Craig Mende of Fross Zelnick, famous trademark litigator, writes in to report his latest victory before the Second Circuit. Times Mirror published FIELD AND STREAM magazine for about 100 years and sold some items related to hunting and fishing. Field and Stream Licenses Company had been selling all sorts of goods and services, including items related to hunting and fishing, for over 90 years. The two parties had a coexistence agreement since 1984. Now it was time for TM to sue FSLC over hunting and fishing items.
Two holdings of interest: two parties can use the identical mark and both can still own strong marks (use that the next time you get sued for dilution). Also, this case deals with the overlap problem. If an area of interest can be argued to be a natural area of expansion for two mark owners, the first one gets it. If both go in and do nothing for, say 90 years, neither own exclusivity in that area.
And that’s why you have to file trademark applications early and often.