American icon, and well respected and loved Macy’s (how many times have we all seen the original or two re-makes of “Miracle on 34th Street”?) made the decision several years ago to nationalize its brand. So it swallowed up a bunch of regional department stores, and converted them to Macy’s. Meanwhile, Macy’s primary competitor in the original “Miracle on 34th Street,” Gimbel’s, is long out of business and the American consciousness. A lawsuit has been filed against Macy’s by a California company that claims that the revival of the Hydrox and Astro Pops brands infringes on trademarks long held by that company.
The legal battle began when Macy’s filed an infringement lawsuit against Strategic Marks, alleging that the company was infringing on eight of Macy’s “heritage” trademarks: Abraham & Straus, A&S, The Broadway, Jordan Marsh, Bullock’s, Robinsons-May, Filene’s and The Bon Marché. That case was schedule to go to trial this month when Macy’s filed a second lawsuit adding more brands to the infringement list: 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 alleges that Strategic Marks is infringing its trademarks by selling T-shirts and candy under Macy’s trademarks.
Back in 2010, Strategic Marks applied for trademarks for some of the brands named in the lawsuit for clothing to be sold online and in pop-up stores. Macy’s claims that Strategic Marks is “using typestyles which are intentionally identical to those used by Macy’s.”
But Strategic Marks has countersued, claiming that Macy’s had abandoned the trademarks, citing the Lanham Act. Under that law, a trademark is considered “abandoned” if it isn’t used for three years. Strategic Marks claims that it is Macy’s that is doing the infringing by selling vintage brand T-shirts and tote bags at www.macys.com. Strategic Marks claims that “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.”