Dungarees Make It To The Supreme Court.

The National Law Journal reports this article written by K&L Gates…. A nearly 20-year dispute between two competitors in the apparel industry will be heard by the Supreme Court Monday January 13, 2020, on the legal issue of claim preclusion – highlighting the practical pitfalls of releasing trademark infringement claims in settlement agreement between parties that continue to use the marks at issue. The case is Lucky Brands Dungarees, Inc. v. Marcel Fashion Group, Inc., Case No. 18-1086

 

Trademark Infringement Case Update: Lucky Brands Dungarees v. Marcel Fashion Group

A nearly 20-year dispute between two competitors in the apparel industry will be heard by the Supreme Court Monday January 13, 2020, on the legal issue of claim preclusion – highlighting the practical pitfalls of releasing trademark infringement claims in settlement agreement between parties that continue to use the marks at issue. The case is Lucky Brands Dungarees, Inc. v. Marcel Fashion Group, Inc., Case No. 18-1086.

The practical lessons to draw from this dispute are numerous:

  1. the importance of initially clearing marks and implementing a plan to handle potential third party objections
  2. strategic enforcement as to when, and against whom, to enforce trademark rights – and squarely on point with this nearly 20 year battle now before the Supreme Court
  3. careful drafting of what claims are released in the context of future use of the same or similar trademarks.

The specific issue before the Supreme Court as phrased by Lucky is whether, when a plaintiff asserts new claims, federal preclusion principles can bar a defendant from raising defenses that were not actually litigated and resolved in any prior case between the parties.

Like most cases that end up before the Supreme Court there is a long road of litigation that leads there. This case is no different, with no less than three separate lawsuits – two brought in 2001 and 2011 by smaller apparel maker Marcel that has used the name “Get Lucky” and long accused jeans maker Lucky Brand of infringing its trademarks. And one brought by Lucky in 2005 against Marcel. The 2011 suit filed by Marcel included two visits to the Second Circuit before ending up at the Supreme Court.

Claim preclusion prevents a party from relitigating the same claim, between the same parties, when an earlier action resulted in an adjudication on the merits. Lucky argues the claims are not the same because it concerns infringement after the 2005 litigation concluded. Marcel argues that the claims are from the same “series of transactions” because Lucky’s current infringement is a continuation of prior wrongful conduct.

The Second Circuit is not the first to recognize “defense preclusion”, however, this case puts this issue squarely before the Supreme Court. Both parties rely on public-policy arguments – promoting efficiency and preserving judicial resources.

Read on at  https://www.natlawreview.com/article/trademark-infringement-case-update-lucky-brands-dungarees-v-marcel-fashion-group