The Supreme Court yesterday issued its second trademark decision of this term.
In Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., Case No. 18-1086 (S. Ct. May 14, 2020), the ultimate question before the Court was the applicability of “defense preclusion.” Specifically, the Court considered whether and under what circumstances a defense may be barred in subsequent litigation between two parties. In a unanimous decision, the Court held that any preclusion of defenses must, at a minimum, satisfy the strictures of issue preclusion or claim preclusion. Namely, the causes of action must share a “common nucleus of operative facts” for a defense to be precluded.
This case was the latest twist in nearly 20 years of trademark litigation between Lucky Brand and Marcel Fashions Group involving the parties’ “Lucky” trademarks. In the first case, brought in 2001, Marcel sued Lucky Brand alleging that Lucky Brand’s use of the phrase “Get Lucky” infringed its registered trademark for GET LUCKY. That case resulted in a settlement agreement in which Lucky Brand agreed to cease use of the phrase “Get Lucky,” while Marcel agreed to release any claims regarding Lucky Brand’s use of its own trademarks. Continue Reading