throbber
This Opinion is not a
`Precedent of the TTAB
`
`
`Oral Hearing: January 22, 2020
`
`
`Mailed: September 30, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`TRADEMARK TRIAL AND APPEAL BOARD
`_____
`Barclays Capital Inc.
`and Barclays PLC
`v.
`
`
`Tiger Lily Ventures Ltd.
`
`Opposition Nos. 912194771 (parent) and 91219478
`
`
`
`
`
`
`
`
`Tiger Lily Ventures Ltd.
`v.
`
`Barclays Capital Inc.
`and Barclays PLC
`
`Opposition No. 91219549
`
`
`Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C. for Opposers/Counterclaim-
`Defendants, Barclays Capital Inc. and Barclays PLC.
`
`
`Robert Garson of Garson, Ségal, Steinmetz, Fladgate LLP for
` Applicant/Counter-Opposer, Tiger Lily Ventures Ltd.2
`
`
`
`
`
`
`_____
`
`1 The record in these consolidated proceedings is maintained in Opposition No. 91219477 and
`all citations are to that proceeding unless otherwise noted.
`2 Trial briefs and other documents filed on behalf of Applicant/Counter-Opposer Tiger Lily
`Ventures Ltd. identify its counsel as “Attorneys for Defendant/Counter Opposer Tiger Lily,
`Ltd.” while the ESTTA sheet identifies Defendant as “Tiger Lily Ventures Ltd.” Additionally,
`the Applicant for Application Serial No. 85868892 is identified as “Tiger Lily Venture Ltd.”
`while the Applicant for Application Serial No. 86298069 is identified as “Tiger Lily Ventures
`Ltd.” Accordingly, this decision applies to the Applicant(s) of Serial Nos. 85868892 and
`86298069, regardless of which legal name identifies the Applicant(s).
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`Before Taylor, Mermelstein and Kuczma,
`Administrative Trademark Judges.
`
`
`Opinion by Kuczma, Administrative Trademark Judge:
`In 2008, Lehman Brothers was the fourth largest investment bank in the United
`
`States, with hundreds of billions of dollars of assets under management and over
`
`25,000 employees in offices worldwide when it filed for protection under the U.S.
`
`bankruptcy laws, the largest bankruptcy in United States history.3 A day later,
`
`Lehman Brothers sold several of its businesses and other assets, including its
`
`LEHMAN BROTHERS trademarks and the accompanying goodwill, to Opposer,
`
`Barclays Capital Inc. (Barclays), “one of the world’s oldest and leading providers of
`
`financial services” for approximately $1.3 billion. Lehman Brothers assigned to
`
`Barclays all of Lehman Brothers’ rights in the LEHMAN names and trademarks,
`
`including LEHMAN BROTHERS, and the goodwill associated therewith.4
`
`Shortly thereafter, pursuant to amendments to their agreement, Barclays granted
`
`Lehman Brothers a worldwide, non-exclusive license to use the LEHMAN
`
`tradenames and trademarks in connection with Lehman Brothers’ retained and
`
`continuing businesses and operations. The term of the trademark license was limited
`
`
`3 Barclays’ Trial Testimony Declaration of Alexander L. Greenberg, Esq., Director, Legal
`(formerly, Vice-President, Legal) for Barclays Capital Inc., ¶¶ 3, 6 (86 TTABVUE 6-7).
`All cites to the record are to the record in Opposition No. 91219477 unless otherwise noted.
`Record citations are to TTABVUE, the Board’s publically available electronic docket history
`system. The number preceding TTABVUE corresponds to the docket entry number(s), and
`any number(s) following TTABVUE refer to the page number(s) of the docket entry where
`the cited materials appear. For material or testimony that has been designated confidential,
`the TTABVUE docket entry number where such material or testimony is located is
`referenced.
`4 The term “trademarks” in this decision includes service marks.
`
`- 2 -
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`to “two years for use in connection with certain Lehman businesses, namely, Lehman
`
`Brothers’ investment banking and capital markets businesses. . . . the amendment
`
`does not alter the perpetual license granted to Lehman Brothers for its other
`
`businesses or continuing operations.”5
`
`Several years later, on March 6, 2013, Tiger Lily Ventures Ltd. (Tiger Lily) filed
`
`an application to register LEHMAN BROTHERS (standard characters) for beer and
`
`spirits in International Classes 32 and 33, and filed a second application to register
`
`the same mark for bar services and restaurant services in International Class 43, on
`
`June 2, 2014, Application Nos. 85868892 and 86298069, respectively.6
`
`Meanwhile, after allowing all of the U.S. trademark registrations for the
`
`LEHMAN and LEHMAN BROTHERS marks it acquired to expire, Barclays filed
`
`trademark application, Application Serial No. 86081143, on October 2, 2013 for the
`
`mark LEHMAN BROTHERS (standard characters)7 for:
`
`investment consulting
`Securities brokerage services;
`services; investment banking services; merchant banking
`services; financial and investment management services;
`financial planning and investment advisory services;
`financial research services; administration and valuation
`of financial investments; financial sponsorship of sporting,
`charitable and educational events; providing consultancy,
`
`
`5 Greenberg Testimony Declaration ¶¶ 7-9 (86 TTABVUE 7-9) and Exhibits 3-5 thereto titled
`Intellectual Property Assignment Agreement (86 TTABVUE 159-226); Confidential (88
`TTABVUE 6-79).
`6 Tiger Lily’s Trial Testimony Declaration of Chaim Aaron James Green, founder and director
`of Tiger Lily Ventures, Ltd., ¶¶ 8, 11, 17 (124 TTABVUE 4-6); Barclays’ First Notice of
`Reliance Exhibits 1-2 (77 TTABVUE 6-12, 13-17).
`7 Greenberg Testimony Declaration ¶ 45 (86 TTABVUE 16).
`
`- 3 -
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`information and advisory services relating to all the
`foregoing, in International Class 36.8
`A year later, on November 24, 2014, Barclays filed Notices of Opposition,
`
`Opposition Nos. 91219477 and 91219478, against Tiger Lily’s LEHMAN BROTHERS
`
`applications Serial Nos. 86298069 and 85868892.9 The Board subsequently
`
`consolidated those two Oppositions, designating Opposition No. 91219477 as the
`
`“parent case.”10 A day later, Opposition No. 91219549, filed by Tiger Lily, opposing
`
`Barclays’ Application Serial No. 86081143 for the mark LEHMAN BROTHERS was
`
`added to the consolidated proceeding.11
`
`Thus, this consolidated proceeding involves Opposition Nos. 91219477 and
`
`91219478 filed by Barclays against Tiger Lily’s applications, and Opposition No.
`
`91219549 filed by Tiger Lily against Barclays’ application, each involving the
`
`identical LEHMAN BROTHERS mark.
`
`
`8 Application Serial No. 86081143 was filed on October 2, 2013 for the mark LEHMAN
`BROTHERS based on Barclays’ allegation of a bona fide intention to use the mark in
`commerce under § 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Acquired distinctiveness
`is claimed as to the entire mark.
`9 Application Serial No. 85868892 for beer in International Class 32 and spirits in
`International Class 33 was filed on March 6, 2013 and Application Serial No. 86298069 for
`bar services, restaurant services in International Class 43 was filed on June 2, 2014; both
`applications are for the mark LEHMAN BROTHERS and are based on Tiger Lily’s allegation
`of a bona fide intention to use the mark in commerce under § 1(b) of the Trademark Act, 15
`U.S.C. § 1051(b). “BROTHERS” is disclaimed in both applications.
`10 4 TTABVUE.
`11 5 TTABVUE.
`
`- 4 -
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`I. Opposition Nos. 91219477-78 filed by Barclays
`
`A. Barclays’ Grounds of Opposition
`
`Barclays’ Notices of Opposition assert: (1) it is the owner by assignment of the
`
`LEHMAN and LEHMAN BROTHERS common law marks; (2) that such marks are
`
`famous; (3) that it has priority of use and there is a likelihood of confusion under
`
`§ 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), between Barclays’ previously used
`
`marks and Tiger Lily’s mark; (4) that registration of Tiger Lily’s mark dilutes the
`
`distinctive quality of Barclays’ marks long associated with the Lehman Brothers
`
`financial institution and allegedly owned and used by Barclays and used by Lehman
`
`Brothers and third parties pursuant to license, in violation of § 43(c) of the Trademark
`
`Act, 15 U.S.C. § 1125(c)12; (5) that Tiger Lily’s mark falsely suggests a connection
`
`between Tiger Lily and Barclays (or Lehman Brothers, the predecessor-in-interest of
`
`Barclays) in violation of § 2(a) of the Trademark Act, 15 U.S.C. § 1052(a); and (6) that
`
`at the time Tiger Lily filed its applications, it did not have a bona fide intent to use
`
`the mark in commerce.13
`
`
`12 Barclays’ Notice of Opposition plead dilution under § 13(a) of the Trademark Act, 15 U.S.C.
`§ 1063(a).
`13 Opposition No. 91219477, 1 TTABVUE; Opposition No. 91219478, 1 TTABVUE.
`
`- 5 -
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`B. Tiger Lily’s Answer and Affirmative Defenses
`
`Tiger Lily denies the allegations in its Amended Answer and Answer to the
`
`Notices of Opposition14 except for the following admissions:
`
`• Barclays maintains the www.lehman.com website,
`paragraph 43,
`(Opposition No. 91219478, 7
`TTABVUE 10), (Opposition No. 91219477, 12
`TTABVUE 10);
`is owner of Application Serial No.
`• Barclays
`86081143, paragraph 44, (Opposition No. 91219478,
`7 TTABVUE 10), (Opposition No. 91219477, 12
`TTABVUE 11);
`• On March 6, 2013, Tiger Lily filed Application Serial
`No. 85868892 for the mark LEHMAN BROTHERS
`on an intent-to-use basis under § 1(b) of the
`Trademark Act for “beer” in International Class 32
`and “spirits” in International Class 33; Tiger Lily did
`not use the LEHMAN BROTHERS Mark for the
`goods in United States commerce prior to its
`constructive first use dates of March 6, 2013 and
`June 2, 2014, paragraph 46, (Opposition No.
`91219478 7 TTABVUE 11),
`(Opposition No.
`91219477, 12 TTABVUE 11);
`• Its proposed services in Application Serial No.
`86298069 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 Opposer’s LEHMAN
`Marks, including the mark LEHMAN BROTHERS;
`paragraph 47,
`(Opposition No. 91219477, 12
`TTABVUE 11);
`• Its LEHMAN BROTHERS Mark should be refused
`registration under § 2(a) of the Trademark Act as
`falsely suggesting a connection between Tiger Lily,
`
`14 Tiger Lily filed an Amended Answer in Opposition No. 91219477 on February 19, 2015
`(Opposition No. 91219477, 12 TTABVUE) and an Answer in Opposition No. 91219478 on
`February 13, 2015 (Opposition No. 91219478, 7 TTABVUE).
`
`- 6 -
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`and Barclays (and/or Lehman Brothers). More
`specifically: (a) Tiger Lily’s LEHMAN BROTHERS
`Mark is identical to the name or identity previously
`used by Lehman Brothers, namely, the famous
`LEHMAN BROTHERS name and mark; (b) Tiger
`Lily’s LEHMAN BROTHERS Mark would be
`recognized as being associated with Barclays and/or
`Lehman Brothers because it points uniquely and
`unmistakably to Barclays and/or Lehman Brothers;
`(c) Barclays and Lehman Brothers are not connected
`with the activities intended to be performed by Tiger
`Lily under Tiger Lily’s LEHMAN BROTHERS
`Mark; and (d) the fame and reputation of Lehman
`Brothers’ and Barclays’ LEHMAN BROTHERS
`Mark is such that, when Tiger Lily’s LEHMAN
`BROTHERS Mark is used with its proposed goods, a
`connection with Barclays (and/or Lehman Brothers)
`would be presumed. Lehman Brothers’ and
`Barclays’ LEHMAN BROTHERS Marks are so
`famous that they unmistakably would point to
`Lehman Brothers and/or Barclays regardless of the
`goods and services offered in connection with the
`mark, paragraph 51, (Opposition No. 91219478, 7
`TTABVUE 11).
`In addition, Tiger Lily alleges failure to state a claim and the following affirmative
`
`defenses: that Barclays is not damaged by the registration of Tiger Lily’s mark;
`
`unclean hands; laches, waiver and estoppel,15 none of which were pursued at trial.
`
`Accordingly, they are waived. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.,
`
`107 USPQ2d 1750, 1753 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014)
`
`(mem.); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
`
`§ 801.01 (2020).
`
`
`15 See Tiger Lily’s Amended Answer paragraph nos. 55-59 (Opposition No. 91219477, 12
`TTABVUE 12-13) and its Answer paragraph nos. 55-60 (Opposition No. 91219478, 7
`TTABVUE 11-12).
`
`- 7 -
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`II. Opposition No. 91219549 filed by Tiger Lily
`
`A. Tiger Lily’s Grounds of Opposition
`
`As Opposer in Opposition No. 91219549, opposing Barclays’ application Serial
`
`No. 86081143 for LEHMAN BROTHERS, Tiger Lily alleges priority and likelihood of
`
`confusion of the LEHMAN BROTHERS mark, that Barclays had no bona fide intent
`
`to use the LEHMAN BROTHERS mark for the applied-for services, abandonment
`
`and fraud.16
`
`B. Barclays’ Answer and Affirmative Defenses
`
`Barclays denies the salient allegations in Tiger Lily’s Second Amended Notice of
`
`Opposition. It also alleges failure to state a claim and affirmative defenses of estoppel,
`
`waiver and/or acquiescence,17 which were not pursued at trial. Accordingly, these are
`
`waived. Alcatraz Media v. Chesapeake Marine Tours, 107 USPQ2d at 1753; TBMP
`
`§ 801.01.
`
`On August 17, 2018 the Board granted Barclays Capital Inc.’s Motion on Consent
`
`to Join requesting that Barclays PLC, a public limited company organized and
`
`existing under the laws of England and Wales, be joined as Opposer in Opposition
`
`Nos. 91219477 and 91219478, and as Applicant in Opposition No. 91219549. Barclays
`
`Capital Inc. represents that pursuant to an agreement dated August 31, 2017, it
`
`
`16 See Tiger Lily’s Second Amended Notice of Opposition filed in Opposition No. 91219549
`(filed in Opposition No. 91219477, 111 TTABVUE).
`17 See Barclays Capital Inc.’s Answer and Affirmative Defenses to Tiger Lily Ventures Ltd.’s
`Second Amended Notice of Opposition in Opposition No. 91219549 (filed in Opposition No.
`91219477 under 111 and 112 TTABVUE).
`
`- 8 -
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`assigned all rights, title and interest to the LEHMAN BROTHERS marks, including
`
`Application Serial No. 86081143, to Barclays PLC. Barclays PLC and Barclays
`
`Capital Inc. executed a confirmatory assignment dated March 7, 2018 which was
`
`recorded in the Assignment Division of the USPTO on March 12, 2018 at Reel/Frame:
`
`6289/0791.18
`
`III. Evidentiary Objections
`
`A. Evidentiary Objections to Notices of Reliance
`
`Barclays objects to Tiger Lily’s Notice of Reliance No. 2, consisting of state and
`
`foreign registration documents, offered into evidence to support Tiger Lily’s claims
`
`that the LEHMAN BROTHERS mark does not uniquely and unmistakably point to
`
`a financial institution, Barclays’ lack of intent to use, absence of actual confusion in
`
`the marketplace and abandonment. (134 TTABVUE 2-5). Barclay’s objection is
`
`granted in part and denied in part.
`
`A New York state registration issued in the name of LBW LLC19 and the record is
`
`devoid of evidentiary support establishing Tiger Lily’s connection to and control of, or
`
`by, the registrant entity. Cf. Kraft, Inc. v. Balin, 209 USPQ 877, 879 (TTAB 1981).
`
`Additionally, both Chinese Registration No. 19762364.20 owned by Tiger Lily, and
`
`French Registration No. 412341721, owned by “M. David Tordjman, Agissant pour le
`
`compte de la société ‘lehman brothers’ en cours de formation,” for the mark LEHMAN
`
`
`18 113 and 129 TTABVUE.
`19 Tiger Lily’s Exhibit 14 (120 TTABVUE 2, 5-6).
`20 Tiger Lily’s Exhibit 15 (120 TTABVUE 2-3, 7-8).
`21 Tiger Lily’s Exhibit 16 (120 TTABVUE 3, 9-12).
`
`- 9 -
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`BROTHERS, are insufficient evidence of use or ownership of the mark in the United
`
`States and are, therefore, immaterial and not relevant to Tiger Lily’s rights to the
`
`mark LEHMAN BROTHERS in the United States. Nabisco, Inc. v. George Weston
`
`Ltd., 179 USPQ 503, 507 (TTAB 1973); see also S.A. Marne et Champagne v. Myers,
`
`250 F.2d 374, 116 USPQ 153, 156 (CCPA 1957). Additionally, the French registration
`
`document retrieved from TM VIEW, believed to be a free online trademark search
`
`database maintained by the European Union Intellectual Property Office (“EUIPO”),
`
`and offered into evidence lacks the necessary information regarding its Internet
`
`source (e.g., URL) required by 37 C.F.R. § 2.122(e). Safer, Inc. v. OMS Investments,
`
`Inc., 94 USPQ2d 1031, 1039 (TTAB 2010), and does not indicate ownership by Tiger
`
`Lily. Therefore, the New York registration (Exhibit 14) and the French registration
`
`(Exhibit 16)22 are stricken from the record and the Chinese registration (Exhibit 15)
`
`is admissible but will be considered within its exceedingly limited scope of relevance.
`
`Tiger Lily introduced internet articles related to Lehman Brothers’ bankruptcy
`
`and sale of certain businesses through Exhibits 17-20,23 which Barclays seeks to
`
`strike from the record. (149 TTABVUE 5). Barclays’ objections are denied in part and
`
`granted in part as the articles are admissible but Tiger Lily cannot rely on them for
`
`the truth of the matters contained therein. The internet articles were submitted
`
`through Tiger Lily’s Notice of Reliance No. 3 pursuant to 37 C.F.R. § 2.122(e), showing
`
`
`22 This French registration was also marked as Exhibit E in the Testimony Deposition of
`Alexander Greenberg pp. 200:16-205:2 (116 TTABVUE 201-206) and was objected to by
`Barclays’ attorney pp. 203-204 (116 TTABVUE 204-205).
`23 121 TTABVUE 2-5, 8-24, 25-63, 64-72, 73-208.
`
`- 10 -
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`the date the materials were accessed and their source (URL). See also TBMP
`
`§ 704.08(b)(2). Barclays is correct that such articles, unaccompanied by testimony,
`
`cannot be considered for the truth of the matter asserted therein but only for what
`
`they show on their face. Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d
`
`311355, at *2 (TTAB 2019). Since the evidence was properly submitted, it will not be
`
`stricken but it will be considered within its limited scope, including demonstrating
`
`the “public perception of the marks by others.” Harry Winston, Inc. v. Bruce Winston
`
`Corp., 111 USPQ2d 1419, 1427 (TTAB 2014).
`
`As to Exhibit 26 introduced in Tiger Lily’s Notice of Reliance No. 424, the Board
`
`will not address previously settled evidentiary matters. Therefore, Exhibit 26
`
`(Barclays’ Responses to Tiger Lily’s First Set of Document Requests) is stricken from
`
`the record since “none of Barclays responses to Tiger Lily’s requests for production
`
`state that no responsive documents exist.” (132 TTABVUE 8-9).
`
`Barclays moves to strike Exhibit 2725 to Tiger Lily’s Amended Notice of Reliance
`
`No. 5 consisting of copies of Tiger Lily’s motion to compel, supporting legal
`
`memorandum, declaration and exhibits, and the District Court for the Southern
`
`District of New York’s order denying the motion.26 The motion to compel sought
`
`answers from Ignacio Duran, Barclays’ witness, to questions which were objected to
`
`on the basis of privilege during his cross-examination. The Southern District of New
`
`
`24 122 TTABVUE 2, 15-28.
`25 149 TTABVUE 5-6.
`26 123 TTABVUE 2, 5-63 and 137 TTABVUE.
`
`- 11 -
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`York denied Tiger Lily’s motion to compel on the ground that the court lacked
`
`jurisdiction. Tiger Lily Ventures Ltd. v. Barclays Capital Inc., 1:17 mc-00499-GBD-
`
`KNF (S.D.N.Y.). The notice of testimony deposition served on Duran stated that it
`
`was served pursuant to 37 C.F.R. § 2.123 (and not by a subpoena pursuant to 35
`
`U.S.C. § 24) which provides for objections raised at depositions noticed thereunder to
`
`be decided at the final TTAB hearing.27 Health-Tex Inc. v. Okabashi (U.S.) Corp., 18
`
`USPQ2d 1409, 1411 (TTAB 1990) (questions are generally answered subject to any
`
`objection which has been made; objections concerning a deponent’s refusal to answer
`
`questions in connection with oral depositions under Trademark Rule 2.123 are not
`
`considered until final hearing; a refusal to answer may, if the objection is not well
`
`taken, be construed against the non-answering party). Inasmuch as we are now at
`
`the final hearing stage, and the testimonial cross-examination of Ignacio Duran has
`
`been made of record (117 TTABVUE; Confidential 118 TTABVUE), we grant
`
`Barclays’ objection to Tiger Lily’s Exhibit 27 and strike it from the record as its
`
`content is of no relevance and has no evidentiary value.
`
`Based on Fed. R. Evid. 403 for needlessly presenting cumulative evidence, Tiger
`
`Lily has asked the Board to strike the following Exhibits submitted through Barclays’
`
`Notices of Reliance (151 TTABVUE 18): First Notice of Reliance (Exhibit 9);28 Second
`
`Notice of Reliance (Exhibits 2-4);29 Third Notice of Reliance (Exhibit 9);30 and Fourth
`
`
`27 123 TTABVUE 62.
`28 77 TTABVUE 4; 78 TTABVUE 37-368.
`29 79 TTABVUE 8-110, 248-915; 80 TTABVUE 3-2112, 2113-2236.
`30 81 TTABVUE 10-20, 267-1982.
`
`- 12 -
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`Notice of Reliance (Exhibit 4).31 Tiger Lily’s objection is denied. “[A]s part of the
`
`Board’s longstanding practice, parties are permitted to submit a representative
`
`sample of relevant articles obtained from an Internet database search.” Alcatraz
`
`Media v. Chesapeake Marine Tours, 107 USPQ2d at 1758. The Exhibits were properly
`
`entered into evidence through a notice of reliance pursuant to 37 C.F.R. § 2.122(e)
`
`and will be reviewed by the Board for the limited probative value the documents
`
`present on their face and not for the truth of the matters therein. See TBMP
`
`§ 704.08(b). Additionally, the Board had already ruled on Tiger Lily’s present
`
`objections and denied the same in regards to Barclays’ First Notice of Reliance
`
`(Exhibit 9) and Fourth Notice of Reliance (Exhibit 4) because it found Barclays’
`
`descriptions to be sufficiently narrow. (98 TTABVUE 7). Furthermore, the Board
`
`granted Barclays leave to cure its Second Notice of Reliance (Exhibits 1-4) and Third
`
`Notice of Reliance (Exhibit 9), which were amended and resubmitted under 99
`
`TTABVUE and 100 TTABVUE, respectively.
`
`B. Testimonial evidence
`
`Barclays moved to strike certain testimony in the Declaration of Chaim Green,
`
`Tiger Lily’s Director (124 TTABVUE), based on lack of personal knowledge, hearsay,
`
`and lay opinion testimony; and Tiger Lily moved to strike the Declarations of
`
`Alexander Greenberg, Director, Legal (formerly, Vice-President, Legal) of Barclays
`
`Capital Inc. (86 TTABVUE), and Ignacio Duran, former paralegal for Barclays’
`
`
`31 84 TTABVUE 3-4, 95; Confidential 85 TTABVUE 37-1491.
`
`- 13 -
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`outside counsel and attorneys in this case (89 TTABVUE), on the basis that “[b]oth
`
`declarations seek to justify their own work and research, are self-serving, and are not
`
`capable of carrying any weight on the ultimate question of whether the consuming
`
`public have any cognizance of any residual goodwill.” (151 TTABVUE 6).
`
`The Board does not usually strike testimony but considers its probative value in
`
`light of the objections raised. Krause v. Krause Publ’s, Inc., 76 USPQ2d 1904, 1907
`
`(TTAB 2005); TBMP 707.03(c). TTAB proceedings are heard by Administrative
`
`Trademark Judges who are not easily misled, confused or prejudiced by irrelevant
`
`evidence and capable of assessing the weight of the testimony, taking into
`
`consideration the imperfections surrounding its admissibility. “The Board does not
`
`ordinarily strike testimony taken in accordance with the applicable rules on the basis
`
`of substantive objections; rather, such objections are considered by the Board in its
`
`evaluation of the probative value of the testimony at final hearing.” Alcatraz Media
`
`v. Chesapeake Marine Tours, 107 USPQ2d at 1755. After considering the probative
`
`value, the Board will “disregard any opinion testimony regarding the ultimate
`
`disposition of the claims asserted.” Id. Therefore, both parties’ motions to strike the
`
`testimony of Barclays’ witnesses Duran and Greenberg, and Tiger Lily’s witness
`
`Green are denied, but the Board will consider the same in light of all objections raised
`
`and determine their probative value accordingly.
`
`Tiger Lily has also raised objections to Barclays’ assertion of work product and
`
`attorney-client privilege during the depositions of Ignacio Duran and Alexander
`
`Greenberg (151 TTABVUE 6-17). “The [work product] doctrine protects a lawyer’s
`
`- 14 -
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`ability to prepare his client’s case, protects against the disclosure of the attorney’s
`
`mental impressions, conclusions, strategies, or theories.” Granite Partners, L.P. v.
`
`Bear, Stearns & Co., 184 F.R.D. 49, 52 (S.D.N.Y. 1999). Documents created in view of
`
`litigation are protected under the work product privilege, inclusive of materials
`
`prepared by the attorney or their agent. Id. Tiger Lily contends that privilege was
`
`wrongly asserted by Barclays when Barclays’ witness Duran refused to answer
`
`questions related to the work and research parameters he was provided when
`
`working as a paralegal for Barclay attorneys, Cowan, Liebowitz & Latman, P.C., in
`
`preparation for this trial.32 (151 TTABVUE 9). Additionally, Tiger Lily presents a
`
`chart with extracts of Alexander Greenberg’s deposition where he also refused to
`
`answer certain questions based on privilege and per the advice of Barclays’ counsel
`
`(151 TTABVUE 12-17).
`
`Questions asked during testimony should ordinarily be answered subject to
`
`objections. However, a witness may refuse to answer a question asking for
`
`information that is privileged. See TBMP § 707.03(d). Unlike in federal district courts,
`
`the Board does not immediately rule on testimonial objections and there is no
`
`mechanism for the parties to obtain a ruling on the same until the final hearing. Levi
`
`Strauss & Co. v. R. Josephs Sportswear, Inc., 28 USPQ2d 1464, 1466 (TTAB 1993).
`
`“Although a party’s witness may refuse to answer a question or, as in the present
`
`
`32 Although Ignacio Duran was admitted to the bar as a lawyer while employed by Barclays’
`counsel, he was employed as a paralegal for Barclays’ counsel at the time he performed the
`services he testified to in his Testimony Declaration and his Cross-Examination. Cross-
`Examination Testimony of Duran p. 21:2-10, 24:3-19 (117 TTABVUE 22, 25).
`
`- 15 -
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`case, be instructed by the party’s attorney not to answer, a refusal to answer may, if
`
`the objection is not well taken, be construed against the non-answering party.” Id. at
`
`1467.
`
`We have carefully reviewed all of the testimony depositions of Ignacio Duran and
`
`Alexander Greenberg. We will not burden this decision by discussing each and every
`
`question to which an objection was raised. There is no mechanism for obtaining from
`
`the Board, prior to final hearing, a ruling on the propriety of an objection to a question
`
`propounded during a testimony deposition. If the Board finds at final hearing that
`
`Barclays objections were not well taken, we may presume that the answer would have
`
`been unfavorable to the position of Barclays whose witness refused to answer, or may
`
`find that the refusal to answer reduces the probative value of the witness’s testimony.
`
`TBMP 707.03(d). See Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co.,
`
`703 F.2d 1372, 217 USPQ 505, 510 (Fed. Cir. 1983) (no error in drawing adverse
`
`inference where witnesses inappropriately refused to answer relevant questions),
`
`aff’g, 213 USPQ 594 (TTAB 1982); Levi Strauss v. R. Josephs Sportswear, 28 USPQ2d
`
`at 1467 (where opposer’s objections were found to be not well taken, Board presumed
`
`that the answers would have been adverse to opposer’s position.).
`
`C.
`
`Internet evidence
`
`Additionally, both Barclays and Tiger Lily, by way of notices of reliance, submitted
`
`printouts from various websites downloaded from the Internet. Although admissible
`
`for what they show on their face, Trademark Rule 2.122(e)(2), 37 C.F.R. § 2.122(e)(2),
`
`this evidence also contains hearsay that may not be relied upon for the truth of the
`
`- 16 -
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`matters asserted unless supported by testimony or other evidence. Fed. R. Evid.
`
`801(c); Safer v. OMS Invs., 94 USPQ2d 1039-40; TBMP § 704.08(b) (“The probative
`
`value of Internet documents is limited. They can be used to demonstrate what the
`
`documents show on their face. However, documents obtained through the Internet
`
`may not be used to demonstrate the truth of what has been printed.”).
`
`D. Evidence Designated “Confidential”
`
`Barclays and Tiger Lily have submitted evidence that has been designated
`
`confidential, in part, and filed under seal. We have discussed only in general terms
`
`the relevant evidence submitted under seal, if necessary and appropriate. However,
`
`to the extent such evidence has improperly been designated as confidential, we may
`
`disregard the confidential designation when appropriate. Trademark Rule 2.116(g),
`
`37 C.F.R. § 2.116(g) (“[t]he Board may treat as not confidential that material which
`
`cannot reasonably be considered confidential, notwithstanding a designation as such
`
`by a party.”). See also Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110
`
`USPQ2d 1458, 1461 (TTAB 2014).
`
`E. Remaining Objections
`
`With regard to any remaining evidentiary objections, we have considered all of the
`
`evidence of record, noting the objections and responses. The Board is capable of
`
`weighing the relevance and strength or weakness of the objected-to evidence in this
`
`case, including any inherent limitations, and this precludes the need to strike the
`
`challenged evidence on relevancy grounds. We have accorded the evidence whatever
`
`probative value it merits, keeping the parties’ objections in mind, and comment as
`
`- 17 -
`
`

`

`Opposition Nos. 91219477 (parent), 91219478 and 91219549
`
`needed on its probative value elsewhere in this opinion. See Alcatraz Media v.
`
`Chesapeake Marine Tours, 107 USPQ2d at 1755; Kohler Co. v. Baldwin Hardware
`
`Corp., 82 USPQ2d 1100, 1104 (TTAB 2007); see also U.S. Playing Card Co. v. Harbro
`
`LLC, 81 USPQ 1537, 1540 (TTAB 2006) (“[B]ecause an opposition is akin to a bench
`
`trial, the Board is capable of assessing the proper evidentiary weight to be accorded
`
`the testimony and evidence, taking into account the imperfections surrounding the
`
`admissibility of such testimony and evidence.”). Thus, other than the issues decided
`
`above, we decline to decide each and every individual objection and base our factual
`
`findings herein only on evidence that is admissible, properly of record and probative.
`
`IV. The Record
`
`The Appendix found at the end of this decision lists the contents of the entire
`
`record in this case. We have carefully considered all of the parties’ arguments and
`
`admissible evidence in the record even if not specifically discussed herein; the
`
`findings of fact are based on such evidence.
`
`Both parties submitted trial briefs and reply briefs in connection with Opposition
`
`Nos. 91219477-78 and Opposition No. 91219549,33 and both parties were represented
`
`by counsel at an oral hearing held before the Board.
`
`
`33 Barclays submitted its opening Brief on Final Hearing in Opposition Nos. 91219477-78
`(148 TTABVUE); Tiger Lily submitted a Combined Trial Brief in Position of Defendant in
`Opposition Nos. 91219477-78 and Opening Brief as Plaintiff in Opposition No. 91219549 (150
`TTABVUE); Barclays submitted a Combined Reply Brief on Final Hearing in Opposition Nos.
`91219477-78 and its opposing Brief on Final Hearing in

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