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Good News for San Diego Not-For-Profits: Expressive Trademarks Protected by First Amendment

A federal court here in the Golden State recently held that expressive trademarks are protected by the First Amendment of the US Constitution. In general, trademarks and service marks are considered commercial — a designation of the unique commercial source of a particular product or service. Once it is registered with the US Patent and Trademark Office, a business can prevent competitors from using the registered mark or a confusingly similar mark on the packaging and/or advertising of the competing goods/services.

Among registered trademarks/service marks, there is a subset of marks that are considered to be “expressive” — that is, the marks are not really about the source of commercial goods and services, but are rather about membership in a group. Expressive marks have an extra layer of protection. Expressive marks are not only protected by the trademark laws, but also by the First Amendment. This was the decision made recently in US v. Mongol Nation, Case No. CR 13-0106-DOC (US Dist. C.D. Cal. February 28, 2019). See news report here.

At issue were two trademarks registered by the Mongols Motorcycle Club. The first trademark was for the word-mark “MONGOLS” and the second was a picture-mark that depicted a figure with a ponytail and wearing sunglasses riding a chopper-style motorcycle. As a motorcycle “gang,” the Mongols have existed since the 1970s. The Mongols have about 68 identified chapters, most of which are located in Southern California with about 400 “full patched members.” Full-patched members are allowed to wear the trademarks on their jackets, skin (tattoos), and their bikes.

The federal government has long claimed that the Mongols are a criminal organization engaged various criminal acts and conspiracies such as murder, attempted murder, narcotics-trafficking, robbery, extortion, money laundering, witness intimidation, and other crimes. For several years, the US government has been attempting to seize control over the Mongols’ trademarks as part of criminal asset forfeiture. In 2015, Judge Carter expressed his concerns about the government’s efforts and dismissed the case. See US v. Mongol Nation, 132 F. Supp. 3d 1207 – Dist. Court, CD California 2015). However, the US Ninth Circuit reversed, asserting that the decision on the constitutionality of the asset seizure was premature.

Jumping forward to 2019, in January the government finally put its case before a jury and was victorious; a jury held forfeiture of the trademarks was warranted. See news report here. However, as noted, Judge Carter refused to affirm the jury verdict and held that forfeiture was unconstitutional. This was not too surprising given Judge Carter’s expressed views from 2015. Judge Carter’s opinion held that these particular trademarks were expressive in nature, not merely commercial (although the trademarks were used in commerce on t-shirts and other goods). Because of the expressive nature of the marks, giving control of the marks to the government would serve to chill free speech. Others who felt kinship or comradery with the Mongols would be reluctant to use the marks for fear of government action. Judge Carter listed other examples of expressive marks such as those registered by the National Rifle Association of America, the American Thyroid Association, and the Christian Deer Hunters Association.

Contact San Diego Corporate Law Today

For more information, contact attorney Michael Leonard, Esq., of San Diego Corporate Law. Mr. Leonard can be reached at (858) 483-9200 or via email. Mr. Leonard has been named a “Rising Star” four years running by and “Best of the Bar” by the San Diego Business Journal. Mr. Leonard can assist with the formation of your business entity, financing through the sale of debt and equity securities, mergers and acquisitions, contract drafting and review including commercial leases, and establishment and licensing of trademarks, copyrights, and trade secrets.

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