STILL WANT TO SHOP AT MAY'S OR A&S OR BON MARCHE? MACY'S SAYS NO BUT WILL THEY HAVE THE LAST WORD?
Several years ago I was in charge of burying the SOHIO trademark. British Petroleum had taken over Standard Oil of Ohio. So BP it was to be. And with great fanfare.
But we were concerned that a competitor(the dreaded Marathon Oil with its SPEEDWAY and MARATHON brands) might start using SOHIO for gasoline. So we left the SOHIO brand on gas pumps at marinas selling to pleasure boaters.
I was reminded of this when I read that Macy's- the victor in America's national retail wars- is fighting to stop a company from federally registering several famous names as trademarks. Strategic Marks LLC, is attempting to register several of the local/regional brands that were folded into the MACY'S brand. These brands include: MAY, BON MARCHE, JORDAN MARSH, and FILENE's.
Strategic Marks claims that Macy's abandoned these trademarks. Macy's acknowledges that they haven't been using them but denies that they have abandoned them.
The legal standard for trademark abandonment is "use discontinued with no intent to resume use" If a trademark owner fails to use his brand for three years the law presumes that he has abandoned that brand. Then the brand owner must come forward with concrete evidence to show that she still has a legal interest in the disputed term.
Interestingly, though Macy's readily acknowledges that it is not using these brands, in their challenge to JORDAN MARSH Macy's states that it plans to begin using the brand again.
Oh really. Forgive me for being skeptical, but I would venture a guess that Macy's desire to resume use of these brands arose on the same day that they realized someone was trying to revive names they thought were dead and buried.
Strategic Marks LLC claims to have a real interest in reviving these names for retail services. I find myself wondering who is willing to make the bricks and mortar investment to compete with Macy's? Most of the local competitors in America's larger cities are gone. My guess: These names will never see retail daylight. But it won't be a cost free experience for Macy's.