Judge: Macy’s Still Has A “Protected Interest” In Trademarks Of Retired Stores Like Marshall Field’s

Image courtesy of (David Paul Ohmer)

Macy’s doesn’t necessarily want to sell anyone T-shirts bearing the names of department stores it’s bought up over the years, including Marshall Fields’, Lazarus, and six others, but according to a judge’s recent ruling, no one else can legally peddle clothing with those retired brands on them, either.

Earlier this week, U.S. District Court Judge Edward Chen ruled that Macy’s still has a “protected interest” in the trademarks on T-shirts of eight department store chains that it acquired over the years under the name Federated Department Stores, Inc., Bloomberg BNA reports.

Almost a year ago, Macy’s filed a second trademark infringement suit in the Northern District of California against a company called Strategic Marks (the first was filed in 2011). The company’s chief executive, Ellia Kassoff, spoke to Consumerist in June 2014 all about his plans for the trademarks he’d acquired for the various “heritage” brands: he wanted to sell products like T-shirts emblazoned with the department stores’ names on a site called Retro Department Stores.

Macy’s hadn’t been using the brand names since putting all its stores under the Macy’s banner in 2006, Kassoff said.

“They weren’t using these trademarks,” he claimed in 2014. “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.’”

Macy’s wasn’t pleased with his business plan, as it was selling T-shirts and bags bearing the old names through its Macy’s Heritage Store online (Kassoff claims the company started doing that after he applied for the trademarks). It said in its suit that Strategic Marks was infringing on trademarks it held, and recently moved for partial summary judgment, seeking judgment on its trademark infringement claims with respect to T-shirts being sold on the Retro website bearing the logos of the eight heritage brands: Marshall Field’s, I. Magnin, Burdines, Kaufmann’s, Lazarus, Meier & Frank, Rich’s and Strawbridge’s.

Judge Chen agreed with Macy’s, writing in his judgment:

“Because Strategic Marks’s infringing activity consists of the deliberate sale of the same product sold by Macy’s (t-shirts), bearing the same exact mark, and sold at a relatively inexpensive price which likely results in limited consumer care, the Court finds that there is a high likelihood of confusion, and thus grants Macy’s motion for partial summary judgment.”

The court didn’t accept the argument that the closure of the old department stores meant Macy’s had abandoned those trademarks, necessarily.

“Simply because a store has ceased operations does not mean that its proprietor or owner does not maintain a valid interest in the registered trademark of the business,” Chen said. “A trademark can still exist and be owned even after a store closes. If an accused infringer uses the mark, a consumer may still be confused as to whether the owner of the trademark authorized or licensed the infringer.”

Macy’s lawyer told the Chicago Tribune that the company is “is pleased that Judge Chen recognized the importance of Macy’s heritage brands, and looks forward to prevailing at trial on the remaining store names.”

Kassoff says he’s pleased as well, telling the Tribune the ruling was expected. He says the judge’s decision only affects T-shirts, and not any online ventures or bricks-and-mortar stores. We reached out to Kassoff for additional comment as well, and will update this post accordingly.

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