The forfeiture request was a highlight of the US Attorney's press release announcing the indictment and arrest. It quoted US Attorney Thomas P. O'Brien:
"[F]or the first time ever, we are seeking to forfeit the intellectual property of a gang. The name 'Mongols' . . . was trademarked by the gang. The indictment alleges that this trademark is subject to forfeiture. We have filed papers seeking a court order that will prevent gang members from using or displaying the name 'Mongols.' If the court grants our request for this order, 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."
Right. Well, there you go then. Except for one minor glitch.
As a number of news reports have noted, the MONGOLS mark has been assigned to a different entity, one not named in either the indictment or the seizure order. According to the USPTO, the MONGOLS mark (Reg. no. 2916965) is currently owned by a company named Shotgun Productions LLC, which also owns a second mark M.C. and DESIGN (Reg. no. 3076731). The design associated with the second mark consists of a cartoon-like image of a muscular gentleman astride a chopper:
The MONGOLS mark is registered for "Association services, namely, promoting the interests of persons interested in the recreation of riding motorcycles." Interesting. The M.C. and DESIGN mark, on the other hand, is registered for something a bit more prosaic: "jackets and t-shirts."
According to the California Secretary of State's database, Shotgun Productions was formed in February 2008. Its business address is the same address as that used by the attorney who registered both the MONGOLS and the MC and DESIGN marks. The attorney's name, by the way, does not appear anywhere in the 177-page indictment.This raises several issues:
-- Did the original registrant of the MONGOLS mark (the "Mongol Nation Unincorporated Non-profit Association California") retain a right to use the mark when it assigned the mark to Shotgun Productions? If not, could those currently under indictment also be facing the ghastly specter of a potential trademark infringement action?
-- Could there be some connection between Shotgun Productions and what the indictment calls the "Mongols enterprise?" (Okay, I know what you're thinking. But the question had to be asked, if only for the sake of form.) But will the government now have to go back to court and prove that connection before making the seizure order stick?
-- Note to self for future IP asset seizures: check assignment records before highlighting seizure in press release.
-- Will the police officers who see someone sporting a jacket bearing the word MONGOL be forced to ascertain whether the wearer is "promoting the interests of persons interested in the recreation of riding motorcycles" versus "promoting the interests of Mongolians" before seizing the offending garment?
Stay tuned . . . . .