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 first filed suit against Strategic Marks LLC — a company Consumerist profiled last year looking at founder Ellia Kassoff’s efforts to revive beloved brands like Hydrox, RocketPops and Marshall Field’s through trademark acquisitions — in 2011 [PDF], alleging then that the company was infringing on eight of its “heritage” trademarks under the Lanham Act, including: Abraham & Straus, A&S, The Broadway, Jordan Marsh, Bullock’s, Robinsons-May, Filene’s and The Bon Marché (via the National Law Journal).
That case was set to go to trial this month, when Macy’s filed a second suit on Feb. 9 [PDF], adding more brands to the list and naming Kassoff as a defendant. Those additions to the list are as follows: Marshall Field’s, Burdines, Foley’s, Goldsmith’s, Hecht’s, I. Magnin, Kaufmann’s, Lazarus, Meier & Frank, Rich’s, Strawbridge’s and Stern’s.
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.
But Strategic Marks has countersued, claiming that Macy’s had abandoned the trademarks, and citing the Lanham Act again. Under that act, a mark is considered abandoned if it isn’t used in the three years. In fact, claims Strategic Marks, Macy’s is the one doing the infringing on the marks it obtained, by selling vintage brand T-shirts and tote bags on www.macys.com.
In a Feb. 5 press release, Kassoff said: “Macy’s had not used most of these trademarks in over 15 years and, by law, they lose them if not used in three years or more.”
That echoes the sentiments Kassoff expressed to Consumerist back in June of last year (we reached out to Kassoff today seeking comment on the latest lawsuit, but have not heard back).
“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.’”
For the original trial that was scheduled March 2, Macy’s was planning to have its associate general counsel testify about the history of the brands and trademarks. The company claims it didn’t abandon those marks, pointing to products on its website that use the “heritage” names and citing examples of some stores that continued to operate under their original names for years. Kassoff claims that those products started popping up after he’d laid claim to the unused trademarks
U.S. District Judge Samuel Conti in the Northern District of California vacated the trial for the first case after taking over both cases earlier this month. The next hearing is now scheduled for March 6.
Macy’s Fights for Old Retailer Names [The National Law Journal]
by Mary Beth Quirk via Consumerist
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