Feb. 29--Macy's, which retired the Marshall Field's name a decade ago, will keep the rights to the beloved Chicago brand as part of a court settlement reached with a California man planning to monetize the retailer's dormant monikers.
The department-store operator had filed a federal trademark infringement suit in the Northern District of California against Strategic Marks, a Newport Beach, Calif.-based business that tries to revive defunct brands, and its chief executive, Ellia Kassoff. Kassoff recently resurrected Hydrox cookies.
Macy's didn't like the idea of Strategic Marks trying to capitalize on such "heritage" brands as Marshall Field's.
The two sides settled the case last week, with Strategic Marks getting the trademarks to several of Macy's lapsed department store brands -- but not Marshall Field's, both sides confirmed.
"Macy's is transferring to Strategic Marks its rights to I. Magnin, Bullock's, Foley's, Bamberger's, Jordan Marsh and Robinsons-May," Anthony Lo Cicero, a lawyer representing Macy's, said Monday. "Macy's has retained all rights to its other heritage store brand marks."
Macy's "really wanted" to keep the Marshall Field's name, Kassoff said. Still, he said he "couldn't be happier."
"Now we can move forward with our plans to monetize well-known aspects of these names, such as selling Jordan Marsh Blueberry Muffins along the East Coast and online," he said. Besides building an online presence, "we also plan to move forward rebuilding the stores in their local markets, now that our discussions with investors can resume."
A trial in the case was set to begin in May. In early February, a judge in the case ruled that Macy's still had a "protected interest" in the trademarks on T-shirts of eight department store chains, including Marshall Field's, that it acquired over the years.
In 2005, Cincinnati-based Macy's, then called Federated Department Stores, completed its purchase of Field's parent May Department Stores and announced it would erase a Chicago name dating to the 1800s.
byerak@tribpub.com
