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Macy's, Strategic Marks Trial to Move Forward

A federal judge denied Macy’s Inc.’s request for a partial summary judgment in a case involving the trademarks of several legacy department store banners.

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WHAT’S IN A NAMEPLATE?: A federal judge in San Francisco denied Macy’s Inc.’s request for a partial summary judgment in a case involving the trademarks of several legacy department store banners, including The Bon Marché, Abraham & Straus, Robinson’s and The Broadway.

Newport Coast, Calif.-based Strategic Marks applied to use the trademarks with an intention of inking accessories or apparel deals and eventually setting up stores using the names. Macy’s sued and claimed that it was still using the trademarks and Strategic Marks countersued.

Judge Samuel Conti in San Francisco federal court said Macy’s argued Strategic Marks never sold any products or opened any stores, rendering its trademark registrations void. Strategic Marks argued it was building a Web site, satisfying the requirements for an “intent to use” trademark application.

Conti ruled that “plaintiffs have not persuaded the court that there are no material issues of fact for trial. A reasonable jury, reviewing the evidence that the parties have provided up to this point and regarding the evidence in the light most favorable to defendant, could resolve the instant matter in defendant’s favor.”

So the legal battle continues, with nearly forgotten department store names in the wings.

Ellia Kassoff, president and chief executive officer of Strategic Marks, said he was preparing for trial and planning to launch a Web site using the brands shortly. “My intent is to rebuild these brands,” he said.

Macy’s did not return a request for comment.