Trademark Infringement: It Takes More Than Luck to Win

Liz Claiborne, Inc. learned a costly lesson recently:  when going after a smaller company for trademark infringement, it’s not the “lucky” party that wins, but the one with the facts and the law on its side.

In July 2005, Liz Claiborne and its subsidiary Lucky Brands Dungarees, Inc. (“Claiborne”) sued a
smaller company, Marcel Fashion Group, Inc. (“Marcel”) for trademark infringement, trademark dilution and unfair competition surrounding Marcel’s use of the trademark GET LUCKY, which Claiborne alleged infringed upon a number of federally registered trademarks owned by Claiborne and its subsidiary that contained the word“Lucky”.

Marcel countered in September 2005, claiming that by continously using the GET LUCKY mark since 1985, it, and not Claiborne, was the senior user of the mark.  Marcel also filed six counterclaims against Claiborne, to include breach of a May 2003 settlement agreement.  After nearly five years of litigation, the court awarded nothing to Claiborne and $20,000 in compensatory damages to Marcel.  And in an unusual ruling in trademark infringement cases, the court ordered Claiborne, the plaintiff, to pay an additional $280,000 in punitive damages to Marcel.

Trademark litigation can be an effective way to enjoin other companies from profiting off the good will that a trademark owner has built up in a mark.  But to succeed, there has to be more than mere “luck” on the plaintiff’s side.

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