As the trademark world anxiously awaits the decision of the three-judge panel at the Trademark Trial and Appeal Board (and which we’ll be covering in great depth in our enhanced Intellectual Property, Copyright, and Trademark section of the blog), regarding whether the Washington Redskins logo is disparaging and thus whether the ’Skins would be forced to relinquish trademark protection over perhaps their most prized asset, Washington’s star player, Robert Griffin III, was in court settling a trademark dispute of his own.
Griffin, who is known in the world of professional football, and the world of professional sports at large, as RGIII, has been attempting to trademark his now-famous nickname since at least January, when his company, Thr3escompany, filed formal paperwork with the USPTO. What are the benefits of federal trademark registration? According to the USPTO, owning a federal trademark registration on the Principal Register provides several advantages, including: public notice of your claim of ownership of the mark; a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration; the ability to bring an action concerning the mark in federal court and the use of the U.S. registration as a basis to obtain registration in foreign countries, among other benefits. With a distinct nickname and a high level of recognition, it is likely Griffin’s attorneys believe this registration to be a slam-dunk (or touchdown).
But, as Lee Corso so famously says every college football Saturday morning, “Not so fast, my friend.” The United States’ trademark system is a used-based system, meaning that the first use of the mark in commerce provides its user with seniority over all comers thereafter. On Monday, Griffin’s formal RGIII trademark application was opposed by a California-based motorcycle parts company called Research Group 3 (trademark: RG3) which, per its website, offers “suspension customized specifically for you and your riding ability and style.” Research Group argued that it was first to the market with their product (with sales beginning in 1998, when the quarterback was 8 years old) and, therefore, was the senior user and rightful holder of the trademark, asking the court to strike the junior user Griffin’s application for shirts, sweatshirts, jackets, pants, shorts, footwear, hats, caps, and athletic uniforms. There will be a decision forthcoming from the TTAB.
In the meantime, according to the Washington Post, “the two sides could simply reach a coexistence agreement between themselves, with one or both sides agreeing to stay out of a particular line of products, or one side agreeing to pay a royalty to the other.” Clearly, coexistence is possible here because of the divergent products that each side is seeking to protect the trademark for. There’s no word yet on whether Griffin and his IP legal team will be seeking court intervention regarding some of the other RG3 marks that are in existence, including one for lawn mowers sold for use in golf course applications and one for “beauty beverages” like fruit juices and energy drinks. If Griffin plans to cross over into those markets, he’ll have to invalidate those RG3 marks first.