Friday, April 19, 2013

The RG3 trademark dispute.

This is interesting. Robert Griffin III is seeking a federal trademark registration on "RG3." The registration is opposed by a motorcycle parts company that claims use of "RG3" since 1999. A trademark registration is published for opposition before it becomes official. If there is no opposition or the opposition is not successful, the mark becomes federally registered.

The motorcycle company is seeking to prevent Griffin's registration, but I do not have a lot of sympathy for it. It did not file a trademark application until 2013, a year after Griffin filed his application. The company had almost 15 years during which it could have filed an application. A term like "RG3" would not have required secondary meaning to be registrable, because it is inherently distinctive. It would have been registrable sua sponte -- right away.

When the company did file its application, it only filed for the class of goods in which it opposes Griffin's application. So, the company did not file its application for the bike parts it actually makes, but only for the "RG3" merchandise it seeks to sell. It is safe to say that the company's motives are not genuine.

The contention is over the class of goods specified when filing a trademark application. The USPTO does not allow trademark registrations in the same class of goods. Both parties want to sell "RG3" merchandise. If there are two entities that want to sell "RG3" shirts, consumers will be confused when they encounter those shirts in the marketplace. Consumers will not know if a given "RG3" shirt refers to the motorcycle company or the athlete.

Since the motorcycle company used the mark since 1999 (or so it says), it might be allowed to use the mark in a limited geographic area based on prior use. However, that is determined in court, not by the USPTO. A trademark is prima facie valid throughout the entire United States. So, if the motorcycle had any rights to use the mark at all, it would have to spend a lot of money in trademark litigation to determine the extent of its rights. Plus, the company would have to show that it sold the merchandise since 1999, not just that it used the "RG3" name on its tools. This situation underscores the importance of getting a federal registration on your business name.

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