Most of the brands owned by retail conglomerate Macy’s are no longer in business, but those defunct department stores’ trademarks are still going strong. A federal judge ruled in an order granting partial summary judgment that Strategic Marks, LLC could not sell T-shirts bearing these department stores’ logos because their use constituted trademark infringement. Macy’s has owned many other retailers, including Abraham & Straus, Bamberger's, The Bon Marché, and The Broadway. Marshall Fields, for instance, was a Macy’s retailer that had been in business since the 1800’s, but in 2006, all of those retailers were converted to Macy’s. But the company still put those brands’ intellectual property to good use, in 2011 opening the Macy’s Heritage Shop, which sold merchandise, such as T-shirts and tote bags, that bore the now-defunct retailers’ logos.

Macy's V. Strategic Marks

Strategic Marks had a similar idea. In 2010, it filed for trademarks on many of the defunct brands, and in 2011, it opened a website, retrodepartmentstores.com, that sold T-shirts bearing the logos of many of the same retailers. Macy’s sued the company, but the website, undeterred, only added more branded shirts to its collection.

Macy’s subsequently moved for partial summary judgment on eight of the marks. Strategic Marks argued that its use did not constitute trademark infringement because Macy’s use was “merely ornamental and does not constitute bona fide commercial use, and because there are questions of fact regarding whether Strategic Marks's use of the trademarks creates confusion.” In other words, Strategic Marks argued that Macy’s abandoned, and therefore no longer owned, the trademarks.

The federal judge disagreed, holding “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. 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.”

Macy’s will now proceed to trial on the remaining marks. And perhaps now online retailers will think twice about using recently out-of-use logos on its products, thinking that they are not protected simply because the brand is defunct.

For more information on this topic, please visit our Trademark Litigation service page, which is part of our IP & Business Litigation practice.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX. The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. Additional information about the trademark law firm and its trademark attorneys may be found at www.klemchuk.com.

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