Pryor Cashman Partner Dyan Finguerra-DuCharme, Co-Chair of the Trademark Group and a member of the Intellectual Property, Litigation, and Media + Entertainment Groups, spoke with Managing IP about a Court of Appeals decision that "could make it harder to prove that rights holders have abandoned their marks."
In "Federal Circuit Sets High Abandonment Bar in Barclays: Counsel," Dyan weighs in on the June 1, 2022 ruling blocking the Tiger Lily brand from registering the LEHMAN BROTHERS mark for beer and spirits, citing the existing Barclays brand.
Dyan Finguerra-DuCharme, co-chair of Pryor Cashman's trademark group in New York, points out that the Federal Circuit cited the fact that Barclays offered legacy research materials from Lehman Brothers and maintained a Lehman Brothers website as evidence of its use.
"But the fact that prior research is still available on the website doesn't mean it's still rendering services under the mark. The Federal Circuit went to great pains to find that the mark continued to be in use by Barclays."
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Finguerra-DuCharme points out that several companies have recently abandoned brands because they were offensive.
She says that under this case, such businesses could find ways to maintain minimal use of their marks behind the scenes while otherwise avoiding associations with their former brands to prevent others from obtaining identical registrations.
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Originally published by Managing IP
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