Legal News

What Will the Gov?t Do With the Mongol Trademark?

By Dan Slater

The first-day stories on the push by Thomas O’Brien, the U.S. Attorney for the Central District of California, to cause a forfeiture of the Mongol trademark raised as many questions as they answered. The government can own a trademark, sure, but what happens when they acquire the mark through forfeiture? Can they turn around and sue the prior owner for infringement? That’d be tough.

A Mongols’ motorcycle gang member vest is displayed during a news conference Tuesday, Oct. 21, 2008, in Los Angeles. (AP/Ric Francis)

But before we get down to business, a refresher: Yesterday, authorities filed a 177-page indictment charging 79 Mongols, a West Coast motorcycle gang, with an assortment of racketeering, drug and money laundering offenses. Prosecutors identified for potential forfeiture, among other things, the Mongols’ trademark, which typically depicts the profile of a Mongolian warrior wearing sunglasses. Forfeiture would follow conviction. O’Brien, the U.S. Attorney, reportedly said: “If the court grants our request . . . then if any law enforcement officer sees a Mongol wearing his patch, he will be authorized to stop that gang member and literally take the jacket right off his back.”

We wish Mr. O’Brien luck with that. In the meantime, we checked in with Kaye Scholer’s Paul Llewellyn, a seasoned trademark lawyer who says he’s never come across anything like this before, to get a sense of how the situation could play out.

“It’s a basic principle of trademark law that you don’t own the trademark divorced from your actual use of the mark,” Llewellyn told us. “In theory, 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.”

So what are the services covered? According to the registration, the services covered are “Association services, namely promoting the interests of persons interested in the recreation of riding motorcycles.”

Llewellyn says: “It’s an odd thing. It would put the government in the business of offering services under that mark. They could start a motorcycle association, I suppose.”

Full post as published by Law Blog - WSJ.com on October 24, 2008 (boomark / email).