Macy’s Fights for Old Retailer Names – National Law Journal

Mark Brutzkus was quoted in Amanda Bronstad’s National Law Journal article “Macy’s Fights for Old Retailer Names,” which can be found below.

Amanda Bronstad, The National Law Journal

February 25, 2015

New canopies bearing the Macy’s logo hang at their State Street store in the former Marshall Field’s building in Chicago, Saturday, Sept. 9, 2006. Federated Department Stores is converting more than 400 department stores across the nation to Macy’s today, including Filene’s in Massachusetts and the 154-year-old Marshall Field’s store on Chicago’s State Street.Photo: Brian Kersey/AP

In its rapid expansion across the country, Macy’s Inc. rebranded some of the nation’s most recognizable names in department stores, such as Marshall Field’s and Filene’s. Now the retail chain has filed suits staking a claim to those names.

Macy’s brought a trademark infringement lawsuit against a California startup called Strategic Marks LLC, which planned to sell clothing under various retro brands, many acquired by Macy’s, such as Bullock’s and Filene’s. As that case was about to go to trial, Macy’s filed a new suit on Feb. 9, adding more brands to the list and naming Strategic Marks founder Ellia Kassoff as a defendant.

U.S. District Judge Samuel Conti in the Northern District of California vacated the trial after taking over both cases on Feb. 19. The next hearing is March 6.

The cases illustrate an increasing interest among retailers, particularly in the fashion business, to commercialize nostalgic brands, said Mark Brutzkus, a partner at BG Law in Woodland Hills, Calif.

“It’s like eating comfort food,” Brutzkus said. “There’s a value to the community because there’s a certain sentimentality that relates to each of these brands. People can remember growing up as a child and going to The Walnut Room for Christmas brunch at Marshall Field’s.” The Walnut Room was the restaurant inside Marshall Field’s in Chicago.

At times, disputes over who owns those brands have ended up in court.

Such was the case for Macy’s, which sued in 2011 alleging violations of the Lanham Act, the federal trademark law, as to eight “heritage” marks: Abraham & Straus, A&S, The Broadway, Jordan Marsh, Bullock’s, Robinsons-May, Filene’s and The Bon Marché.

In 2010, Strategic Marks, based in Irvine, Calif., applied to register for trademarks for some of those names to be on clothing sold at www.retrodepartmentstores.com, “using typestyles which are intentionally identical to those used by Macy’s,” the suit says. Strategic Marks, which also advertises several candy brands, plans to establish physical stores in the future, according to its website.

Strategic Marks has countersued, claiming Macy’s had abandoned the marks. Under the Lanham Act, a mark is considered abandoned if the owner hasn’t used it in three years. Strategic Marks also accused Macy’s of infringing on its newly registered marks by selling vintage brand T-shirts and tote bags on www.macys.com.

Strategic Marks attorney Benjamin Ashurov, of KB Ash Law Group in Pleasanton, Calif., did not respond to a request for comment. But in a Feb. 5 press release, Kassoff said: “Macy’s had not used most of these trademarks in over 15 years and, by law, they lose them if not used in three years or more.”

Trial was scheduled for March 2. Macy’s had planned to have Jay Monitz, group vice president and associate general counsel, testify about the history of the brands and trademarks, according to court records. Macy’s claims it didn’t abandon the marks, citing the products on its website that use the “heritage” names and noting that some of the stores continued to operate under their original names for years. The attorney in the case, Garner Weng, a partner at San Francisco’s Hanson Bridgett, did not respond to a request for comment.

In its new suit, Macy’s alleges that Strategic Marks last month began selling T-shirts and candy under 12 more brands: Marshall Field’s, Burdines, Foley’s, Goldsmith’s, Hecht’s, I. Magnin, Kaufmann’s, Lazarus, Meier & Frank, Rich’s, Strawbridge’s and Stern’s.