Strategic Marks, LLC: Macy's and Strategic Marks Prepare for Trial

NEWPORT BEACH, Calif., Feb. 5, 2014 /PRNewswire/ -- Macy's Department Stores, the largest owner of department stores in the United States and Strategic Marks, LLC, a company focused on reviving old brands, prepare for a Federal court trial next month regarding the ownership of many retail store trademarks acquired by Strategic Marks.

Strategic Marks, LLC, a company focused on rebuilding well-known brands such as Leaf Brands® and the iconic candy brand Astro Pops®, are currently in a legal battle with Macy's over trademarks which once represented now-defunct department stores formerly operated by Federated/Macy's including:  Robinson's®, May Company™, Filene's™, Jordan Marsh™, Abraham and Straus™, Bon Marche®, and The Broadway® among others.  The company applied for a total of 21 trademarks in September 2010 and 2013 in hopes of building new retail and internet stores using the similar trademarks. In late 2011, Macy's filed a Federal court case in late 2011 and a complaint with the United States Patent and Trademark Office, (USPTO) to block the use of old department store trademarks they once owned, claiming they still used them, although public records show no use of the trademarks for many years.

The original trial, scheduled for January 6^th, 2014 has been delayed after a recent pre-trial hearing, in-which the judge ordered both sides to participate in a settlement conference scheduled for February 6^th, 2014. While the court date for the official case has not been announced, the trial will, [most likely] start shortly after the settlement conference is completed. 

In addition, Strategic Marks, LLC has filed a counter-suit, claiming Macy's abandoned their rights to the marks and is now illegally using the trademarks on their macys.com website since 2010. They also accuse Macy's and their attorneys of 'Corporate Bullying' as they are forced to defend themselves in Federal court. "In 2010 Macy's created a page on their website, touting all their "Legacy Marks" hoping to show 'token use' AFTER Strategic Marks already filed, which is fraud," says, Ellia Kassoff, CEO of Strategic Marks, LLC. "Macy's is trying everything they can to stop us from using the trademarks we registered legally through the US Patent and Trademark Office and acquired by virtue of our use."

Strategic Marks, LLC still holds the trademarks in-question and hopes the case will wind through the courts quickly.  "I really think Macy's is trying to prolong these cases through litigation in hopes of depleting our financial resources so we will go away. 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.  I'm confident we will win," Kassoff continues.

"We conducted quite a few months of research that showed consumers are not happy with today's shopping experience after Macy's merged with Federated and May Department Stores back in 1994 and 2005 respectively," says Kassoff.  "Consumers noted the current shopping experience is quite drab, as there is no localized marketing or buying for the stores anymore.  People want to go back to the days when shopping was a real experience at their local department store. They really miss that," Kassoff says.  "When Macy's admitted in their oppositions they are no longer using the trademarks in question, it should be an, 'open and shut case'," Kassoff remarks. "This goes against the trademark laws of the United States.  It's quite obvious they are only out to intimidate the small guy, even when they have no legal standing," Kassoff ends.

The offices of KB-Ash Law Group P.C, which represents Strategic Marks in this matter, agrees that it's a matter of the big corporation using the patent and trademark laws against the small guy. "Our office sees this type of opposition quite often with companies trying to keep rights to trademarks that are cancelled, abandoned or are not being used," says a legal representative for Strategic Marks. "In the case of Macy's, they are trying to claim they still own trademarks which they haven't used in many years and still believe they have a right to them despite the lack of use. That's not what the US trademark laws were meant for."

"Many large corporations try to file oppositions and counterclaims in hopes the small guy will get scared and walk away. Mr. Kassoff told us at the beginning, he wants to fight for what's right. The consumer is yearning for more choices. Macy's decided to get rid of these department store names and turn the stores into Macy's. Strategic Marks believes they have an opportunity to bring selection and service back to shopping," says Strategic Mark's legal counsel.

About Strategic Marks, LLC:  Started in 2010, Strategic Marks, LLC is focused on rebuilding of some of the most well-known companies and brands you loved from years past. Currently they have acquired Leaf Brands® (once the fourth largest candy producer in North America) and the classic Astro Pop®, along with Wacky Wafer™, Bonkers!™ Fruit Chews, Tart n Tinys™, Hydrox™  sandwich cookies and Screaming Yellow Zonkers™ popcorn snack.  They are currently working on bringing back other iconic brands as well.

For additional information, contact:

Mr. Ellia Kassoff
mailto:[email protected]
(949) 424-1664

SOURCE Strategic Marks, LLC