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898 F.3d 232 *; 2018 U.S. App. LEXIS 21482 **; 127 U.S.P.Q.2D (BNA) 1707 ***
MARCEL FASHIONS GROUP, INC., Plaintiff-Appellant, v. LUCKY BRAND DUNGAREES, INC., LUCKY BRAND DUNGAREES STORES, INC., LEONARD GREEN & PARTNERS, L.P., LUCKY BRAND, LLC, LUCKY BRAND DUNGAREES STORES, LLC, KATE SPADE & CO., Defendants-Appellees, LIZ CLAIBORNE, INC., LBD ACQUISITION CO., LLC, Defendants.
Subsequent History: As Corrected August 7, 2018.
US Supreme Court certiorari granted by Lucky Brand Dungises v. Marcel Fashions Group, 2019 U.S. LEXIS 4403 (U.S., June 28, 2019)
Prior History: [**1] Appeal from the United States District Court for the Southern District of New York. No. 11-cv-05523 — Laura Taylor Swain, Judge.
Plaintiff-Appellant Marcel Fashions Group, Inc. ("Marcel") and Defendants-Appellees Lucky Brand Dungarees, Inc. and affiliates ("Lucky Brand"), competitors in the apparel industry, have been hotly contesting their respective rights as to certain trademarks for nearly two decades. In this latest round, Marcel sues under the Lanham Act, alleging that Lucky Brand is infringing on Marcel's "Get Lucky" trademark through its use of "Lucky" on its merchandise, and that Lucky Brand does so in violation of an injunction entered in an earlier action between the parties. The district court dismissed the action, concluding that Marcel released its claims through a 2003 settlement agreement that resolved an earlier substantially similar litigation between the parties. We conclude that the district court did so in error because res judicata precludes Lucky Brand from raising its release defense in this action. To arrive at that result, we determine that under certain conditions parties may be barred by claim preclusion from litigating defenses that they could have asserted [**2] in an earlier action, and that the conditions in this case warrant application of that defense preclusion principle.
Consequently, we VACATE the judgment entered by the district court and REMAND for further proceedings.
Marcel Fashions Group, Inc. v. Lucky Brand Dungarees, Inc., 2016 U.S. Dist. LEXIS 177483 (S.D.N.Y., Dec. 22, 2016)
Brand, preclusion, claim preclusion, issue preclusion, district court, infringement, defenses, res judicata, litigated, parties, unfair, earlier action, trademarks, offensive, settlement agreement, counterclaims, raising, registered, marks, asserting, invoking, collateral estoppel, motion to dismiss, previous action, instant action, proceedings, victorious, estoppel, courts
Civil Procedure, Appeals, Standards of Review, De Novo Review, Defenses, Demurrers & Objections, Motions to Dismiss, Failure to State Claim, Judgments, Preclusion of Judgments, Res Judicata, Affirmative Defenses