I think I’m safe because the year’s almost over.
The federal government is trying a new, non-obvious, and useful (we’ll see) legal approach in dealing with the Mongols Nation Motorcycle Club by attempting to seize its trademark.
This is legally unprecedented, and the first question that popped into my mind is whether there is actually anything to seize. I mean, if the Catholic Church is accused of child molestation, can the government seize the crucifix as a trademark and then prevent the church from using it?
There is a critical distinction in the above analogy because the Catholic Church has, at best, a common law right trademark, and most likely nothing. Any attempt to register this mark with the USPTO would likely run into first use in commerce issues (among many others) and would be folly. Therefore, the government has to first prove that the Church actually owns a trademark and that it could seize it. This has multiple First Amendment implications and the analogy breaks down quickly.
In light of that, again, do the Mongols actually have anything to be seized? It turns out that the answer is yes (click through the image to see their USPTO registration):
Well, this is awkward. The Mongols Nation Motorcycle Club claims first use in commerce on 12/1/1969. I have a feeling they decided to do this (46 years after they started to use it) because they were becoming notorious and wished to prevent entrepreneurial counterfeiters from selling items using their insignia. Now the tables are being turned.
It seems that the Mongols rather screwed up in applying for this trademark. They turned their common law rights into a Lanham Act one by applying for registration and thus gave the feds a new line of legal attack. If they had kept their common law mark, they could have just written nasty cease-and-desists to apparel manufacturers, and that would likely have been incredibly effective based on the timeless common law legal doctrine of “you never want to fuck with a biker gang.” They could even have worked out licensing schemes with a few and profited from the proceeds.
Is the government’s case airtight? Hardly. There is obviously a First Amendment issue in the government using trademark rights to essentially restrict free speech. The judiciary has been uncomfortable enough with corporations trying for years to use IP to restrict free speech, so guess what they’re going to think when it is the government that wants to do it. There is also again the question of what the feds are actually seizing. If you click through the mark, you can see that the mark is a drawing mark, not a word mark. It means that anyone can use the words “Mongols M.C.” and not infringe. It means that anyone can use another drawing of a biker with the word “Mongols” and not infringe.
It seems to me that this song and dance is a bit embarrassing for federal prosecutors because they really have an arsenal of tools at their disposal to deal with criminal gangs (RICO comes to mind) and they either can’t build a case or haven’t succeeded enough that they have to resort to trademark law, which was never intended to be weaponized this way. This is an uphill climb for the government and it’ll be interesting to watch this play out.
P.S. Did anyone notice that the attorney listed on both the trademark registration is the same person that is mentioned as the criminal defense attorney in the murder trial? What a multi-faceted individual!