Macy's Trying To Keep Others From Using The Brands It Bought And Then Abandoned

from the mine! dept

Thu, Mar 5th 2015 2:46pm — Timothy Geigner

In the interest of full disclosure, I hope there is a special place in Hell reserved for the Macy's people. A decade ago, the department store giant waltzed into my hometown of Chicago and gobbled up the State Street institution known as Marshall Field's, forever changing how Christmas is experienced by young people in this city of mine. Now, making matters worse, it appears that Macy's is attempting to retain some kind of ownership over the brands its buy-ups dissolved, contrary to the rules about trademark abandonment.

When Macy’s Inc. swallowed up a slew of department stores across the land — from Marshall Field’s to Filene’s, Abraham & Straus to Jordan Marsh — it rebranded many of them, turning the formerly regional chains into Macy’s stores. But in a new lawsuit brought by the company that echoes a suit from 2011 that was slated to come to trial soon, Macy’s says the California company behind the resurrection of Hydrox and Astro Pops is infringing on trademarks it held for many of those recognizable brand names.

Macy’s alleges that Strategic Marks infringed on its trademarks once again when it began selling T-shirts and candy under those 12 additional brands last month. In 2010, Strategic Marks had applied to register for trademarks for some of those names to be on clothing sold online and potentially in pop-up stores in the future, “using typestyles which are intentionally identical to those used by Macy’s,” the suit says.

Strategic Marks vehemently disagrees in a countersuit, pointing out that after Macy's bought up all those brands, it then rebranded them as Macy's stores and abandoned the use of the original names. Under the Lanham Act, the failure to use a trademark for at least three years constitutes abandonment, leaving others free to use them as they see fit. Which is exactly what Strategic Marks did in selling nostalgic apparel using the brand-names. Ellia Kassoff, founder of Strategic Marks, is once again asserting abandonment, as he did when Macy's first filed against him in 2011.

“They weren’t using these trademarks,” he told Consumerist back then, claiming, “We have proof they weren’t using these trademarks… Macy’s went to the Trademark Office and said, ‘No, no! These are ours! These are ours! We started it! This has our heritage! It’s our heritage!’ And the Trademark Office said, ‘Sorry, but you’re not using it. You haven’t used it in years.’”

Should that prove to be true, the Macy's suit is meritless and smacks of a company seeking to dissolve brands through buyouts and then attempting to control the use of those dissolved brands after they've been buried in the graveyard. Large companies buying out local corporations is an unfortunate but legal reality, but detaining those beloved brands even after they've been put to death isn't just silly, it's cruelly authoritarian. On top of that, given that Macy's went to some length specifically to re-brand the old names into the Macy's fold, it's difficult to understand where customer confusion over nostalgic apparel is going to come in.

The trial date for both suits is set for March, where hopefully the dead brands will be set free.

macyslawsuit2011 (PDF)macyslawsuit2011 (Text)

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Filed Under: abandonment, abraham & strauss, filene's, jordan marsh, lanham act, marshall field's, trademark
Companies: macy's, strategic marks

20 Comments

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TheResidentSkeptic (profile), 5 Mar 2015 @ 12:45pm

This could set a VERY dangerous precedent.
Imagine - if something was considered "out of use in commerce" for 3 years and therefore is abandoned and usable by anyone else...

If a book is out of print for 3 years, would it then go into the public domain? Other people could write un-authorized sequels! We can't have that!

If a movie is out of print (no dvd's for sale) for 3 years, would it then go into the public domain? Why - people could share it for free!!!

Imagine the chaos and horror this would cause! No new movie or book would ever be made again...

No - this case can only be decided in Macy's favor - the whole world is at stake here...

/
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Blackfiredragon13 (profile), 5 Mar 2015 @ 2:58pm

Re: This could set a VERY dangerous precedent.
Forgot the S
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Anonymous Coward, 5 Mar 2015 @ 2:59pm

to quote their own commercial
Macy's "They're known as the quality store"
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Applesauce, 5 Mar 2015 @ 3:01pm

Re: This could set a VERY dangerous precedent.
Won't apply to books. Books are protected by copyright with a whole different set of laws.
Copyright and trademark are two very different animals.
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Anonymous Coward, 5 Mar 2015 @ 3:37pm

Re: Re: This could set a VERY dangerous precedent.
While it won't apply to books and other things that are not trademarked. It would indeed be a blessing if all trademarks and copyright laws were redone to say after 3-5 years of no sales or monetization it would be relinquished to the public domain. This would get people to sell/provide their idea instead of sit on it and stop the advancement of society.

If a company stops selling/producing something after 5 years then the item has probably served its usefulness and needs to be gifted for others to start building upon it.

If a company wants to try and keep their control they will have to eventually decide is the cost of still producing/marketing the item worth it when sales have diminished significantly.
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Andy, 5 Mar 2015 @ 3:49pm

Re: Re: Re: This could set a VERY dangerous precedent.
At the very least have to re-register and demonstrate that a mark will be used or that it needs to be held for some reason (would have to be good!)
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Anonymous Coward, 5 Mar 2015 @ 4:16pm

I can't help but think that if they really wanted to preserve those marks they could have just sold t-shirts with them on them.
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DOlz (profile), 5 Mar 2015 @ 4:33pm

Re: Re: This could set a VERY dangerous precedent.
Indeed forgetting the “S” is a VERY dangerous precedent.
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trainnut, 5 Mar 2015 @ 7:02pm

trademarking unused names and logos
Don't think any of this was ever litigated maybe set the precedent for this though. Full article here.

https://groups.yahoo.com/neo/groups/mstl/conversations/topics/3656

"U.P.'s trademark applications seek rights to use such logos as the Cotton Belt Route mark of the old St. Louis Southwestern Railway, which Southern Pacific took over in 1932. Also included is the Feather River Route mark of the Western Pacific, which merged with U.P. and the Missouri Pacific in 1982.

Union Pacific might be too late in asserting its rights over the logos of fallen-flag railroads - those which no longer exist under their old names because of purchases or mergers - if it hasn't been using the marks or protecting them, said trademark attorney Kathy Kirschbaum of Omaha's Koley Jessen P.C."
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trainnut, 5 Mar 2015 @ 7:04pm

Re: trademarking unused names and logos
THis UP controversy began in 2003. Maybe they should have trademarked something like Rolling Napalm Destruction or Train Flambe! If they haven't I might!
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Anonymous Coward, 5 Mar 2015 @ 7:10pm

Re: Re: Re: Re: This could set a VERY dangerous precedent.
So how can Macys keep all the trademarks it owns in play? Name house brands after the old stores? A&S cookware, Filene's unmentionables, Wannamakers Wallets...

I would think this would be more expensive than it is worth. Perhaps it is time to Let it Go.
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Anonymous Coward, 6 Mar 2015 @ 5:05am

Re: This could set a VERY dangerous precedent.
No this is not the same. A Trademark is NOT the same as Copyright.

What is going on here has nothing to do with a book going out of print.

Here are definitions of these two items that should clarify things for you:
http://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright
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David (profile), 6 Mar 2015 @ 7:03am

Bamburgers, too
Macy's bought Bamburgers and re-branded them over 20 years ago in the North East.

It would be neat to start a food truck called BAMBurgers!
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John Fenderson (profile), 6 Mar 2015 @ 8:21am

Re: Re: Re: Re: Re: This could set a VERY dangerous precedent.
"Name house brands after the old stores? A&S cookware, Filene's unmentionables, Wannamakers Wallets... "

But trademark protection is limited to specific product categories. If they want to sue people for putting a trademark on a t-shirt, for example, they'd have to register the trademark for that category and produce something using the trademark in that category.
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Anonymous Coward, 6 Mar 2015 @ 10:51am

Re: Re: This could set a VERY dangerous precedent.
Since copyright renewal is automatic, it makes me wonder why extensions even exist anymore.
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Drawoc Suomynona (profile), 6 Mar 2015 @ 12:02pm

Re: Re: Re: Re: Re: Re: This could set a VERY dangerous precedent.
Trademark protection is limited to specific product categories in most cases, but in cases where a "famous" mark is involved there is the claim of "dilution" which can reach across product classes. One of the aspects in judging of a dilution claim is duration of use and consumer recognition, and these old brands have both of those things in spades.

And I would agree that if Macy's had used the old store brands as house brands they would probably be in a better position to defend the names broadly, assuming they used them prominently and consistantly. If they had been used, even minimally, it's likely the brand recyclers would just pass them over until the brands finally kick it for good.

That said, Macy's is flailing. They're putting up as many road blocks and causing as much delay as they can, but they will lose if it goes all they way.

These marks are not only merely dead, they really, most sincerely dead.
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Nick, 6 Mar 2015 @ 5:03pm

You know Mike, for someone who is so critical of IP-dependent industries, you sure are buying what they're selling. Brand names? Movies? T-shirts? If you want a candy clone make a candy clone and call it something else. If it's good, people buy it, if it's not, they don't. What difference does what it's called make? And most of this stuff is irrelevant, vapid garbage.

By buying into branding, entertainment, etc. you willingly grant them the power that you constantly complain about. How about you really stick it to these assholes and just stop caring about them and finding something better to do? That is the best way to beat them.
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Matthew A. Sawtell, 9 Mar 2015 @ 6:40am

Old Brands never die... they just get recycled
Had to laugh a bit about this Macy's/Marshall Fields flap, given that as a former Detroiter I got to witness Marshall Fields buy Hudson's. Lord knows if the lawyers in New York are game enough to come to Motor City to complain about the nostalgia wear for that brand.
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Anonymous Coward, 9 Mar 2015 @ 3:48pm

Re: This could set a VERY dangerous precedent.
All of your examples are of copyrighted works. Trademark isn't copyright.
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Power Guy Rules (profile), 16 Mar 2015 @ 4:02am

Got replied from trademark attorney
The trademark attorney wrote back after I debated with him about the expired trademarked names:

His reply:
- Marks do not leave the USPTO database for 15 years after expiration. They can still be in business.

Then, I told him about Lanham Act, and his reply:

- The Lanham Act has nothing to do with an internal policy of the USPTO as to how long they show active and inactive records.

Is he right or wrong?
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