Macy’s Loses Six Trademarks, Retains Rights to Marshall Field’s Trademark

Much like the proverbial tree falling in the forest, if a business is acquired and its name is no longer in use, are its trademark rights still valid?

That was the crux of a 5-year legal battle between Macy’s and Strategic Marks over the ownership of a handful of disused department store names like the regional department store chain, Marshall Field’s.

When Macy’s, Inc. acquired Marshall Field’s in 2005, it rolled the 153-year-old Chicago-based retail chain under the Macy’s banner. However, while the brick and mortar Marshall Field’s stores had been rebranded, Macy’s continued to offer various Marshall Field’s branded merchandise for sale through its online “heritage shop.”

Citing the Lanham Act, Strategic Marks, a California-based company known for resurrecting disused brands like Astro Pops and Hydrox cookies, applied to register trademarks for this and a handful of other defunct “heritage” brands with the intent of selling branded merchandise online.

In 2011, Macy’s filed suit claiming trademark infringement in regards to t-shirts sold on Strategic Marks’ website bearing logos of eight of its dormant brands. In response, Strategic Marks’ argued that the trademarks had become abandoned given that Macy’s no longer operates the regional brands at issue.

In February, a district court judge ruled that Macy’s had a protected interest in retaining the trademarks to eight of the brands it had acquired over the years, including Marshall Field’s, but gave Strategic Marks rights to six regional department store brands, including Robinsons-May, Jordan Marsh, I. Magnin, Bamberger’s, Foley’s and Bullock’s. Because Macy’s continued to sell Marshall Field’s-branded merchandise online, it allowed Macy’s to maintain various trademark registrations directed to this and other heritage brands.

In his judgment, U.S. District Judge Edward Chen writes, “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.”