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Defense in Trademark Action Not Precluded by Failure to Raise Same Defense in Earlier Action

The Supreme Court unanimously held this week that Lucky Brand was not precluded from mounting a new defense in its litigation with Marcel Fashions Group — despite having chosen not to bring up the same defense in a prior litigation.  This ruling clarifies the circumstances under which a defense can be precluded from a lawsuit.

In Lucky Brand Dungarees, Inc., et al. v. Marcel Fashions Group, Inc., No. 18-1086, Marcel, in 1986, obtained a registered trademark for the phrase “Get Lucky” for marketing its jeans and apparel line.  Lucky Brand, in 1990, obtained registered trademarks for “Lucky Brand” and other trademarks including the word “Lucky” for marketing its own jeans and apparel line.  In 2001, Marcel sued Lucky Brand, alleging that Lucky Brand’s use of the phrase “Get Lucky” in advertisements infringed Marcel’s trademark.  The parties ultimately settled, with Lucky Brand agreeing to cease use of the phrase “Get Lucky,” and with Marcel agreeing to release any claims regarding Lucky Brand’s use of its own trademarks.  In 2005, Lucky Brand sued Marcel, alleging that logos and designs released by Marcel and a licensee violated Lucky Brand’s trademarks.  Marcel then filed counterclaims, alleging that Lucky Brand had violated Marcel’s trademark and settlement agreement by continuing to use the phrase “Get Lucky.”  Lucky Brand, in a motion to dismiss Marcel’s counterclaims, alleged that the counterclaims were barred by the release provision of the settlement agreement, but did not otherwise invoke or litigate the release defense.  The District Court ultimately rejected Lucky Brand’s motion to dismiss, found that Lucky Brand had violated its settlement agreement with Marcel by using the phrase “Get Lucky”, and enjoined Lucky Brand’s use.  A jury separately determined that Lucky Brand infringed Marcel’s trademark.

Marcel then filed a suit against Lucky Brand in 2011, alleging that Lucky Brand continued to infringe Marcel’s “Get Lucky” trademark not by using the phrase “Get Lucky”-- but by using different trademarks owned by Lucky Brand that included the word “Lucky.”  Lucky Brand moved to dismiss Marcel’s claims, arguing that Marcel had released its claims regarding Lucky Brand’s own trademarks in the settlement agreement. The District Court granted the motion to dismiss, but the Second Circuit vacated the decision, concluding that using a doctrine of “defense preclusion,” Lucky Brand was barred from raising the settlement agreement as a defense because the parties had previously been engaged in the 2005 adjudication on the merits where the defense was, or could have been, asserted.

The Supreme Court reversed the Second Circuit’s decision. While leaving open the possibility of “defense preclusion” as a category of res judicata, the Court held that a defense can only be barred in the same way that a claim can be barred – if the causes of action are the same in the two suits. Id. at 7.  In other words, the two cases must have “a common nucleus of operative facts”, such that a different judgment in the 2011 action would “imperil the judgment” in the 2005 action. Id. at 7-8.  Because Marcel’s 2011 lawsuit did not involve any alleged use of the “Get Lucky” phrase, the 2011 action “challenged different conduct, involving different marks” such that a different judgment would not impair the 2005 judgment. Id. at 9.  What is more, the conduct in the 2011 action occurred after the conclusion of the 2005 action, and claim preclusion generally does not bar conduct that occurs after the filing of the initial action. Id.  That is especially true, the Court stated, in the case of trademark enforcement, where likelihood of confusion depends upon “extrinsic facts that change over time.”  Id.  Thus, it was “no surprise” that the Second Circuit held that Marcel’s 2011 claims were not barred by its 2005 action, and similarly the 2005 action “could not bar Lucky brand’s 2011 defenses.” Id. at 9-10.

While the Supreme Court rejected defense preclusion on the facts of this case, it left open the possibility of using it as a category of res judicata, but only where it meets the same criteria as claim preclusion, namely that the later claim arises from the same set of operative facts as the former claim.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume X, Number 136

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About this Author

Michael Greis, Mintz Levin Law Firm, Intellectual Property Law Attorney, New York
Member

Michael is an intellectual property attorney whose practice encompasses trademark and copyright enforcement, technology and licensing transactions, patent and trademark portfolio management, and counseling clients on intellectual property issues that arise in business deals. He also has extensive experience in cybersecurity, privacy, and social media law. His clients range from start-ups to Fortune 500 companies in a broad range of industries, including technology, manufacturing, sports & entertainment, and digital & social media.

The...

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Associate

Meena focuses her practice on intellectual property litigation. She has handled all aspects of litigation, including drafting pleadings and briefs, and brings to her role prior experience drafting and prosecuting US and international patents and responding to patent office actions. Meena has experience in a broad range of technology areas, including machine learning, malware detection, cybersecurity, networking hardware and software, wireless networks, data encryption, and computer programming.

Prior to joining Mintz, Meena served as an assistant district attorney with the Kings County District Attorney’s Office in Brooklyn, New York, where she worked on misdemeanor hearings and trials as well as grand jury presentations of felony cases. Earlier, she was a patent agent in the New York office of a California-based global law firm and a technical advisor and patent agent at an international law firm based in New York.

In law school, Meena served as executive articles editor of the Brooklyn Journal of International Law as well as an intern with the Children’s Law Center in Brooklyn and the Kings County District Attorney’s Office. While earning her bachelor’s degree, Meena studied uses for auditory game cues in iPhone applications as a student researcher at the University of North Carolina through the Computing Research Association’s Distributed Research Experiences for Undergraduates program. She was also twice a summer science research fellow at Bryn Mawr College, where she studied recurrent artificial neural networks and assessed the use of a humanoid robot in a computer science course.

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