Lucky Brand gets lucky at U.S. Supreme Court

A nearly two-decades-long trademark battle between two fashion companies came to an end when the U.S. Supreme Court unanimously ruled one of the companies, Lucky Brand Dungarees Inc., is entitled to use arguments it didn't pursue in previous litigation.

The claims Marcel Fashions Group Inc. brought against Lucky Brand in a 2011 lawsuit are different than the ones it brought against Lucky Brand in a 2005 lawsuit. In the newer suit, Marcel cannot preclude Lucky Brand from using an argument it could have invoked in the 2005 case, according to the high court's opinion.

Delivered by Justice Sonia Sotomayor, last week's opinion reversed a judgment by the 2nd U.S. Circuit Court of Appeals and remanded the case. Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., 2020 DJDAR 4589 (U.S. May 14, 2020).

Marcel filed its first suit against Lucky Brand in 2001, alleging Lucky Brand infringed on Marcel's trademark for the phrase "Get Lucky." In 2003, the two companies reached a settlement in which Lucky Brand agreed to stop using the phrase and Marcel agreed to release any claims regarding Lucky Brand's use of its own trademarks, which also include the word "lucky."

Two other actions ensued in 2005 and 2011. Marcel initiated the 2011 suit, alleging Lucky Brand was continuing to infringe on the "Get Lucky" phrase, and a district court granted Lucky Brand's motion to dismiss based on the argument Marcel released its claims in the 2003 settlement.

On appeal, the Second Circuit vacated and remanded the case, arguing Lucky Brand was barred "from raising an unlitigated defense that it should have raised" in the 2005 case.

"Because the parties agree that, at a minimum, the preclusion of such a defense in this context requires that the two suits share the same claim to relief -- and because we find that the two suits here did not -- Lucky Brand was not barred from raising its defense in the later action," the high court's opinion read.

-- Jessica Mach