- Court: Intellectual Property Archives
- Area(s) of Law: Trademarks, Infringement Actions
- Date Filed: 02-25-2015
- Case #: 12-4341-cv.
- Judge(s)/Court Below: United States Court of Appeals for the Second Circuit
- LexisNexis Citation: 2015 U.S. App. LEXIS 2794
- Westlaw Citation: 2015 WL 774560
- Full Text Opinion
Opinion (Leval): Plaintiff Marcel Fashions Group, Inc. (“Marcel”) received a federal trademark for “Get Lucky” in 1986. Defendant Lucky Brand Dungarees, Inc. (“Lucky Brand”) sells apparel using the mark “Lucky.” In 2001, Marcel brought a trademark infringement lawsuit against Lucky Brand that resulted in a settlement where Lucky Brand would cease the use of “Get Lucky” as a trademark but still had rights to the “Lucky Brand” trademark. In 2009, after a second lawsuit, the district court found that Lucky Brand had infringed Marcel’s trademark through use of “Get Lucky” and the “Lucky Brand” trademark. The court enjoined Lucky Brand from use of the “Get Lucky” mark. In 2011, Marcel brought another lawsuit against Lucky Brand for infringement of their “Get Lucky” trademark. The district court found that the lawsuit was barred by claim preclusion. The Court reversed, finding that a prior judgment of trademark infringement does preclude Marcel from bringing another trademark infringement suit for subsequent trademark infringements. The Court did not find Lucky Brand in contempt because the 2009 injunction was unclear on whether it was meant to cover all “Lucky Brand” marks or only the “Get Lucky” mark. The district court grant of summary judgment was VACATED and REMANDED, and the denial of Plaintiff’s motion for contempt was AFFIRMED.