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April 24, 2014

RG3 and Common Law Trademark Rights: What You Don’t Know Can Hurt You

Following in the footsteps of many sports and entertainment celebrities, the Washington Redskins’ quarterback Robert Griffin III, through his company Thr3escompany LLC, filed a number of US trademark and service mark applications for various marks including his full name as well as his nickname RGIII, sometimes used as RG3. The applications seek registration for use of the marks on clothing and/or for various types of promotional and sponsorship services. The intent to use applications for the marks RG3 and RGIII sailed through prosecution and were published for opposition on Christmas Day last December. Alas, the holiday cheer did not last long once a motorcycle and ATV suspension service company in California called Research Group 3, Inc. opposed the RG3 application. Although the motorcycle company owns no federal trademark registrations of any kind, and did not file its application for the RG3 mark until after the publication of Mr. Griffin’s RG3 application, it claims prior, unregistered, common-law rights in the mark RG3 on clothing and likely confusion if a registration is granted to Mr. Griffin’s company. How can it do that?

Unlike most other countries, US trademark law recognizes unregistered, common-law rights in trademarks that are being used in good faith on products or to advertise and provide services. Such rights are just as valid and enforceable as are registered rights, with the caveat that they are limited in scope to the actual geographic area of use and a natural zone of expansion. Rights based on federal registration are nationwide in scope regardless of the area of geographic use. Thus, simply filing an application for federal registration of a mark does not automatically grant the applicant exclusive nationwide rights in the mark if, in fact, there is a prior common-law user of a confusingly similar mark. The owner of such a common-law mark has the right to oppose a federal application for registration on grounds of prior use. If the opposition deadline is missed, as it often is by those who do not monitor publication notices, the common-law trademark owner still has the right to petition to cancel the registration for up to five years after the registration issues on the same grounds it could have opposed the application. Thus, despite ownership of a federal registration, any use of the registered mark in the geographic area in which a prior user has rights which are superior will constitute infringement. So how do you avoid this kind of mess?

Unfortunately, there is no way to ascertain with 100% certainty that there are no prior, common-law users of a mark in existence. The only way to narrow the possibility of encountering the problematic common-law mark is to conduct a comprehensive US trademark search which includes a search of federal trademark applications and registrations, state registration, the internet, industry databases, domain name registrations, business name indices, news articles and other publications, and more. These search reports, which generally run hundreds of pages, are your best defense against unpleasant and unwanted surprises.

In the RG3 opposition, the motorcycle company claims prior common law rights in the mark RG3 based on alleged sales and distribution of promotional clothing bearing the RG3 mark since at least as early as July 1999. Based on these alleged rights, it claims that Mr. Griffin’s company’s unrestricted use and registration of the RG3 mark on clothing will cause “reverse confusion” or otherwise “deceive the trade and purchasing public into believing” that its clothing products originate with or are otherwise authorized, licensed or sponsored by the NFL quarterback’s company. The company’s website atwww.rg3suspension.com uses an RG3 logo throughout and has an online store on which T-shirts are currently sold bearing the RG3 designation. Since the Notice of Opposition in this proceeding was only initiated on June 24, 2013, a response is not due until July 24 and no response has yet been filed nor has any evidence been produced by either party.

The moral of this story is never to proceed with actual use or plans to use a mark, trade name, or corporate name without first conducting a full trademark search to ascertain whether there are any prior, common-law users of a confusingly similar name or mark which could cause you undo headaches down the road. Some courts have held that failure to conduct a prior search negates a claim of innocent infringement, justifying an award of damages in an infringement suit. Both a prior search and an opinion of counsel are a defense to a claim of willful infringement, even if infringement is eventually found to have occurred. Thus, it makes no sense to spend time, effort and money moving forward with a new name or mark without first obtaining the best intelligence available on whether there are any risks to doing so. Many a company has developed goodwill in its brand only to be forced to forfeit it all when a prior user finally comes forward. Forewarned is forearmed. Put your money where your new brand is.

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About the Author

Susan Neuberger Weller, Trademark Attorney, Mintz Levin, Law Firm
Member

Susan is a member in the firm’s Washington, D.C. office and has managed the firm's trademark practice for over 10 years. For over 25 years, her practice has involved all aspects of intellectual property and related corporate business transactions, with a particular emphasis on domestic and international trademark and copyright searching, prosecution, enforcement, counseling, and litigation. She specializes in trademark, copyright, domain name, trade dress, and related areas of Internet, e-commerce, unfair competition, customs, and advertising law, as well as intellectual...

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