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

from the mine! dept

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.

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