A few decades ago there used to be a lot more variety in department stores. Robinson’s-May, Marshall Field’s, and Meier and Frank used to dot the commercial landscape. But when these stores, along with several others, were acquired by Macy’s in 2005 and subsequently rebranded with the Macy’s masthead and brand name, the overall diversity of department stores took a hit. Now, after several years of dormancy, an enterprising individual is attempting to bring back some of these nostalgic brands and commercially exploit them, selling merchandise bearing the names and logos of these brands on his website. Macy’s has responded by suing for trademark infringement, claiming it is still the owner of these brands, but by shelving them for years, has Macy’s abandoned its trademark registration rights?
Ellia Kassof is the founder of Strategic Marks, LLC. His website, retrodepartmentstores.com, offers t-shirts bearing the original logos of these gobbled up department stores. Kassof went so far as to file trademark applications on the names of these dormant department stores, and even received trademark registrations on several of them. Macy’s is seeking cancellation of Kassof’s trademark registrations and is suing Kassof for trademark infringement. But Kassof is not backing down and has counter-sued Macy’s claiming that by not actively using the brands, Macy’s has abandoned any trademark rights it had. So if someone isn’t actively using a trademark registration, at what point does it go abandoned?
The Lanham Act, which covers United States federal law regarding trademarks, states that a mark shall be deemed to be “abandoned” if “its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment.” In the United States, the standard of proof for abandonment “clear and convincing” evidence that the mark was abandoned without an intent to resume use. Objective evidence is more valuable than self-serving testimony that there wasn’t and intent to abandon the mark or that there was an intent to resume use.
Kassoff says that in some cases, Macy’s hasn’t used the trademarks in over 15 years, and believes he is well within his rights to market products with the corresponding logos. Macy’s responded by stating that it is maintains several of the logos and brands on its website. Kassoff argues that Macy’s only put them back on its website after he’d received trademark registrations on the brands. If this is true, then use of the marks on the website might not be sufficient for Macy’s to prevail because Macy’s should have to show that it had concrete plans to resume commercial use of the mark before it abandoned the mark. It is not sufficient for Macy’s to begin using the marks again after it has abandoned them and someone else has started making legitimate use of them.
Of course, the court and possibly a jury will have to review the facts and decide. While 3 consecutive years of nonuse is initial evidence of abandonment, it is not definitive and the judge will undoubtedly look at the big picture here. It will be interesting to see how this situation is decided.