When Suing for TM Infringement, make sure you own the trademark

Judge Laura Taylor Swain of the U.S. District Court for the Southern District of New York ruled that Liz Claiborne’s subsidiary, Lucky Brand Dungarees Inc. infringes on Miami-based Marcel Fashion Group’s “Get Lucky” apparel line. prnewswire.com Liz Claiborne and Lucky Brand Dungarees were ordered to pay Marcel Fashion Group $300,000- including $280,000 in punitive damages.  The judgment and order stems from the lawsuit Liz Claiborne and Lucky brand originally brought against Marcel Fashion and its Licensee, Ally Apparel, for trademark infringement in 2005.   A Jury determined that Marcel fashion did not engage in trademark infringement. Marcel fashion owned, and continually used the trademark, “Get Lucky” before Lucky Brand was even formed.  Marcel Fashion filed a counterclaim for trademark infringement against Lucky Brand and Liz Claiborne.

The jury found that Lucky Brand’s use of the “Lucky Brand” trademark and the use of “Lucky” and “Get Lucky” infringes on Marcel’s “Get Lucky” trademark and violates federal unfair competition laws. cnn Lucky Brand is said to be in the middle of a turnaround and this ruling could present consider obstacles in their endeavors. crainsnewyork Although Marcel Fashions has not decided whether they will sue Liz Claiborne if it continues to promote the brand and Judge Swain’s ruling does not prevent Liz Claiborne from continuing to use the Lucky moniker, Ann Schofield Baker, one of the attorneys who represented Marcel Fashions in the case, said if Liz Claiborne continues to use the name and slogan it would be a continued violation of Marcel’s Trademark. crainsnewyork

It’s essential to work with an experienced attorney who is familiar with the trademark process.  Having counsel on your side to ensure a detailed and efficient trademark search is completed before taking action (whether it be to release a slogan or register a logo) is crucial to the the protection of your trademark.

by Leslie Galindo, summer intern with Arther Law

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