Trademark Disputes Case Study: RGIII

trademark disputesIn this article, we will discuss the trademark conflict between Research Group 3, an off-road motorcycle racing suspension company, and their shared trademark with Robert Griffin III, “RG3”. The purpose of this case study is to demonstrate how two seemingly conflicting trademarks can reach a coexistence agreement based on the distinct nature of their commercial uses. In addition, the study will present possibilities for such a coexistence should an organization find itself in potential conflict with another organization.

A trademark or servicemark is defined as “any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services,” according to the United States Patent and Trademark Office. These marks allow for quick and effective consumer identification and association, which is why consumer confusion lies at the heart of the dispute.

Who Is Involved:

The dispute involves off-road motorcycle racing suspension company Research Group 3, which has used the mark RG3 in endorsements and customer testimonials, and popular NFL quarterback Robert Griffin III.

What Is the Issue:

Research Group 3’s reputation with the motorcycle racing community has led to a positive brand association with strong commercial benefits, while Robert Griffin III was eager to trademark his identity and popular moniker once his professional football career began. Both parties have a vested interest in the use of RG3, but the fact that the mark is shared by both presents the potential for trademark dilution, consumer confusion, and commercial detriment, necessitating an agreement between the two parties as to what products their rights entitle them to.

What Is the Argument:

To begin with, the marks shared by the two companies are utterly identical. The juxtaposition of the letters and uppercase font render the two identical in every way. Beyond the common visual identity, both the quarterback and suspension company have a commercial interest in using the mark in endorsements. Customers that hear both the quarterback’s name and the suspension brand’s acronym will have no way of differentiating the two on aural cues alone, thus leading to confusion and potential commercial detriment.

While the quarterback’s soaring success is reason enough to lay claim to the brand, Rob Henricksen’s company began when Griffin was only eight years old. For this reason, the racing suspension company can argue seniority. In order to do so, the organization would have to demonstrate a confusion between the two brands. Since Griffin’s rise to prominence, the racing company has experienced just that, receiving communications from fans inquiring about the connection between the two.

However, the respective brands exist in separate commercial spheres. Robert Griffin III’s primary interest in the brand is for use on “shirts, sweatshirts, jackets, pants, shorts, footwear, hats, caps, [and] athletic uniforms,” according to the athlete’s filing with the USPTO. It is unclear what products Research Group 3 would select in such an agreement, but considering the distinct nature of the two markets, it is likely that an agreement could be reached.

Overall, the primary line of argument is that action needs to be taken to alleviate current or potential consumer confusion. Alternative solutions exist, including a royalty agreement, but regardless of the specific solution, both parties have a vested interest in clarifying what markets the two brands are entitled to.

What Is At Stake:

With Robert Griffin III’s rising success, the superstar athlete stands to profit greatly from use of the trademark. According to analysts, world sports and fitness clothing sales are expected to reach $126.3 billion by the year 2015. Being a widely admired and immediately recognizable sports personality offers the potential for profound marketing and advertising revenue for both the athlete and any endorsing organizations. For this reason, Robert Griffin has a vested interest in permission to use the mark, as well as a strong desire to prevent dilution of trademark caused by confusion with the racing brand.

Research Group 3 is not without interest in the litigation. The brand, which began as a humble racing parts shop, has become synonymous with performance in the highly competitive arena of motorcycle racing. This reputation, which has taken years to build and has resulted in high profile endorsements of successful racers, is a valuable business asset, the maintenance of which is of great importance to the organization. Research Group 3’s qualms with the conflict are analogous to those of the Redskins’ quarterback regarding trademark dilution and commercial detriment.

What Was Decided:

At this time, the dispute has not reached a resolution, however it is likely that both parties will reach a coexistence agreement of sorts, in which each lays claim to a particular realm of the market that benefits their business interests while alleviating customer confusion. Due to the distinct nature of their respective markets, this agreement would benefit both parties, avoiding expensive litigation proceedings and an unpredictable outcome.

Whether the two can mutually benefit from the mark without stepping on one another’s territory remains to be seen. However, the dispute does demonstrate the potential for coexistence of similar intellectual property without expensive legal battles and potentially damaging PR consequences. Should your organization find itself in such a legal dispute, know your vested interest in possession of the mark, examine the respective markets of the two brands, and consider whether a coexistence agreement would be mutually beneficial for both parties.

Xavier Morales, Esq.

About the Author:

Xavier Morales, Esq.

Mr. Morales founded this trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Since then, he has filed more than 6,000 trademarks with the USPTO. You can learn more about Xavier here.

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