First Amendment Protects Trademarks That Inspire Fear

Mongols Nation Motorcycle Club Keeps Its Trademark

The First Amendment may not come to mind when thinking about trademarks. However, the First Amendment was a crucial factor in a recent case about the government’s attempt to require forfeiture of a trademark used by a motorcycle club convicted of serious criminal offenses.

First Amendment Protects Disparaging Trademarks & Trademarks that Inspire Fear

The U.S. Supreme Court previously held that the First Amendment protects disparaging trademarks. Recently, a California federal court held that the First Amendment also protects from forfeiture trademarks owed by a motorcycle club the U.S. Justice Department characterizes as a gang. See, United States of America v. Mongol Nation, Case Number CR 13-0106-DOC-1, “Order re Motion for Entry of Preliminary Order of Forfeitureâ€, Feb. 28, 2019.

The Mongols Nation Motorcycle Club owns two federally registered trademarks, one for the word MONGOLS, and the other for the word and logo, shown below. The trademarks are “collective membership marks†which means that members of a group wear the trademark to show they are part of a collective, in this case a motorcycle club.

A red and blue slide on top of a green background.

The Justice Department had been pursuing the Mongols Nation Motorcycle Club for criminal violations for over a decade, alleging violations of RICO.* Recently, a federal jury found the defendant Mongols Nation guilty of racketeering offenses under RICO. The jury also found that there was a direct connection between the club’s crimes and the trademarks and determined that the club should forfeit the trademarks.

Defendant Mongols Nation objected to the forfeiture.

The court found in favor of Mongols Nation. The court stated that the First Amendment prohibits the government from using RICO forfeiture laws to chill Mongol Nation members’ right to express their membership in the club. The court analyzed First Amendment law, noting that symbols and words on clothing are pure speech, and are entitled to full First Amendment protection.

The jury had convicted Mongol Nation of serious crimes, including murder, attempted murder, and conspiracy to distribute cocaine and methamphetamine. The government contended that the crimes and actions of Mongols Nation inspired fear in others through the use of the trademarks, and therefore the trademarks should be forfeited.

The court was unpersuaded by these arguments. The court found this type of forfeiture would be a prior restraint on speech and a content-based restriction on speech.

In addition, the government had previously made statements that forfeiture of the trademarks would allow any law enforcement officer seeing a Mongols logo to “stop the gang member and literally take the jacket right off his back.†However, not all Mongols Nation members had been convicted of the crimes. The court found that forfeiture of the trademarks in these circumstances would unconstitutionally impact the Mongols Nation motorcycle club members right of association.

For these reasons, the court refused to require forfeiture of the trademarks.

From the court’s opinion, at page 11:

A red and blue slide on top of a green background.

Collective Membership Trademarks

Collective membership trademarks are different than typical trademarks. Normally, a trademark must be associated with goods or services used in commerce. Collective membership marks do not require any goods or services associated with the mark. They are used to show that certain people are part of a collective. Some examples of collective membership marks include the National Rifle Association, American Thyroid Association, and the International Brotherhood of Teamsters.

*RICO refers to the Racketeer Influenced and Corrupt Organizations Act, 18 U.S.C. §1962 et seq.

Adams Law Office is here if you have questions about collective membership trademarks, or trademarks in general.

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