Liz Claiborne, Lucky Brand Escape Trademark Infringement Lawsuit

September 27, 2012, by Mandour & Associates, APC

Los Angeles – Liz Claiborne Inc. and its Lucky Brand Dungarees Inc. denim unit won summary judgment from a Manhattan federal court Tuesday on a fashion group’s claims that Lucky Brand infringes its “Get Lucky” trademark.

Marcel Fashions Group Inc. already had its trademark claims against Lucky adjudicated in an earlier action, Judge Laura Taylor Swain ruled.

Lucky has been selling vintage-inspired jeans and casual apparel for over 20 years, and is the owner of numerous trademarks registered with the U.S. Patent and Trademark Office, including “Lucky Brand,” a clover-shaped design trademark and “Lucky brand Dungarees of America.”

Marcel sued Lucky Brand in September 2001 in Florida federal court asserting claims for trademark infringement and unfair competition based on Lucky’s use of the “Get Lucky” trademark, which Marcel owns. It later sued Liz Claiborne in the same court with similar allegations, and the two cases were rolled together into consolidated litigation.

The companies settled the 2001 action in May 2003, providing that Liz Claiborne and Lucky would desist from the use of “Get Lucky” as a trademark in connection with clothing sales.

In 2004, meanwhile, Marcel licensed the “Get Lucky” trademark to Ally Apparel Resources LLC, which launched a “Get Lucky” line of jeans that competed with Lucky. Lucky filed its own lawsuit in 2005 alleging Ally’s products infringed its “Lucky Brand” trademarks.

Marcel and Ally counterclaimed that Marcel was the senior user of the “Get Lucky” trademark, and that Lucky’s use of that trademark and others infringed Marcel’s rights and violated the 2003 settlement agreement. In 2010 a jury found that Lucky had infringed the trademarks, and awarded Marcel several hundred thousand dollars in damages.

Marcel then filed its current lawsuit in April 2011, seeking an injunction based on Lucky’s continued use of the Lucky Brand trademarks. It conceded that the action was based on the identical manner and form of trademark infringement and on the same goods for which Lucky was found liable for infringement in the 2005 lawsuit.

“Marcel merely seeks broad injunctive relief prohibiting Lucky Brand from using the same trademarks that were the subject of the 2005 action, and further damages for use of those marks,” Judge Swain said.

The company could have obtained such relief in the 2005 action, and did actually seek it, but the negotiated final order in that case did not provide for such an injunction, she said.

Judge Swain also denied Marcel’s motions for leave to file an amended complaint and for contempt sanctions against Lucky and Liz Claiborne.