the likelihood of confusion point with respect to the hypothetical.

[00:34:05] Speaker 01:
Your Honour, of course I am, because that in my respect for submission is the strongest one.

[00:34:11] Speaker 01:
However, one has to credit in certain regards a consumer with a little bit of common sense, and may we say, a little bit of a sense of humour.

[00:34:19] Speaker 01:
Those are my submissions.

[00:34:21] Speaker 03:
Thank you both, Council, for excellent arguments.

[00:34:24] Speaker 03:
The case is submitted.