Macy’s Department Stores has been purchasing a multitude of other stores over the last few years, including Marshall Field’s, Filene’s, Abraham & Strauss, and Jordan Marsh. Many of these stores were rebranded as Macy’s regional stores, but a lawsuit filed by the company in California says that a rival company has infringed upon thetrademarks of the stores purchased by Macy’s.

Allegations in the Case

Macy’s filed a previous lawsuit againstStrategic Marks, LLC in 2011, claiming that Strategic Marks was infringing on its “heritage” trademarks under the Lanham Act. It included claims of using Abraham & Strauss, A&S, The Broadway, Jordan Marsh, Bullock’s, Robinsons-May, Filene’s and The Bon Marché. That case is set to go to court this month, when Macy’s filed a second lawsuit against the same company adding more trademark infringements to the list.

In this second lawsuit against Strategic Marks and its founder, Ellia Kassoff, the additional brands that were named include Marshall Field’s, Burdines, Foley’s, Goldsmith’s, Hecht’s, I. Magnin, Kaufmann’s, Lazarus, Meier & Frank, Rich’s, Strawbridge’s and Stern’s. The most current lawsuit claims that Strategic Marks started selling T-shirts and candy under those trademarks in the last month.

Counter Lawsuit

In response to these lawsuits by Macy’s, Strategic Marks has countersued. In 2010, it applied to register trademarks for some of the store names that were purchased by Macy’s to use on clothing as well as in pop-up stores in the future. Strategic Marks claims that the trademarks that it is using have been abandoned by Macy’s, citing the Lanham Act in support of their argument, as well.

Under theLanham Act, a trademark is considered “abandoned” if it has not been used in three years. Strategic Marks has even claimed that Macy’s is infringing on those trademarks by selling clothing with the marks on its online store. “They weren’t using these trademarks,” Mr. Kassoff told Consumerist Magazine in June, and claimed that “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.’”

Current Court Situation

The original trial was scheduled to begin yesterday, and Macy’s had planned on having their associate general counsel testify to the history of the trademarks. Macy’s claims that it never abandoned the trademarks of its purchased stores and instead used the marks as “heritage” names on items of clothing; however, Strategic Marks has claimed that those items of clothing did not appear in the store until after their company had made a claim on the trademarks for themselves. A judge vacated the first trial, and a hearing on both consolidated cases is set for later this week.

Contact a California Trademark Attorney

If you have questions about your company’s trademark or other issues of trademark law in the Pleasanton, Alameda County, or Tri-Valley area, let the experienced intellectual property attorneys atGarcia & Gurney help. Call the office orcontact us today for a confidential review of your claims.