A recent California case, Macy's v. Strategic Marks, N.D.Cal. Dkt. No. 3:11-cv-06198-SC, highlights a number of important issues relating to the doctrine of abandonment—the process by which a trademark owner loses rights in its mark through non-use. For most people, the case evokes nostalgia about famous store names now long gone (A&S, Filene's, Marshall Fields, Stern's). For lawyers, however, the case highlights the unique nature of trademarks as a property right and how both acquiring and losing such rights are different than other intellectual property (IP) rights.

Facts of the Macy's Case

Although the origins of Macy's business and name go back to the famous department store chain R.H. Macy, opened in 1843, the business and name now encompass much more than that. Over the last several decades, Macy's and its predecessor, Federated Department Stores, acquired retail department store chains throughout the country and continued operating them under their original names. Roughly in 2004, the company decided, however, to re-brand all these stores (other than Bloomingdale's) under a single name, Macy's. Some, like Abraham & Straus, as early as 1995, had already been rebranded. Although Macy's continued to make some use of what it now calls its “heritage names” (historical plaques on certain stores, printing on T-shirts and tote bags), its retail store services¹ (and the parallel online retail store) have since 2006 all been branded under the name Macy's.

Enter defendant Strategic Marks. The company started as a candy company, reviving defunct heritage brands of candy, such as Astropops. Encouraged by its success in that effort, in 2010, Strategic Marks began filing applications in the Patent and Trademark Office to register several of Macy's heritage marks for retail department store and online services. Its website, retrodepartmentstores.com, currently lists 34 store brand names it claims it is reviving, but interestingly the site does not offer any products for purchase online. (In the litigation, Macy's contests whether Strategic Marks ever made sufficient use of the marks to justify it having any rights at all. That is a separate issue we do not deal with here. Strategic Marks initially filed its applications as intent-to-use applications, which initially only require a bona fide intent to use the listed mark in commerce for the listed goods and services. However, the applications then matured into registrations by filing statements of use, attesting to actual use in commerce. Macy's challenges these as inadequate.)