In a recent crackdown against a notorious motorcycle gang, the Mongols, a California district court judge has decided to strip away the gang’s right to use its registered trademark name. The forfeiture of the trademark is believed by Assistant U.S. Attorney Steven Welk to allow authorities to stop gang members and their affiliates on the street at will, and seize any items they see with ‘Mongols’ insignia. The ultimate goal is no doubt to dissolve the Mongols, and this can be considered as a commendable effort if other means have proved too difficult.
One obstacle may exist in the government’s prolonged attempt: the ‘Mongols’ trademark may not even be owned by the gang anymore. Using the USPTO’s online Trademark Electronic Search System and looking up trademark registration number 2916965, the last listed owner is a company named Shotgun Productions, so it may be possible for this owner to petition against the seizure as being wholly unjust.
Nonetheless, this is quite an interesting strategy by the U.S. Department of Justice in their pursuit of curbing the gang’s activity overall. A number of issues have been raised against this proposal. Perhaps the most profound criticism is that the wide application of this ban to the entire gang and their affiliates may be unconstitutional. As stated by attorney Douglas Mirrell, “it strikes me as a serious potential First Amendment violation to have the government come in and attempt to, and in this case exceed, stripping lawfully obtained rights.” Though it is laughable to describe the Mongols primarily as “persons interested in the recreation of riding motorcycles”, the language used in the trademark’s registration, stopping individuals and seizing their property for simply affiliating with images of the gang may be too far a step to be considered legitimate.
The efficacy of enforcing the government’s rights over the newly obtained mark is also questionable. New York intellectual property lawyer, Paul Llewellyn, told the Wall Street Journal that “if the government gets the trademark through forfeiture then they could own it if they continue to use it for services covered by the mark. In order to enforce the trademark against an unauthorized user, it would have to show that the unauthorized use is causing a likelihood of confusion.” It is hard to see how such a likelihood of confusion would be shown by the government.
Another broader concern is whether trademark law should be used in this context and for this purpose in the first place. It can be said that intellectual property in general primarily serves the purpose of promoting fair competition in the business world. Exploiting trademark law to yield consequences toward primary purposes that should be dealt with in criminal law may be inappropriate and go against the spirit of the former. At the same time, if a pressing public safety issue surfaces and the traditional remedies of a particular area of law are inadequate, perhaps the niceties of trying to limit bodies of law within ideal boundaries should be momentarily ceased.