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Lucky Brand Dungarees, Inc. v. Marcel Fashions Grp., Inc.

Supreme Court of the United States

January 13, 2020, Argued; May 14, 2020, Decided

No. 18-1086.

Opinion

Justice Sotomayor delivered the opinion of the Court.

This case arises from protracted litigation between petitioners Lucky Brand Dungarees, Inc., and others (collectively Lucky Brand) and respondent Marcel Fashions Group, Inc. (Marcel). In the latest lawsuit between the two, Lucky Brand asserted a defense against Marcel that it had not pressed fully in a preceding suit between the parties. This Court is asked to determine whether Lucky Brand’s [**5]  failure to litigate the defense in the earlier suit barred Lucky Brand from invoking it in the later suit. 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.

Marcel and Lucky Brand both sell jeans and other apparel. Both entities also use the word “Lucky” as part of their marks on clothing. In 1986, Marcel received a federal trademark registration for “Get Lucky”; a few years later, in 1990, Lucky Brand began selling apparel using the registered trademark “Lucky Brand” and other marks that include the word “Lucky.” 779 F. 3d 102, 105 (CA2 2015).

Three categories of marks are at issue in this case: Marcel’s “Get Lucky” mark; Lucky Brand’s “Lucky Brand” mark; and various other marks owned by Lucky Brand that contain the word “Lucky.” These trademarks have led to nearly 20 years of litigation between the two companies, proceeding in three rounds.

In 2001—the first round—Marcel sued Lucky Brand, alleging that Lucky Brand’s use of the phrase “Get Lucky” in advertisements infringed Marcel’s trademark. [**6]  In 2003, the parties signed a settlement agreement. As part of the deal, Lucky Brand agreed to stop using the phrase “Get Lucky.” App. 191. In exchange, Marcel agreed to release any claims regarding Lucky Brand’s use of its own trademarks. Id., at 191-192.

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206 L. Ed. 2d 893 *; 2020 U.S. LEXIS 2642 **; 2020 U.S.P.Q.2D (BNA) 10519; 28 Fla. L. Weekly Fed. S 225

LUCKY BRAND DUNGAREES, INC., ET AL., PETITIONERS v. MARCEL FASHIONS GROUP, INC.

Notice: The LEXIS pagination of this document is subject to change pending release of the final published version.

Subsequent History: As Revised May 19, 2020.

Prior History:  [**1] ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT

Marcel Fashions Grp. Inc. v. Lucky Brand Dungarees, Inc., 898 F.3d 232, 2018 U.S. App. LEXIS 21482 (2d Cir. N.Y., Aug. 2, 2018)

Disposition: Reversed and remanded.

CORE TERMS

marks, preclusion, claim preclusion, parties, defenses, infringement, trademark, settlement agreement, issue preclusion, district court, counterclaims, injunction, raising, suits, new claim, lawsuit

Civil Procedure, Preclusion of Judgments, Estoppel, Collateral Estoppel, Judgments, Res Judicata