U.S. Supreme Court Rejects 'Defense Preclusion' in Trademark Suit

On May 14, 2020, the U.S. Supreme Court resolved a circuit split, finding that any preclusion of litigation defenses must comply with traditional res judicata principles, and ruling that Lucky Brand Dungarees, Inc. (Lucky Brand) was not precluded from asserting its defenses in its long-standing trademark litigation against Marcel Fashions Group, Inc. (Marcel). The Supreme Court's decision in Lucky Brand Dungarees, Inc., et al. v. Marcel Fashions Group, Inc., 590 U.S. ___ (2020), has substantial implications for all litigants, but, as the Court noted, it is particularly important in the trademark context, where the relevant facts supporting a claim or defense can change drastically in a short period of time.

Background

Marcel and Lucky Brand have been litigating against each other for nearly 20 years. Marcel first filed suit in 2001, alleging that Lucky Brand infringed Marcel's "Get Lucky" trademark. The parties settled in 2003, with Lucky Brand agreeing to refrain from using the phrase "Get Lucky," and Marcel releasing any claims regarding Lucky Brand's use of other trademarks that included the word "Lucky" without being preceded by "Get," including the "Lucky Brand" mark. In 2005, Lucky Brand brought suit, alleging that Marcel had unlawfully copied Lucky