Judge says Liz Claiborne’s Lucky Brand infringes trademark, orders $300K in damages
By APWednesday, June 2, 2010
Liz Claiborne order to pay in ‘Lucky’ brand suit
NEW YORK — A federal judge said Liz Claiborne Inc.’s popular denim line Lucky Brand Dungarees infringes on a Miami company’s trademark and ordered the clothier to pay $300,000 in damages.
The ruling, signed Friday and filed Tuesday, could create a hurdle for the clothing line that’s in the midst of a turnaround.
In the decision, Judge Laura Taylor Swain ruled Lucky Brand’s name along, with its use of the phrase “get lucky” and other references to “lucky” violate a trademark for Marcel Fashion Group’s “Get Lucky” clothing line.
Swain’s ruling does not prevent Liz Claiborne from continuing to use the Lucky moniker. But Ann Schofield Baker, an attorney who represented Marcel in the case, said if Liz Claiborne continues to use of the name and slogan it would be a continued violation of Marcel’s trademark.
Nicholas Rubino, Liz Claiborne’s chief legal officer, said the company would continue using its Lucky Brand name, but would discontinue use of the “Get Lucky” slogan.
Schofield Baker said Marcel has not yet decided whether to pursue new litigation if Liz Claiborne continues to promote the brand.
In a statement, Rubino said Liz Claiborne felt its positions were vindicated in the case, saying it was determined Liz Claiborne had not acted in bad faith. The damages awarded were a fraction of what had been originally sought, Rubino said.
Both sides agreed not to appeal.
Marcel’s Get Lucky line debuted in 1985 and is licensed to Ally Apparel. The first trademark filing for Lucky Brand was recorded in 1991.
Lucky Brand has since expanded to sell everything from jeans and shirts to accessories and shoes and is in the midst of an overhaul that included bringing in a retail industry veteran in late 2009 to lead the brand.
The ruling stems from a lawsuit by Liz Claiborne against Marcel. Earlier this spring, a jury ruled that Marcel’s line didn’t infringe on Lucky Brand’s. The damage award came in a countersuit by Marcel.
Liz Claiborne shares rose 10 cents, or 1.7 percent, to $5.91 in trading Wednesday.
