UPDATED with copy of Order on Oct. 29.
On Oct. 21, we reported that the Department of Justice sought an order seizing the Mongols Motorcycle Club’s trademark. See DOJ Seeks Seizure of Motorcycle Club Trademark.
It seems that the Department of Justice was, at least initially, successful.
The judge initially issued an injunction Tuesday, but that order was limited to barring the sale or distribution of the logo. New language was added, saying the gang members and their affiliates “shall surrender for seizure all products, clothing, vehicles, motorcycles … or other materials bearing the Mongols trademark, upon presentation of a copy of this order.”
I haven’t seen the written order, but either the news outlets got it wrong, or the judge went far beyond any boundaries of sanity in granting it. Only a handful of individuals are under indictment. It might be proper for the judge to order those individuals to surrender their clothing bearing the insignia, but how could such an order lawfully apply to their “affiliates?”
Assistant U.S. Attorney Steven Welk said, “If a Mongol is wearing a vest or jacket bearing the Mongols patch, that item is pursuant to seizure based on this order.” (source)
Either Welk has a fundamental misunderstanding of trademark law, or the order is terribly overreaching and seems to misunderstand the language of the order. The government could wind up in control of the Mongols’ trademark. Such moves are not unprecedented. For a brief period of time, the federal government was in control of the world-famous Mustang Ranch and its intellectual property assets after a seizure and forfeiture order. However, ownership of a trademark does not give the mark holder the right to run around seizing lawfully-licensed and purchased products. Ownership of a trademark will give the holder the right to seize unlawfully produced goods bearing the mark, but there is no ex-post-facto revocation of rights provision in the Lanham Act.
Most importantly, if such an order is allowed to stand, it would be a serious First Amendment violation. Only 79 members of the Mongols are under indictment. Under the law, all the rest of the Mongols are law-abiding citizens (and if the government disagrees, then they should seek more indictments). These citizens have the right to freely associate in a group and to display outward symbols of membership in that group. The government can’t ban confederate flags, swastikas, or klan robes, and it sure as hell can’t ban the display of the Mongols’ logo.
UPDATE: Mr. Welk might have a bigger problem than he realizes. According to the USPTO website, the Mongols don’t even own the trademark — it was assigned to Shotgun Productions, LLC in March of this year. (source)
ADDITIONAL UPDATE: It appears that Mr. Welk is seeking a clarification of the Order that would indeed give law enforcement officers the broad authority he claims they already have.
Special thanks to Blawg Review for tipping me off to the assignment issue.