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 represented 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. 

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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”) sustaining 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., Trademark 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’ application for registration of the standard character mark

“LEHMAN BROTHERS.” Id. For the reasons set forth below, we affirm.

BACKGROUND

I. Factual Background and Procedural History

Until 2008, Lehman Brothers1 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 registrations for the standard character mark LEHMAN 

BROTHERS.

Immediately after Lehman Brothers filed for bankruptcy 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 collectively 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 appeal 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 operations. Over the years that followed, however, Barclays 

allowed all of its acquired LEHMAN BROTHERS trademark registrations to expire. 

On March 6, 2013, Tiger Lily, a company with no corporate affiliation to Lehman Brothers or Barclays, filed Application No. 85/868,892 for registration of the standard 

character mark LEHMAN BROTHERS for beer and spirits. A few months later, on October 2, 2013, Barclays filed 

Application No. 86/081,143 to register the standard character 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 Opposition 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 registration. 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 began 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 using the factors set forth in In re E.I. du Pont de Nemours & 

Co., 476 F.2d 1357, 1361 (CCPA 1973) (“the DuPont factors”). 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 considered 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 applications 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 different, 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 wellknown 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 evidence 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 (including whisky decanters, wine gift sets, wine books, wine 

carriers, and coasters), which the Board noted are still collected, sold, and traded by members of the consuming public. Id. at 42. Barclays also provided evidence of the 

prevalence of its LEHMAN BROTHERS mark in pop culture, 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 legacy 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 business 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 confusion, the Board turned to the three other grounds set forth 

in Barclays’ opposition, namely, false suggestion of a 

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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 credited the unchallenged testimony of Tiger Lily’s director 

demonstrating that Tiger Lily intended to make commercial 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 circumstances—including Barclays’ ongoing business in the financial services industry under its other marks as well as 

active licenses involving the LEHMAN BROTHERS 

mark—provided sufficient evidence of a good faith intention 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 rejected) and because Tiger Lily failed to provide clear evidence 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 suggestion 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 jurisdiction 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 decisions sustaining Barclays’ oppositions against Tiger Lily’s 

applications for registration, Tiger Lily primarily challenges the Board’s decisions on two bases. First, Tiger Lily 

argues that the Board erred in its determination that Barclays 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 argument regarding the Board’s statement that Tiger Lily admitted 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 

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8 TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC. 

Regarding the Board’s dismissal of Tiger Lily’s own opposition 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 proceedings below, Tiger Lily contends that the Board erred by failing 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 reasonable mind would accept as adequate to support a conclusion.’” 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 discretion. 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 relevant 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 “denies the allegations contained in Paragraph 47 of the Notice of Opposition as they are both errant and 

preposterous.” J.A. 215. Accordingly, we attribute no substantive 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 opposition 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 abandonment: (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 remained 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 Wallpaper Mfrs., Ltd. v. Crown Wallcovering Corp., 680 F.2d 755, 

759 (CCPA 1982))). 

According to Tiger Lily, the evidence shows that Barclays 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 emphasis on Lehman Brothers’ actions in winding up its business 

during bankruptcy and by drawing impermissible and unreasonable inferences based on a license to Bloomberg LP 

that fails to identify any specific mark in the agreement. 

Barclays responds that Lehman Brothers has continuously used the mark in connection with numerous publicfacing 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, under its license from Barclays, Lehman Brothers has used 

the LEHMAN BROTHERS mark in signage, email signatures, web addresses, reports, correspondence, business 

cards, and corporate and regulatory filings. Barclays also 

contends that Barclays itself has used the mark in connection with its own financial services, including legacy 

LEHMAN BROTHERS research materials. Barclays argues that the ongoing bankruptcy proceedings of individual 

Lehman Brothers affiliates, which will conclude on unspecified dates in the future, do not negate the dispositive fact 

that Lehman Brothers continues to use the LEHMAN 

BROTHERS mark in connection with financial transactions just as it has always done. And regarding the Bloomberg 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 supports the Board’s conclusion that there has been no abandonment 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 Lehman 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 commercial 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 bankruptcy 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 Lehman Brothers will cease to exist after the bankruptcy concludes, 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 relating 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 continued 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 materials, uses Lehman Brothers’ Market Participant Identifier 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 character 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 parties’ 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 services 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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improperly equated the distribution of promotional items

with an expansion of product lines.

Barclays responds that the Board’s DuPont factor analysis 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 targeting its goods and services to consumers familiar with 

the LEHMAN BROTHERS mark. Moreover, Barclays argues that, regardless whether promotional items bearing 

the LEHMAN BROTHERS mark are evidence of expanding 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 confuse 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 provided no details regarding the scope of its commercial activity.

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 control 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 relevant DuPont factor for substantial evidence, but we review 

the Board’s weighing of the DuPont factors de novo.” QuikTrip 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 factors 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 similarity of the goods and services, Tiger Lily emphasizes abstract distinctions between whisky on the one hand and 

financial services on the other. For example, Tiger Lily asserts that the consuming public would not assume that the 

Lehman Brothers company began “selling whisky commercially or open[ed] up a bar or a restaurant,” see Appellant 

Br. at 30. But that assertion, while likely true, is also irrelevant; the relevant inquiry considers “if the respective 

products are related in some manner and/or if the circumstances 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) (quoting 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 products that may differ from the original source of the trademark. 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 regard, the Board relied on Barclays’ extensive evidence 

showing examples of companies that have promoted financial 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 remains 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, Lehman Brothers used its LEHMAN BROTHERS mark in connection with products that are related to whisky and 

alcoholic beverages. See, e.g., J.A. 17664 (Lehman Brothers Whisky Decanter), J.A. 17696 (Lehman Brothers Beverage 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 Brothers 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 advantage of the widespread consumer recognition of Barclays’ LEHMAN BROTHERS mark. Tiger Lily attempts to 

draw a distinction between “consumer recognition” as compared 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 distinctions, 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 single 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 affirmatively 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 Lehman Brothers; the “absence of evidence is not always evidence of absence.” See, e.g., Int’l Ass’n of Machinists & 

Aero. Workers, Local Lodge 964 v. BF Goodrich Aero. Aerostructures Grp., 387 F.3d 1046, 1055 (9th Cir. 2004).

In sum, the Board’s findings with respect to the relevant DuPont factors were supported by substantial evidence in the record, and we need not consider additional 

DuPont factors that have no relevance to the marks at issue 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 financial services listed in its application, in combination 

with its longstanding and widespread offering of those services 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 abandoned, namely, its licensing of the mark and its continued 

use of the mark.

Under Lanham Act § 1(b), an applicant seeking to register a mark on an intent to use basis must have a bona 

fide intent to use the mark in commerce at the time of filing, 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 applicant had a bona fide intent to use the mark in commerce 

based on objective evidence of intent, “on a case-by-case basis 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, combined 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 engagement in the type of financial services identified in its application. 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 commercial 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 intent. 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 intent to use the mark in connection with a specific set of services. 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 Lehman Brothers and Barclays have continued to use the 

LEHMAN BROTHERS mark since 2008. And it is not disputed 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 substantial evidence. 

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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’ witnesses. 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 discretion 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 erroneous 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 province 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 discretion to make credibility determinations and otherwise 

weigh the evidence submitted, including lay evidence.” (citing Buchanan v. Nicholson, 451 F.3d 1331, 1336–37 (Fed. 

Cir. 2006))).

Here, Tiger Lily objected to Barclays’ submission of certain testimonial evidence, and the Board stated that it 

“carefully reviewed all of the testimony depositions” and 

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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 crossappeal 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 Barclays 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 Container 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, FritoLay had opposed registration of Real Foods’ applied-for 

marks on two separate grounds. First, Frito-Lay challenged 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 distinctiveness, and Frito-Lay cross-appealed on the issue of genericness. Id. This court specifically considered whether FritoLay’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 supplemental 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 dismissed 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 opposing 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-appeal, 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, because we affirm the Board’s decision with respect to likelihood 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 reasons set forth, we affirm the Board’s decision with respect 

to all aspects of Tiger Lily’s appeal, and we dismiss Barclays’ cross-appeal.

AFFIRMED-IN-PART, DISMISSED-IN-PART

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TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC. 23

COSTS

No costs.

Case: 21-1107 Document: 71 Page: 23 Filed: 06/01/2022