Rob Henricksen started his off-road motorcycle racing suspension parts business in 1998, dedicated to helping racers reach higher speeds through tricky terrain. The Southern California-based business soon began supplying parts and services to amateur and professional riders, including some of the leading names in the sport.
“It’s just been really good to have someone that can work with me and that doesn’t just say that’s impossible — that says okay, how do we make this possible?” Anne Arundel County’s Travis Pastrana said in a 2009 video he made for the company. “As far as I’m concerned, there’s no one better in making whatever you want to do possible on a motorcycle.”
Henricksen’s company “became synonymous with plush and predictable suspension,” its Web site explains, “suspension that let a rider cut through whoops and blaze through corners and obstacles with the confidence you’ve been looking for.”
And that company’s name? Research Group 3. Which, in the industry, is commonly referred to by its initials: RG3.
Of course, around the time Pastrana was extolling RG3′s merits, another RGIII was attracting a small bit of attention in the sports world. And as Robert Griffin III transitioned from a promising college prospect into an established professional star, he took steps to protect his brand, filing paperwork with the U.S. Patent and Trademark Office to trademark the phrases “RGIII” and “RG3,” for use on “shirts, sweatshirts, jackets, pants, shorts, footwear, hats, caps, [and] athletic uniforms.”
Griffin, as it turns out, was just eight years old when Henricksen started his motorcycle parts business. But as his star rose, the company started getting e-mails and letters from fans wondering if there was a connection between the suspension business and the quarterback.
Earlier this year, the company filed an extension of time with the Trademark Office to oppose both of the quarterback’s filings. The company was granted 90 days; the extensions of time expire next week.
“We’re maintaining the status quo until we can work out a coexistence agreement,” said Catherine Holland, a California-based intellectual property lawyer with Knobbe Martens who is representing the company. “We just want to clearly delineate the rights that each party has with regard to the phrase RG3.”
Holland said the suspension company is not trying to profit off Griffin’s fame and wishes him the best on and off the field; its goal is to prevent marketplace confusion and the use of competing marks in the same sphere. And one trademark lawyer said the company’s argument might be convincing.
“The legal standard is whether there is a likelihood of consumer confusion,” said David Weslow, a partner at Wiley Rein (and lifelong Redskins fan). “If they could show that those two different versions are close enough, and that they used the mark commercially in association with products or services that are similar enough to RGIII’s products or services, then they could have seniority. They’d have to show that when consumers encounter those two different trademarks, they’d be likely to be confused between the two.”
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. Barring such an agreement, Research Group 3 could file a notice of opposition with the Trademark Office, which would then prompt an administrative litigation process at the Trademark Trial and Appeal Board.
“We don’t want to have any confusion in the marketplace, and we’re sure he doesn’t either,” Holland said.
Having been consumed with one sort of RGIII coverage in recent months, it’s certainly jarring to hear the phrase in a different sporting context.
“I always wanted to be a part of RGIII; I just could never afford it,” Sherri Cruse, a former X-Games silver medalist, said in a company video several years ago.
“RG3’s a perfect fit for me,” Pastrana said in the 2009 video.
“I’ve been riding on RG3 suspension for as long as I can remember,” another rider, Lance Coury, said in 2010. “It’s something that I know is the right thing to do.”
If only figuring out trademark law were that simple.