The US Supreme Court unanimously ruled in Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, in favor of Lucky Brand.
1.One of the first cases the court heard this year, the trademark dispute largely dealt with a question of civil procedure. Lucky Brand raised a defense in this lawsuit that it had not fully pursued during an earlier suit between it and Marcel Fashions. The Supreme Court was tasked with determining whether that failure to fully press their defense then thereby barred their ability to raise it in this and later suits.
The suits between the two jean and apparel companies focused heavily on the use of the trademark “Get Lucky” by both parties. Marcel Fashions received its trademark for the phrase in 1986, and Lucky Brand registered their trademark “Lucky Brand” in 1990. Although the parties settled their first lawsuit in 2003, wherein Lucky Brand agreed to stop using the phrase “Get Lucky” in their branding, litigation resumed in 2005 when Lucky Brand alleged that Marcel Fashions was copying its designs and logos and Marcel Fashions alleged that Lucky Brand was still using the phrase “Get Lucky.” A jury ruled against Lucky Brand, but litigation began yet again in 2011, with Marcel Fashion alleging that Lucky Brand was still using the “Get Lucky” mark.
The District Court granted Lucky Brand summary judgment in the 2011 claim because it held that the Marcel Fashions claim were “essentially the same as its counterclaims in the 2005 Action.” The case was appealed to the Second Circuit, which vacated and remanded the summary judgment because the 2011 case was based on continued use of Lucky Brand of the trademark, not its previous use. Lucky Brand then issued a motion to dismiss for the first time since 2005 stating that Marcel Fashion had agreed to release its claims by entering the settlement agreement. The issue of whether or not Lucky Brand was still permitted to raise this offense was then appealed through the courts.
The Supreme Court concluded that, because Marcel Fashion’s 2011 claim was raised on different conduct than that at issue in the 2005 case, “Marcel cannot preclude Lucky Brand from raising new defenses.” Based on their holding, they reversed the judgment of the Second Circuit and remanded the case.
See the opinion of the court below