Case3:11-cv-06198-SC Document1-2 Filed12/O9/11 Pagel of44 i <23: - 1 AMSTER, ROTHSTEIN 8: EBENSTEIN LLP ?15- ANTHONY F. LO CICERO, NY SBN1084698 alocicero@arelaw.com CHESTER ROTHSTEIN, NY SBN2382984 crothstein@arelaw.com CI HOLLY PEKOWSKY, NY SBN2776532 C) JESSICA CAPASSO, NY SBN 4766283 jcapasso@arelaw.com 90 Park Avenue New York, NY 10016 Telephone: (212) 336-8000 Facsimile: (212) 336-8001 (Pro Hac Vice Applications Forthcoming) HANSON BRIDGETT LLP GARNER K. WENG, SBN191462 gweng@hansonbridgett.com CHRISTOPHER S. WALTERS, SBN267262 cwaIterS@hansonbridgett.com 425 Market Street, 26th Floor San Francisco, California 94105 Welephone: (415) 777-3200 9 I Facsimile: (415) 541-9366 13 Attorneys for Plaintiffs INC. and 14 MACYSCOM, INC. coco-Noamth 15 UNITED STATES DISTRICT COURT 16 NORTHERN DISTRICT OF CALIFORNIA 17 SAN FRANCISCO DIVISION 19 INC. and MACYS.COM, 20 Plaintiffs, COMPLAINT FOR TRADEMARK INFRINGEMENT, FALSE DESIGNATION 21 v. OF ORIGIN, DILUTION, AND UNFAIR COMPETITION 22 STRATEGIC MARKS, LLC, DEMAND FOR JURY TRIAL 23 Defendant. 24 25 26 Plaintiffs Macy?s, Inc. and Macys.com, Inc. (collectively and individually ?Macy?s? or 27 "Plaintiffs"), by their attorneys, for their complaint against Defendant Strategic Marks, LLC 28 (?Strategic Marks" or ?Defendant?) allege as follows: 39283853 COMPLAINT 39283853 .4 Case3:11-cv-06198-SC Document1-2 Filed12/09/11 Page2 of44 hr at NATURE OF THE ACTION 1. This is an Action for trademark infringement, false designation of origin, unfair competition, and dilution arising under the Lanham Act, 15 U.S.C. 1051 et seq., and federal and State common law. Defendant has willfully and unlawfully infringed the Heritage Marks (as defined below) with the clear and unmistakable intent and effect of causing confusion, mistake, and deception among customers and potential customers. 2. Macy's is the owner and user of the following world famous marks for retail store and online retail store services, clothing and related products: ABRAHAM STRAUS, THE BROADWAY, JORDAN MARSH, ROBINSONS-MAY, and THE BON MARCHE (collectively and individually, the ?Heritage Marks?). 3. The Heritage Marks have been used, inter alia, in the following stylized formats (collectively and individually, the ?Macy?s Famous Stylized Nameplates"): rt hallmark marsh COMPLAINT i t, Case3:11-cv-06198-SC Document1-2 Filed12/O9/11 Page3 This Complaint asserts claims against Defendant arising from Defendant?s 15 trademark infringement, unfair competition, and dilution of the Heritage Marks and Macy?s 16 Famous Stylized Nameplates. 17 5. Macy?s asks this Court to enjoin the infringement, dilution, and unfair 18 competition caused by Defendant?s wrongful activities and to compensate Macy?s for the 19 damages which Defendant has caused and the unjust enrichment it has received. 20 THE PARTIES 21 6. Plaintiff Macy?s, Inc. is a corporation organized and existing under the laws 22 of the State of Delaware with a principal place of business at 7 West Seventh Street, 23 Cincinnati, OH 45202 and operates several Macy?s department stores within this Judicial 24 District. 25 7. Plaintiff Macys.com, Inc. is a corporation organized and existing under the 25 laws of the State of New York with a principal place of business at .685 Market Street, 8th 27 Floor, San Francisco, CA 94105 and operates the online department store 28 39233353 COMPLAINT 39283853 Documentl-Z Filed12/O9/11 Page4 of44 8. Upon information and belief, Defendant Strategic Marks is a limited liability company organized and existing under the laws of the State of California, with a place of business at 25 Ridgeview, lrvine,?CA 92603. JURISDICTION AND VENUE 9. This is an action for trademark infringement, false designation of origin, trademark dilution, and unfair competition arising under the Trademark Act of 1946, 15 U.S.C. 1051 ef. seq.; trademark infringement, false designation of origin, and unfair competition arising under the common law of the State of California; and statutory dilution and unfair competition under the laws of the State of California. This Court has jurisdiction over the subject matter of this action under the Trademark Act of 1946, 15 U.S.C. 1121 and the Judicial Code, 28 U.S.C. 1331 and 1338. This Court has supplemental jurisdiction over the state law claims pursuant to 28 U.S.C. 1367, which arise out of the same nucleus of operative fact as the substantial Federal law claims to which they are joined. 10. Defendant Strategic Marks is subject to this Court?s personal jurisdiction pursuant to Local Rule 3-5 and Rule 4 of the Federal Rules of Civil Procedure because it does business in this Judicial District, including offering infringing products that contain the Heritage Marks within this State and in this District, and expressly aiming the acts alleged in this Complaint at this District. 11. Venue is proper in thisjudicial district under 28 U.S.C. 1391, among other things because the injury caused by the acts alleged in this Complaint was felt in this District. INTRADISTRICT ASSIGNMENT 12. Intradistrict Assignment of this intellectual property action (trademark) is proper on a district?wide basis pursuant to Local Rule 3-2(c) and General Order No. 44. FACTUAL BACKGROUND 13. Macy?s, by itself and through related entities and predecessor entities, is a leading operator of retail department stores in the United States. Macy's operates, inter COMPLAINT 39283853 Case3:11-cv-06198-SC Documentl-Z Filed12/O9/11 Page5 of44 alia, numerous retail department stores throughout the country, including in this State. Macy's also operates an online retail store at 14. Macy?s is the owner of various retail stores under marks other than including but not limited to the Heritage Marks, which are described as follows: a) JORDAN MARSH, a prominent New England department store . initially located in Boston was founded by Benjamin L. Marsh and Eben Jordan in approximately 1851. b) a prominent west coast department store initially located in Los Angeles was founded by John G. Bullock in 1907. c) stores from the west coast trace their history back to the opening of the J.W. Robinson Company in 1881. The Los Angeles-based store catered to an upscale clientele and quickly branched out to multiple locations. d) a prominent New England department store initially located in Boston was established in 1852 by William Filene. e) ABRAHAM STRAUS, also known as ?g was founded in Brooklyn in 1893 and quickly grew from a small dry goods shop to a prominent department store. f) THE BROADWAY, a southwest store, was initially established in Los Angeles in 1896 and transformed into one of the most successful department store chains in Southern California. g) THE BON MARCHE was initially established in Seattle in 1890 and expanded throughout the Northwest becoming a staple in malls and shopping centers. 15. The Heritage Marks, by reason of the high quality retail and other services provided under them and the quality of design and workmanship of the wearing apparel and other goods sold, have come to be known to the purchasing public as representing products and services of the highest quality, which are provided under the best merchandising and customer service conditions. As a result thereof, the Heritage Marks and the goodwill associated therewith are well?known to the public and of inestimable -5- COMPLAINT . Case3:11-cv-06198-SC Document1-2 Filed12/O9/11 Page6 of44 value to Macy?s. 16. Plaintiff Macy?s, Inc. is the owner of, inter alia, the following US. trademark and service mark registrations for the Heritage Marks (collectively and individually, ?Macy?s Registrations"): a) U.S. Trademark Registration No. 1,960,415, issued March 5, 1996, for retail department store services. b) ROBINSONS-MAY, U.S. Trademark Registration No. 1,793,132, issued September 14, 1993, for retail department store services. c) MAY, U.S. Trademark Registration No. 1,728,405, issued October 27, 1992, for retail department store services. True and correct c0pies of Macy?s Registrations are attached hereto as Exhibit A. 17. The Heritage Marks, by virtue of their wide renown, have developed a 00 secondary meaning and significance in the minds of the trade and the purchasing public, A such that the retail department store services, online retail store services, and related goods and services offered thereunder are immediately identified with 'Plaintiffs by the _x_x purchasing public. \l 18. Macy?s has not abandoned its Heritage Marks. _x 00 19. Macy?s is using its Heritage Marks in United States commerce, including but I (0 not limited to within its Macys.com website. C) 20. Macy?s has taken active, affirmative, and successful steps to retain and foster the goodwill of the Heritage Marks. 21. The relevant consuming public recognizes that the Heritage Marks are 00 trademarks and service marks indicating a single source of origin. A 22. With the transition of the Heritage Marks stores, the goodwill ?in the Heritage Marks transferred to Macy?s. (D 23. Based on the fame of, and existing goodwill in the Heritage Marks for retail department store services, online retail store services, and related goods and services, CO Defendant seeks to usurp that goodwill and dilute those marks. 39283853 -5- COMPLAINT 39233353 Case3:11-cv-O6198-SC Documentl-Z Filed12/O9/11 Page7 of44 24. Long after Plaintiffs? adoption and use of the Heritage Marks for retail department store services, online retail store services, and related goods and services, Defendant applied to federally register marks identical to the Heritage Marks for identical services (the ?Infringing Marks"). 25. Defendant has applied for the following US. registrations for the Infringing Marks: I a) US. Trademark Application Serial No. 85137185, filed September 24, 2010, for the Infringing Mark for, inter alia, retail department store and on?Iine retail department store services. b) U.S. Trademark Application Serial No. 85137191, filed September 24, 2010, for the Infringing Mark THE BROADWAY for, inter alia, retail department store and on?Iine retail department store services. c) U.S. Trademark Application Serial No. 85137181, filed September 24, 2010, for the Infringing Mark MAY COMPANY for, inter alia, retail department store and on-Iine retail department store services. d) U.S. Trademark Application Serial No. 85137194, filed September 24, 2010, for the Infringing Mark ABRAHAM AND STRAUS for, inter alia, retail department store and on-Iine retail department store services. e) U.S. Trademark Application Serial No. 85137183, filed September 24, 2010, for the Infringing Mark JORDAN MARSH for, inter alia, retail department store and on-Iine retail department store services. f) U.S. Trademark Application Serial No. 85136164, filed September 23, 2010, for the Infringing Mark DEPARTMENT STORE for, inter alia, retail department store and on-Iine retail department store services. 9) US. Trademark Application Serial No. 85137196, filed September 24, 2010, for the Infringing Mark for, inter alia, retail department store and on- line retail department store services. COMPLAINT 392838543 Case3:11-cv-06198-SC Documentl-2 Filed12/09/11 Page8 of44 is! it h) U.S. Trademark Application Serial No. 85137193, filed September 24, 2010, for the Infringing Mark THE BON MARCHE for, inter alia, retail department store and on-Iine retail department store services. 26. Defendant offers for sale and sells products bearing the Infringing Marks on its website, using typestyles which are intentionally identical to those used by Macy?s for its corresponding Heritage Marks. Attached to this Complaint as Exhibit is a true and correct copy of the home page of Defendant?s website showing use of the Infringing Marks in the infringing typestyles. 27?. Defendant?s typestyles include but are not limited to the following: ?i 9B WM: c?zcluithtu?zzlx MAY COMPANY ROBINSONS HIENFS 7w BOII ii ii ll i? COMPLAINT Case3:11-cv-06198-SC Documentl-Z Filed12/O9/11 Page9 of44 9% Abraham Straus 28. Defendant has indicated its intent to use the Infringing Marks for services which are identical to services Macy?s provides - retail department store services and cameo-40301.nan online retail store services featuring clothing and clothing accessories, cosmetics and fragrances, jewelry and home furnishings. 29. Defendant has stated that its intention is to use Heritage Marks precisely because they are famous. Defendant wrote: 00 Strategic Mark goal is to bring back the old shopping experiences and brands you remember. 0301-3 30. Defendanthas advertised the Infringing Marks using Macy?s most iconic historic flagship stores, in an apparent attempt to clothe themselves in the associated CD goodwill. Attached to this Complaint as Exhibit is a representative page from (D Defendant?s website which advertises and C) shows a movie entitled ?Bullock?s Wilshire, Los Angeles 1930?s?, with actual footage of the famous Bullock?s location. 31. The use by Defendant of the Infringing Marks has been willful and without 00 the consent of Macy's. 32. Defendant has used Macy?s actual television commercials to advertise its U1 services. Exhibits D, E, F, G, and are pages from Defendant?s O) website using early television commercials. 33. Defendant?s use of the Infringing Marks is likely to cause confusion and mistake in the minds ofthe purchasing public, and in particular, tends to and does falsely 39283853 COMPLAINT Case3:11-cv-06198-SC Document1-2 Filed12/O9/11 PagelO of44 create the impression that Defendant?s goods and services are conducted by or in association with Macy?s Defendant may have become part of Plaintiffs? store family). 34. Upon information and belief, Defendant was aware of Macy?s proprietary rights in the Heritage Marks before Defendant began using the Infringing Marks. 35. Upon information and belief, Defendant is intentionally trying to usurp the existing and residual goodwill and secondary meaning of the Heritage Marks. Defendant's web site states: Now, through Retro Departmentstorescom, we will bring back nine of the great department stores of the 20th century: Joseph Magnin, Bullock's, May, Robinson's May, Jordan Marsh, Filene's, The Broadway, The BonMarche, and Abraham Strauss, and re-build and restore these well-loved brands. OONA See Exhibit attached hereto. _x .b FIRST CLAIM FOR RELIEF INFRINGEMENT OF FEDERALLY REGISTERED TRADEMARKS 15 U.S.C. 1114 _x_x 0.301 36. Macy?s incorporates by reference as if fully set forth herein the averments contained within the preceding paragraphs 1 through 35, inclusive. (D 37. Defendant infringes trademarks registered in the United States Patent and _x CD Trademark Office, in violation of the Trademark Act of 1946, 15 U.S.C. 1051, et. seq., particularly under 15 U.S.C. 1114(1). MN AC) 38. Defendant?s use of the Infringing Marks is likely to cause confusion and mistake in the minds of the purchasing public, and in particular, tends to and does falsely CA3 create the impression that Defendant?s goods and services are conducted by or in .b association with Macy?s Defendant may have become part of Plaintiffs? store family) 01 and therefore constitutes a violation of Plaintiffs? registered trademarks within the terms of 0) Section 32 of the Trademark Act, 15 U.S.C. 1114. 39. Upon information and belief, Defendant?s infringement has been willful and (I) 39283853 -1 0- COMPLAINT 39283853 Case3:11-cv-06198-SC Document1-2 Filed12/O9/11 Pagell of44 intentional. 40. As a direct and proximate result of Defendant?s illegal activities as alleged above, Macy's has been severely damaged. Defendant?s acts in infringing Plaintiffs? Registrations have caused, and will continue to cause, irreparable harm to Plaintiffs unless enjoined by this Court. SECOND CLAIM FOR RELIEF FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION 15 U.S.C. ?1125(a) 41. Macy?s incorporates by reference as if fully set forth herein the averments contained within the preceding paragraphs 1 through.40, inclusive. 42. This Claim arises under the provisions of the Trademark Act of 1946, 15 U.S.C. 1051 et. seq., particularly under U.S.C. 1125(a), and alleges the use in commerCe of false designations of origin and false descriptions and representations. 4 43. Defendant?s use of the Infringing Marks is likely to create confusion and to deceive consumers as to the source of origin, sponsorship and/or authorization of Defendant?s business. 44. As more fully set forth above, the Heritage Marks have come to have a secondary meaning indicative of origin, relationship, sponsorship, and/or association with Plaintiffs. The purchasing public is likely to mistakenly attribute to Plaintiffs the use by Defendant of the Infringing Marks as a source of origin, authorization, affiliation, and/or sponsorship for Defendant?s retail department store services, online retail store services, and related goods and services and, therefore, to use Defendant?s services and purchase Defendant?s products in that erroneous belief. 45. Defendant?s adoption and continued willful use of a mark confusingly similar to that of Macy?s as herein above alleged, constitutes a use in interstate commerce and a false designation of origin or false and misleading description or representation of goods and/or services in commerce, with knowledge of the falsity, and deceptive misdescription, which is likely to cause confusion, mistake and deception, and in commercial advertising -11- COMPLAINT 39283853 _x _x Case3:11-cv106198-SC Document1-2 Filed12/O9/11 Page12 of44 and promotion, misrepresents the nature, characteristics, qualities and origin of Defendant's retail department store services, online retail store services, and related goods and services and commercial activities, within the'meaning and in violation of 15 U.S.C. ?1125(a). 46. As a direct and proximate result of Defendant?s illegal activities as alleged above, Macy?s has been severely damaged. Defendant?s aforesaid facts have caused, and will continue to cause, irreparable harm to Macy?s unless enjoined by this Court. THIRD CLAIM FOR RELIEF FEDERAL TRADEMARK DILUTION 15 47. Macy?s incorporates by reference as if fully set forth herein the averments contained within the preceding paragraphs 1 through 46, inclusive. 48. This Claim arises under the provisions of the Trademark Act of 1946, 15 U.S.C. 1051 et. seq., particularly under 15 U.S.C. 1125(c), and alleges the commercial use in commerce by Defendant of the Heritage Marks, resulting in dilution thereof. 7 49. As a result of Macy?s extensive advertising and promotional efforts, the Heritage Marks are recognized nationwide by the trade and purchasing public as synonymous with the highest quality goods and services. 50. The Heritage Marks are famous marks that are of inestimable value to Macy?s and are relied upon by thetrade and the purchasing public to identify and designate Macy?s retail department store services, online retail store services, and related goods and services and to distinguish them from the goods and services of others. 51. Defendant?s use in commerce of the Infringing Marks is likely to cause dilution of the distinctive quality of the Heritage Marks. 52. Defendant began its use of the Infringing Marks in commerce after the Heritage Marks became famous. Such use of the Infringing Marks commenced recently, -12- COMPLAINT 39283853 Case3:11-cv706198-SC Documentl-Z Filed12/O9/11 Page13 of 44 in each case many decades after Macy?s began use of the corresponding Heritage Marks. 53. Defendant?s store services are of inferior quality, and therefore tarnish Macy's goodwill in the Heritage Marks. 54. Upon information and belief, Defendant?s commercial use of the Infringing Marks is continuing with the willful intent to trade upon Plaintiffs? reputation and to cause dilution of the Heritage Marks, all to the detriment and damage of Plaintiffs. 55. Defendant?s use of the Infringing Marks has caUsed and/or is likely to cause dilution by blurring and/or dilution by tarnishment of the Heritage Marks. 56. As a direct and proximate result of Defendant?s illegal activities as alleged above, Plaintiffs have been severely damaged. Defendant?s aforesaid acts in diluting the Heritage Marks have caused, and will continue to cause, irreparable harm to Plaintiffs unless enjoined by this Court. FOURTH CLAIM FOR RELIEF COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 57. Macy?s incorporates by reference as if fully set forth herein the averments contained within the preceding paragraphs 1 through 56, inclusive. 58. This Claim arises under the common law of the State of California and alleges willful and intentional common law trademark infringement and unfair competition by Defendant. 59. As more fully alleged above, the use by Defendant of the Infringing Marks constitutes passing off, unfair methods of competition, unconscionable acts and practices, and unfair and deceptive acts and practices wherein Defendant?s conduct is likely to cause confusion in the trade as to the source of Defendant?s department store services, online retail store services, related goods and services and/or is likely to lead the public to believe that Defendant and its department store services, online retail store services, and related goods and services are in some way connected with Plaintiffs when, in fact, they are not, all to the detriment of Plaintiffs and in violation of the common -13- COMPLAINT 39283853 mummth?xocomNmmeN?xo Document1-2 Filed12/O9/11 Page14 of44 law of the State of California. 60. As a direct and proximate result of Defendant?s illegal activities as alleged above, Plaintiffs have been severely damaged. Defendant's aforesaid acts of unfair competition have caused, and will continue to cause, irreparable harm to Plaintiffs unless enjoined by this Court. FIFTH CLAIM FOR RELIEF STATE STATUTORY DILUTION California Business and Professions Code 14247 61. Macy?s incorporates by reference as if fully set forth herein the averments contained within the preceding paragraphs 1 through 60, inclusive. 62. The above-described acts and conduct by Defendant?including without limitation its use of the Infringing Marks?are likely to injurelthe reputation of Macy?s and dilute the distinctive quality of its famous marks in violation of Section 14247 of the California Business Professions Code. 63. By reason of these wrongful acts and conduct Defendant, Macy's has suffered and will suffer damage. Additionally, these wrongful acts and omissions by Defendant have caused, and unless restrained and enjoined by this Court will continue to cause, serious irreparable injury and damage to Macy's, the goodwill associated with its marks, and to the public. Macy's is therefore entitled to injunctive relief, as requested in this action. SIXTH CLAIM FOR RELIEF STATE STATUTORY UNFAIR COMPETITION California Business and Professions Code @7200 et secL 64. Macy?s incorporates by reference as if fully set forth herein the averments contained within the preceding paragraphs 1 through 63, inclusive. 65. This Claim arises under California Business and Professions Code 17200 et seq. and alleges willful and intentional unfair competition by Defendant. 66. As more fully alleged above, Defendant's acts and conduct as alleged -14- COMPLAINT 39283853 Case3:11-cv-06198-SC Documentl-Z Filed12/O9/11 Page15 of44 above also constitute "unlawful, unfair, or fraudulent business act[s] or practice[s] and unfair, deceptive, untrue, or misleading advertising" within the meaning of California Business and Professions Code 17200 et seq. Defendant's acts and conduct are wrongful, knowing, willing, and malicious and constitute unfair competition under California State law. 67. As a direct and proximate result of Defendant?s illegal activities as-alleged above, Plaintiffs have been severely damaged. Defendant?s aforesaid acts of unfair competition have caused, and will continue to cause, irreparable harm to Plaintiffs unless enjoined by this Court. PRAYER FOR RELIEF WHEREFORE, Plaintiffs demand judgment as follows: 1. That a preliminary and permanent injunction be issued enjoining Defendant and its agents, servants, employees, attorneys, and all persons in active concert or participation with them: from using the Heritage Marks or any marks confusingly similar thereto in connection with sale or offering of goods and services; from using any logo, trade name, trademark, or service mark, which may be calculated to falsely represent or which has the effect of falsely representing that goods and/or services of Defendant are sponsored by, authorized by or in any way associated with Plaintiffs; from using the Infringing Marks or from otherwise infringing or diluting the Heritage Marks; and from othenlvise unfairly competing with Plaintiffs or infringing Plaintiffs? rights in and to the Heritage Marks. 2. That Defendant be required to remove from use any interior and exterior signage, web sites, in-store display, business cards, mailers, and any other physical or electronic advertisements, collateral, or promotional materials bearing the Infringing Marks. _15_ COMPLAINT 39283853 Document1-2 Filed12/09/11 Page16 of44 3. That Defendant be enjoined from any use of the infringing Marks on goods which are offered for sale or sold. 4. That Defendant be required to pay to Plaintiffs such damages as Plaintiffs have sustained as a consequence of Defendant's unfair competition and infringement of Plaintiffs? registered and common law Heritage Marks, and to account to Plaintiffs for all gains, profits and advantages derived by Defendant by virtue of its infringement, and/or that Plaintiffs be awarded Defendant's profits pursuant to 15 U.S.C. 1117 and state common and statutory law. 5. That the monetary award to Plaintiffs be increased based on willful infringement pursuant to 15 U.S.C. 1117. 6. That the Court find that the circumstances of the case merit an award of damages to Plaintiffs in the amount of three (3) times the amount found as actual damages, as specifically provided in 15 U.S.C. 1117. 7. That the Court find this case to be exceptional and award reasonable attorneys? fees to the Plaintiffs. 8. For such other and further relief as to the Court may deem just and proper under the circumstances. HANSON BRIDGETT LLP By: QM Liv-x. GARN 1R K. WENG ?5 CHRIS OPHER s. WAL ERS A for Plaintiffs INC. and MACYS.CO DATED: December 2011 -16- COMPLAINT Documentl-Z Filed12/09/11 Page17of44 5' DEMAND FOR JURY TRIAL Plaintiffs Macy's, Inc. and Macys.com, Inc. hereby demand a trial by jury of all claims so triable. DATED: December 2011 HANSON BRIDGETT LLP By: GAR ER K. WE QCHRI TOP 8. WA TERS ?Attor eys forPlaintiffs? INC. and MACYSCOM, . 39283853 _17_ COMPLAINT Case3:11-cv-06198-SC Documentl-Z Filed12/O9/11 Page18 of44 EXHIBIT A Case3:11-cv-06198-SC Documentl-Z Filed12/O9/11 Page19 of44 Int. Cl.: 42 Prior U.S. Cls.: 100 and 101 1 Reg. No. 1,960,415 Umted States Patent and Trademark Of?ce Registered Mar. 5, 1996 SERVICE MARK PRINCIPAL REGISTER MAY DEPARTMENT STORES COMPANY, THE OWNER OF US. REG. NOS. 124,527, 1,517,257 (NEW YORK CORPORATION) AND OTHERS. 611 OLIVE STREET, STE. 1750 ST. LOUIS, MO 63101 SER. NO. 74?668,816, FILED 5?1?1995. FOR: RETAIL DEPARTMENT STORE SERV- ICES, IN CLASS 42 (US CLS. 100 AND 101). FIRST USE 5?6-1894; IN COMMERCE RUDY R. SINGLETON, EXAMINING ATTOR- 5?64894. NEY Documenti?Z Filed12/O9/11 Page20 of44 Int. CL: 42 Prior U.S. Cl.: 101 . . Reg. No. 1,793,132 Unlted States Patent and Trademark Of?ce Registered Sep. 14,1993 SERVICE MARK PRINCIPAL REGISTER ROBINSONS-MAY MAY DEPARTMENT STORES COMPANY, THE FIRST USE IN COMMERCE (NEW YORK CORPORATION) 6H OLIVE STREET MO 63101 SER. NO. 74?355.439, FILED 2?4?1993. FOR: RETAIL DEPARTMENT STORE SERV- ICES. IN CLASS 42 (U.S. CL. 101). ERIN FALK, EXAMINING ATTORNEY Case3:11-cv-06198-SC Documentl-Z Filed12/O9/11 Page21of44 Int. CL: 42 'Prior U.S. CL: 101 Reg. No. 1,728,405 United States Patent and Trademark Office Registered 0ct.27,1992 SERVICE MARK PRINCIPAL REGISTER MAY COMPANY MAY DEPARTMENT STORES COMPANY, THE (NEW YORK CORPORATION) 611 OLIVE STREET. SUITE 1750 ST. LOUIS, MO 6310} FOR: RETAIL DEPARTMENT STORE SERV- ICES, IN CLASS 42 (US. CL. IOI). FIRST USE IN COMMERCE 744899. NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE APART FROM THE MARK AS SHOWN. SER. N0. 74486.03'5. FILED 7?18?199l. SUSAN LEE, EXAMINING ATTORNEY Case3:11-cv-06198-SC Documentl-Z Filed12/O9/11 Page22 of44 EXHIBIT Retro Department Stores FILE E's MAY COMPANY Strategic Mark goal is to bring back the old shopping experiences and brands you remember. Look for a really cool shopping experience coming soon that will bring back choice, selection and service to shopping. Something we believe has been lost. . i - .. Page 1 of 1 12/9/2011 . Case3:11-cv-06198-SC Documentl-Z Filed12/09/11 Page23 of44 - - . ent1-2 Filed12/O9/11 Page24 of44 EXHIBIT Retro Department Stores Page 1 of 2 wiewmacwa i IOSEPI I MAY LOHPAPU Kg BullOck?s ROBINSONSJ Bullock?s was founded in 1907 at Seventh Broadway in downtown Los Angeles by John G. Bullock. In 1944 Bullock?s acquired I. Magnin Co. This was followed by the acquisition ofthe then public-owned Bullock?s/l. Magnin organization in 1964 by Federated Department Stores. In the 19705. to differentiate itself from the full-line Bullock's stores, the very exclusive Wilshire location dropped its apostrophe, became Bollocks Wilshire, and began its own expansion. if j?lti?mfi?i/i?l?uix Bullock's, Bullocks Wilshire, and I. Magnin retained their autonomy under Federated, as well as their carriage-trade niche, with I. Magnin expanding into the Chicago and Washington, DC. metropolitan areas and Bullock's opening stores in Phoenix, Las Vegas and Northern California. In 1983 however, Federated shut the Bullock?s North division and sold most ofits locations to a Seattle, Washington. upstart: In I996?following the acquisition of Broadway Stores, Inc?Federated consolidated all its traditional department-store business in California under the Macy's nameplate, ending 89 years ofBuIlock's. Adam cm 1-2/9/201 Document1-2 Filed12/09/11 Page25 of44 Retro Department Stores que 81 people like thlS. http://retr0departmentst0res .com/bullocks.htm1 Copyright 201 Retro Depaxhnent Stores Page 2 0f 2 12/9/2011 Document1-2 Filed12/09/11 Page26 of44 Case3:11-cv-06198-SC Documentl-Z Filed12/O9/11 Page27 of44 EXHIBIT Retro Department Stores Page 1 0f 2 (Emir) @306 i JOSEPI I MAGNIN MAY (JOHPA NY .. a Abraham Strauss ROBINSONS Abraham SITEIUS (or was a major New York City department store, based in Brooklyn. Founded in 1865, in 1929 it became part of Federated Department Stores, which eliminated the brand shortly after its 1994 acquisition of RH. Macy Company. Most stores took the Macy's name, although a few became part of Stern's, another Federated division that offered lower-end goods than did MacyAllde kiln?! 12/7/201 Document1-2 Filed12/09/11 Page28 of44 Retro Department Stores Like 81 people like mis. Copyright 2011 Retro Department Stores Page 2 of2 I I .. 4 As.) 12/7/2011 Documentl-Z Filed12/09/11 Page29 of44 Case3:11-cv-06198-SC Documentl-Z Filed12/O9/11 Page30 of44 EXHIBIT Retro Department Stores Page 1 of 2 JOSEPI I MAGNIN i a 5 MAY CDMPA Jordan Marsh Jordan Marsh Company (or Jordan Marsh) was a department store in Boston, Massachusetts, which grew to be a major regional chain in the New England area of the United States. In 1996. the last ofthe Jordan Marsh stores were cenverted to Macy's. The store was formerly part of Allied Stores and then Federated Department Stores (now Macy's, Inc.) Allied also operated a separate group of stores in Florida called Jordan Marsh Florida which were disbanded in 1991. amid . Adda: cm: Document1-2 Filed12/09/11 Page31of44 Mum a i R0131 NSONS a 12/7/201 1 Retro Department Stores Page 2 of 2 Var Case3:11-cv-06198-SC Document1-2 Filed12/09/11 Page32 of44 if Luke 81 people like this. Copyright 2011 2; Retro Department Stores 12/7/201 1 Case3:11-cv-06198-SC Documentl-Z Filed12/O9/11 Page33 of44 Exhibit Retro Department Stores Page 1 of 2 JOSEPI I MAGNIN gt MAY NY May Company ROBINSONS The Robinsons-May name was created in 1993 when the former middle-to -low?brow May Company California consolidated with their carriage-trade corporate sibling JW Robinson's. Both chains had operated exclusively in Southern Califomia until. 1989 when May Department Stores dissolved its Goldwaters division. based in Scottsdale, Arizona, and apportioned its Phoenix metropolitan and Las Vegas. Nevada, stores between the still separate JW Robinson's and May Company California. In 1993 Robinsons -May absorbed the Tucson-area 10cations of sister division Foley's. which . were themselves the remains ofthe former Levy's stores. Robinsons-May was further consolidated with Portland. Oregon-based Meier Frank in 2002, which retained its individual nameplate, but merged its primary \l a MAY COMPANY headquarters into Robinsons-May's in North Hollywood. AddtoCart ?Slim 12/7/201 1 Document1-2 Filed12/09/11 Page34 of44 Retro Department Stores Page 2 of 2 SALE $2199 OFHG. S4399 LAKE 81 people like this. Copyright 2011 Retro Department Stores Document1-2 Filed12/09/11 Page35 of44 - 12/7/201 1. Case3:11-cv-06198-SC Documentl-Z Filed12/O9/11 Page36 of44 Exhibit Retro Department Stores The Bon Marche The Bon March?, whose name means ?the good deal" or "the good market?, was the name chosen for a department store launched in Seattle, Washington, United States, in 1890 by Edward Nordhoff. The name comes from Le Bon March?, a noted Paris retailer and one ofthe world' ?rsr department stores, founded 40 years earlier. A solid middle-range store, The Ben served largely working-class Seattle well; branches were added in several Northwestem cities Among them were Spokane, Tacoma, Yakima, Kennewickr Longvicw. Walla Walla, Olympia and Bellingham, Washington, and Boise: Idaho. Commonly known to customers as The 8011, the company dropped the March? from their name in the late 19705 before returning it in the mid-19803. The Ben was known for their catchy jingles, such as the following to th tune of?The Banana Boat Song": ?Day-o7 One Day Sale, One day only at The Bon March?! Save 20? 30, 40 percent (example savings)! Saturday only at the Bon Marche. Prices are don-n in every department! Saturday only at the Bon Marche! Thisjingle continued after the name was changed to Bon Macy's, with the appropriate changes. Page 1 of2 JOSEPI I MAGNIN *3 J. MAY COMPANY anamnitrut jamlm ROBINSONSJ ES 4 kill?! 12/7/2011 Document1-2 Filed12/09/11 Page37 of44 Retro Department Stores Like 81 peopte like this. Copyright 2011 Retro Department Stores Page 2 0f2 ymommr ?gs. Case3:11-cv-06198-SC Documentl-Z Filed12/09/11 Page38 of44 \r ?1 12/7/2011 Case3:11-cv706198-SC Documentl-Z Filed12/O9/11 Page39 of44 Exhibit Retro Department Stores Page 1 of 2 OWE) Gama GEM) r? a MAGNIN MAY i r' ROBINSONS Juana} The Broadway The Broadway was a mid-level department store chain headquartered in Los Angeles, California. Founded in 1896 by English born Arthur Letts, Sr, who later went on to develop Holmby Hills, The Broadway became one of the dominant retailers in Southern California and the Southwest. In 1996 the chain was acquired by Federated Department Stores and the majority of locations were converted to the Macy's nameplate. Several stores in affluent areas where Macy's already had locations were closed, refurbished and reopened as Bloomingdale's while Federated sold many ofthe remaining stores to Sears. marinara! Though the chain had been closed for over seven years, The Broadway Building in Hollywood, including its iconic "The Broadway" sign was I i featured in the climactic ?nal scenes of2003's Hollywood Homicide movie starring Harrison Ford lizl?llv?l?x? 12/ 7/ 20 1 1 Document1-2 Filed12/09/11 Page40 of44 Retro Department Stores Like 81 people like this. Page 2 of2 mnommt? as. Copyright 2011 Retro Department Stores 12/7/2011 Document1-2 Filed12/09/11 Page41 of44 Case3:11-cv-06198-SC Documentl-Z FiledlZ/OEi/bgl Page42 of44 Retro Department Stores Page 1 of 2 HOME {i i IOSEPI MAGNIN g. r, MAY COMPANY r? About ROBINSONS We?ve heard it countless times remember the good ole days when it was a treat to shop at our local department store? We miss those details, such as Joseph Magnin?s Wolves Den. Jordan Marsh?s delicious blueberry muf?ns, and The Bon Marche?s \u Bringing Back Nine Stores Now, through Retro Departmentstorescom, we will bring back nine ofthe great department stores ofthe 20th century: Joseph Magnin, Bulloek?s, May, Robinson?s May, Jordan Marsh, liilenes, The Broadway, The Ben Marche, and Abraham Strauss, and re-build and restore these well-loved brands. ThePlan LE \l You?ll see these stores ?rst as part of this ?nostalgic? virtual mall. Then we plan to branch out with unique accessories at small boutiques, followed by exclusive apparel by up and coming designers. and then ultimately with actual ?Brick and Mortar? stores throughout the United States with a ?ll] line?up of products. We?re Add to thrilled to be able to bring back a little part of Americana home so g; watch this space for more updates! Like 81 people like this. 12/7/201 1 Document1-2 Filed12/09/11 Page43 of44 Retro Department. Stores Page 2 of2 jmommnr r. 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