Macy’s might have won the decades-long battle to become the dominant department store nameplate, but its old rivals — from Marshall Field’s to Strawbridges to I. Magnin — keep popping up for a fresh challenge.
After the Federated-May Co. merger a decade ago, the renamed Macy’s Inc. converted the patchwork of chains to the Macy’s banner.
While that might have been the end for the names, Ellia Kassoff, president and chief executive officer of Strategic Marks, moved to claim ownership of the trademarks and started using them on his Web site, retrodepartmentstores.com, which sells T shirts bearing the brand names. He said that trademarks reenter the public domain and are up for grabs once they’re not used for three years.
In 2011, Macy’s sued Strategic Marks for infringement over several of the trademarks, including Bullock’s and A&S. That case is set is set to go before a federal judge in San Francisco March 2. Ahead of that, Macy’s filed a similar suit this week covering the additional names of: Marshall Field’s, Burdines, Foley’s, Goldsmith’s, Hecht’s, I.Magnin, Kaufmann’s, Lazarus, Meier & Frank, Rich’s, Strawbridge’s and Stern’s.
Macy’s in the most-recent suit argued that the goodwill from its heritage trademarks transferred to Macy’s when the stores transitions. The company has also started using the marks, including on tote bags that it sells on its Web site.
Kassoff, for his part, said he wants to build back the retired retail brands and has sought to work with an e-commerce company to help, but that the legal battle has slowed that process.
“They’ve stymied our plan because nobody wants to work with us until after the case,” Kassoff said, who noted he doesn’t just want to sit on the trademarks to get some sort of payment from Macy’s. “We’re legitimately bringing this stuff back. That’s what our company does. We have a history of bringing back brands.”
Kassoff, for instance, coordinates the production of candy under the once abandoned Leaf brand.