Lucky Brand Bedding at Macy's

When rival apparel companies spar intensely over trademark infringement, their dispute can play out in courts over years, and through multiple lawsuits. 

What happens when one side argues the infringement went on despite a previous dispute between them, or the other brings up a defense it could arguably have litigated in their earlier suit? As its term wound to a close, the Supreme Court agreed on Friday to consider those arguments in Lucky Brand Dungarees Inc. v. Marcel Fashion Group Inc., a case between two brands that have butted heads for nearly two decades over Marcel’s “Get Lucky” trademark and Lucky’s own trademarks.  

“It is an opportunity to settle the issues and move on,” said Olivera Medenica, partner at Dunnington Bartholow & Miller LLP, who represents Marcel Fashions in the case. 

An attorney for Lucky Brand could not immediately be reached for comment Monday. 

One basic question before the Supreme Court court in this case is a somewhat technical one: Can a party battling an old adversary anew make defenses it arguably may not have fully litigated in an earlier dispute between them?  

But it can be an important question, especially in the domain of intellectual property, where trademark rights can be continually argued and asserted in different ways. 

In general, courts are not inclined to keep adjudicating disputes between the same parties over the same issues. But in the trademark context, parties may argue that they’re raising new arguments or defenses because the infringement in question is a chronic problem despite their previous legal disputes, or because the trademarks in question have evolved. 

“Trademark rights can grow or shrink over time, as can the likelihood of confusion between two marks,” Lucky argued in its February petition before the Supreme Court that asked it to hear the case. 

In this case, the dispute began in 2001, when Marcel sued Lucky to assert its “Get Lucky” trademark. The two firms resolved the dispute about two years later in a $650,000 settlement in which Lucky agreed not to use the “Get Lucky” trademark but retained the right to assert the “Lucky Brand” trademark, according to Lucky’s petition.   

Then they battled again in 2005, when Lucky sued Marcel in New York federal court over its “Lucky Brand” trademarks, including those Lucky registered after the 2003 settlement. That dispute eventually went to trial, and led to a jury verdict in 2010 that Lucky had infringed upon Marcel’s “Get Lucky” trademark after their settlement in 2003.  

Again, it didn’t end there. Marcel sued Lucky in 2011, arguing that Lucky Brand was still using phrases that violated Marcel’s “Get Lucky” trademark. 

A New York federal court had then agreed with Lucky that the 2010 case and its verdict had resolved the dispute, and that Marcel couldn’t now sue again over the same claims, but the Second Circuit appeals court disagreed, which allowed Marcel to proceed. The dispute took a few more turns after that, and is now before the Supreme Court, which will hear oral arguments in the case in its next term this fall.

For its part, Marcel had argued that the Supreme Court shouldn’t take up this case, claiming it wasn’t quite the right case to decide this question about what parties can and cannot argue in new suits between old adversaries. Marcel argued that its 2011 suit against Lucky wasn’t a matter of opening a new claim over old issues, but simply about enforcing the outcome of their case in 2010.

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