from the zombie-brands dept
About a year ago, we wrote about a somewhat strange trademark dispute between Macy's and a company called Strategic Marks. The issue in the case was that Strategic Marks was attempting to sell merchandise and create popup stores for brands that had been dissolved through acquisition into larger companies, such as Macy's. These brands were once staples of the storefront experience, including names like Marshall Field's, Bullock's, and Foley's. All were once well-known regional department stores that Macy's bought and rebranded as Macy's stores. Macy's, despite all of this, claimed it retained trademark ownership over those, despite their being generally unused.
To the surprise of some, a recent court ruling resulted in a win for Macy's, with the company claiming it was still selling some merchandise with the old brand names. The judge in that case ruled:
“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.”Which is certainly true, but it doesn't really address the question of whether someone shopping online through Strategic Marks would think that buying a shirt emblazoned with a brand that Macy's has on its trophy wall was a purchase through Macy's itself. Regardless, the whole thing smacked of protectionism in the name of profiting off of dead brands. Per the link above, we learn that Macy's, despite the recent ruling, has decided to settle the case with Strategic Marks and relinquish the trademarks over the brands.
Macy’s Inc. has settled a five-year-old trademark dispute by giving up rights to Jordan Marsh and five other dormant department store names. The settlement allows a California company to build a “virtual mall” with retail banners that were once owned Macy’s and its predecessor companies.Further details of the settlement don't appear to be available, but I assume that Macy's was compensated monetarily for relinquishing the trademarks. In other words, that would mean that it held the brands it had killed off hostage not over concerns of customer confusion, but simply for money. And, even if we all stipulate that all of this appears to be legally proper, it only highlights just how far modern trademark law has devolved from its original purpose.