(CN) – Lucky Brand, famous for its eponymous jeans, must face claims that it infringed on Marcel Fashions’ trademark “Get Lucky,” the 2nd Circuit ruled Wednesdsay.
Marcel Fashions Group has sold jeans under its mark “Get Lucky” since 1986. Lucky Brand Dungarees began selling jeans and other clothes under its “Lucky” marks in 1990. It owns the marks “Lucky Brand” and “Lucky Brand Dungarees.”
In 2005, Lucky sued Marcel for alleged infringement on its trademarks, but Marcel made counterclaims seeking to enjoin Lucky from using any mark including the word “Lucky.”
A jury found for Marcel, and the parties negotiated a final order that prohibited Lucky from using the “Get Lucky” mark.
In its verdict, the jury answered “Yes” to a question asking whether Lucky “infringed Marcel Fashion’s ‘Get Lucky’ mark by using ‘Get Lucky,’ the ‘Lucky Brand’ marks and any other marks including the work ‘Lucky.'”
This language was not included in the parties’ final order, however, because Lucky refused to agree to its inclusion.
Marcel sued Lucky Brand seven years later for continuing to use its marks in violation of the parties’ prior settlement.
Though a federal judge in Manhattan granted Lucky Brand summary judgment because it found the claims barred as redundant, a violation of the res judicata doctrine, the 2nd Circuit revived Marcel’s action Wednesday.
“It makes no sense to construe the jury verdict (and the court’s judgment) as awarding damages for infringements that had not yet occurred and might never occur,” Judge Pierre Leval wrote for the three-judge panel.
Since the May 2003 settlement “specified that it extinguished claims for any infringements that occurred prior to that date,” the deal made clear that damages for those earlier infringements were not at issue, the court found.
“It would make no conceivable sense to construe the lump-sum judgment in Marcel’s favor for Lucky Brand’s prior infringements of Marcel’s ‘Get Lucky’ mark as effective authorization to Lucky Brand to infringe ‘Get Lucky’ at will and without compensation forever into the future,” Leval wrote.
The appellate panel did affirm that Lucky should not be held in contempt for its continued use of its Lucky Brand marks, because the jury’s decision could be interpreted as only applying to the use of the “Get Lucky” mark, rather than any use of the word “Lucky.”
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