There’s been a fair amount written about “heritage,” “dead” or “zombie” brands, including by me. These are brands that aren’t being used anymore by the original owner, but they still have resonance with consumers. A third party comes along specifically with the intent of exploiting the consumer recognition by creating a new offering around the old product name. The most well-known of these companies is River West Brands, but it seems to have become a cottage industry.
Defendant Strategic Marks, LLC is also one of those companies. It has two major businesses, candy and department store names, and it’s the latter that got the company into trouble. Strategic Marks LLC was just sued by Macy’s Inc. in the Northern District of California for infringement of the JORDAN MARSH, BULLOCK’S, ROBINSONS-MAY, FILENE’S, ABRAHAM & STRAUS, THE BROADWAY and THE BON MARCHÉ department store marks.
It’s an interesting complaint. First off, Macy’s Inc. mentions only three registrations in its Complaint, FILENE’S, ROBINSONS-MAY and MAY. In other words, Macy’s Inc. has trademark registrations for only two of the seven department store names. Here’s a screenshot of the current and former registrations for the department store names – note there’s a lot of “DEAD” in the status column:
|(Here’s a printout of the original search so you can see the search query)|
|A & S Department Stores were converted to the Macy’s nameplate in May 1995. Also in 1995, Federated acquired The Broadway Department Stores, bringing Broadway, Emporium and Weinstocks to the Macy’s family, as well as six former I. Magnin stores. Some 46 stores were converted to the Macy’s nameplate. . . .
Macy’s entered 2005 with about 240 locations, primarily on the East and West Coasts. With the conversion of all Federated’s regional store nameplates in March 2005, Macy’s grew to about 425 locations across the country. In September 2006, with the conversion of stores acquired from The May Department Stores Company, Macy’s now serves customers through more than 800 stores in virtually every major geographic market in the United States . . . .
Macy’s, Inc. now has only two major brands: Macy’s and Bloomingdales. Here are the Wikipedia entries for each of the disputed stores describing the cessation of the use of their marks, from as early as 1995 with none later than 2006:
Nevertheless, Macy’s wraps up all the department store names into one package that it euphemistically calls “Heritage Marks” and claims that Strategic Marks is infringing a generalized “Macy’s” brand, to wit:
|44. As more fully set forth above, the Heritage Marks have come to have a secondary meaning indicative of origin, relationship, sponsorship, and/or association with Plaintiffs. The purchasing public is likely to mistakenly attribute to Plaintiffs the use by Defendant of the Infringing Marks as a source of origin, authorization, affiliation, and/or sponsorship for Defendant’s retail department store services, online retail store services, and related goods and services and, therefore, to use Defendant’s services and purchase Defendant’s products in that erroneous belief.
50. The Heritage Marks are famous marks that are of inestimable value to Macy’s and are relied upon by the trade and the purchasing public to identify and designate Macy’s retail department store services, online retail store services, and related goods and services and to distinguish them from the goods and services of others.
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[Ed. note - As a former Filene's shopper, I am appalled on Filene's behalf that its brand is treated so abysmally - a cheap black men's cut T-shirt, really? Surely Strategic Brands' supposed "tarnishment" as alleged by Macy's couldn't be more offensive than what Macy's has done itself. Former shoppers of Abraham & Straus, The Broadway, Jordan Marsh, Bullock's, Robinsons-May, and The Bon Marché I trust will be equally appalled.]
Well, I think it’s a stretch. Quite a stretch. Although Macy’s mechanically recited in its Complaint that it has not abandoned the marks, it will be interesting to see what evidence it might be able to cough up to rebut that it has ceased use and/or intended to abandon the marks.
Macy’s, Inc. v. Strategic Marks, LLC, No. 11-cv-6198 (N.D. Calif. Dec. 9, 2011).
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