As reported by USA Today, Robert Griffin III (“Griffin”), the second overall pick in the 2012 National Football League Draft and now the starting quarterback of the Washington Redskins, has applied to register his name, nicknames and two slogans as
trademarks.
Griffin, who was a college football standout and Heisman Trophy winner at Baylor University, has become known by the nickname “RG3” as shorthand for Robert Griffin III. NFL teams had indicated long before the draft that Griffin would be selected with either the first or second overall pick. Griffin, presumably preparing to become a full-fledged celebrity and household name, formed Thr3escompany, LLC, and filed trademark applications for ROBERT GRIFFIN III, RG3 and RGIII. These applications were filed on an intent-to-use basis, covering a wide range of apparel. In addition, Griffin has applied to register two slogans, UNBELIEVABLY BELIEVABLE and DREAM BIGGER LIVE BIGGER.
Registering one’s name and nickname as trademarks has certain advantages, particularly in the case of a celebrity. Assuming that Griffin’s trademark applications mature into registrations, he will certainly have more control over the use of his name and nicknames in connection with clothing.
A less apparent but perhaps equally important benefit is that rights in a valid trademark can be used as a vehicle to stop a third party from using a domain name that incorporates or is confusingly similar to such trademark. Given that the cost associated with registering a domain name is very small, and available domain names are registered on a “first come, first served” basis, anyone can quickly and easily register a domain name that incorporates a famous name, nickname or brand.
Trademark rights in such name, nickname or brand can be used as the basis for instituting a Uniform Domain-Name Dispute Resolution Policy (“UDRP”) proceeding to obtain transfer of a domain name registered in bad faith. Alternatively, the trademark owner may file a lawsuit under the Anticybersquatting Consumer Protection Act (“ACPA”) against a domain name registrant with bad faith intent to profit from the use of the mark. The advantage of an ACPA action is that, in addition to securing the transfer of the infringing domain name, the trademark owner may also be awarded monetary damages. In fact, the Lanham Act (the federal trademark statute) provides for an award of statutory damages of not less than $1,000 and not more than $100,000 per domain name, as well as attorneys’ fees in exceptional cases. While a trademark registration is not a prerequisite for commencing these proceedings, it will establish one element that must be proven – rights in the trademark at issue. A registration may also help establish that the domain name registrant acted in bad faith.
By registering his trademarks, Griffin will have done more than protect his merchandising rights. Indeed, he will have taken a substantial step in protecting the manner in which his name and nicknames are used on the Internet.
