Kassoff has a knack for researching defunct brands and taking a risk on claiming trademarks that he believes are up for grabs because the most recent owners of those marks have not used them.
Given the sheer number of stores that Macy’s has acquired directly or inherited through mergers with Federated Department Stores in 1994 and May Department Stores in 2005, there was a trove of once-popular store brands that had gone unexploited and whose trademark went undefended.
Among the many Macy’s-related brands that Strategic attempted to claim trademark on were Marshall Field’s, Burdines, Filene’s, Jordan Marsh, Strawbridges, and Abraham and Straus.
In response to Kassoff’s efforts to resurrect these trademarks independently of Macy’s, the retail giant filed two separate lawsuits against him, most recently in Feb. 2015.
Earlier this month, Macy’s scored a victory, with a court ruling that Kassoff could not use the Marshall Field’s brand, and a handful of others, on T-shirts.
A trial on the bigger issue of trademark ownership was slated to begin in early May, but Kassoff tells Consumerist that he’s reached a deal with Macy’s that gives him control over some, but not all, of the disputed marks.
According to Kassoff, Strategic Marks now owns all goodwill associated with the trademarks for historic Boston retail brand Jordan Marsh, defunct West Coast chain I. Magnin, New Jersey legend Bamberger’s, Houston-based Foley’s, longtime California retailer Robinson’s, Midwestern mainstay May Company, and one-time L.A. luxury brand Bullock’s.
The remaining marks that were part of the dispute will remain under Macy’s control. So don’t get your hopes up about seeing another Marshall Field’s or Filene’s anytime soon.
Kassoff says he was prepared to go to trial, but agreed to attend a settlement conference with Macy’s.
“After over five hours of negotiating with Macy’s, we finally hammered out a deal that we’re really happy with,” says Kassoff, who hopes to bring these stores back to the markets where they are remembered fondly.
“Consumers noted the current shopping experience is quite drab, as there is no localized marketing or buying for the regional stores anymore,” he says of his research into retail habits. “People want to go back to the days when shopping was a real experience at their local department store. They really miss that.”
Today’s settlement will give him the authority to meet in earnest with retail investor, but Kassoff also notes that there are ways to capitalize on these once-famous brands, giving the example of selling Jordan Marsh Blueberry Muffins online and in regions where people grew up with the brand.
Macy’s has not yet responded to our request for comment on this story.