March 20, 2019

Forfeiture and Collective Membership Marks

Most marks are either trademarks (used in connection with goods) or service marks (used in connection with services). But there are a few other kinds of marks. One of those is collective membership marks. Collective membership marks are used to indicate membership in an organization rather than to indicate the source of goods or services. Many sororities and fraternities register their marks as collective membership marks, as do unions, trade organizations, and other associations. The marks may appear on membership cards, pins, and other indicia of membership in the group. By protecting the collective membership marks, the organization prevents others from falsely indicating their membership in the group.

Among the associations that have registered collective membership marks are motorcycle clubs. For example, Mongol Nation has registered marks, including this one:

Mongol Nation registered the foregoing mark for “indicating membership in an association dedicated to motorcycle riding appreciation.” The mark (and other marks that may not be registered with the US Patent and Trademark Office) are displayed on clothing, flags, and other property to indicate membership in the association. Below is the specimen the organization filed with the US Patent and Trademark Office to show how the mark is used to indicate membership in the organization:

This mark made the news recently under unusual circumstances. A jury in the U.S. District Court for the Central District of California found that Mongol Nation had been up to much more than motorcycle riding. Specifically, it found Mongol Nation guilty of substantive RICO and RICO conspiracy charges. The jury later returned a special verdict finding certain property of the organization subject to criminal forfeiture, including the rights associated with collective membership marks (like the one above) owned by the association. Accordingly, the U.S. Government moved for a preliminary order of forfeiture of property, including such marks.

According to the order issued by the court at the end of February, the U.S. Government had been seeking forfeiture of Mongol Nation’s collective membership marks for more than a decade. The U.S. Government has expressed a desire to prevent the organization from using these marks to generate fear among the public. More than ten years ago, in connection with conviction of multiple members of Mongol Nation, the U.S. Government sought forfeiture of the association’s marks, but the court then ruled against the U.S. Government on that point, in part because the convictions were against individuals and not the association (which owned the mark), and in part because the forfeiture would violate the First Amendment’s protections of expressive speech and freedom of association. That earlier decision influenced the court’s reasoning in the present case.

Forfeiture of the trademark rights would mean transfer of the rights to the U.S. Government. The court indicated such forfeiture would chill the association’s members’ right to display and use the marks without fear of retaliation or payment of a licensing fee to the government. The court emphasized the individual members’ rights to use the collective membership mark for expressive purposes and to indicate their association with Mongol Nation and support of the organization’s views. Thus, at least two types of First Amendment rights were at issue (freedom of expression and freedom of association). These members’ freedoms are protected notwithstanding the actions of the association itself and even though the court acknowledged that Mongol Nation members had displayed marks during the commission of crimes and had been awarded patches bearing marks for the commission of other crimes. The court stated that just because speech encourages unlawful acts does not mean it may be banned. In addition, this particular speech has been targeted because of its content (because the collective membership marks indicate association with Mongol Nation). Further, the court pointed out that these marks are not a source of economic benefit to the association. The court determined there are less speech-restrictive ways of achieving the U.S. Government’s goals than forfeiting Mongol Nation’s collective membership marks to the U.S. Government.

The court also found that because the U.S. Government had not shown the requisite nexus between the marks and all the criminal acts of which the association had been convicted (the jury found the marks forfeitable only in connection with RICO conspiracy charges), the forfeiture of the marks would be disproportionate to the offense and thereby violate the Eighth Amendment.

In an interesting footnote, the court observed that Congress has the power to address the ability of organizations like Mongol Nation to maintain federal trademark rights. The footnote specifically cites Matal v. Tam, 582 U.S. ___, 137 S. Ct. 1744, 1753 (2017) for the proposition that Congress may prohibit registration of certain marks (citing prohibition of registration of descriptive marks and marks likely to cause confusion as examples of such power). But citing Tam for this proposition is surprising considering the case illustrates a limitation on Congressional power to restrict registration of marks. The Supreme Court held in Tam that Congress’ efforts to prohibit registration of disparaging marks under the Lanham Act was unconstitutional.

Ultimately, the court denied the U.S. Government’s request to include Mongol Nation’s collective membership marks in the forfeiture order. The court order did conditionally grant the U.S. Government permission (pending an amended preliminary order of forfeiture) to forfeit the body armor, firearms, ammunition, and personal property (including vests, patches, clothing, and documents) already in the U.S. Government’s custody.

According to news reports, both sides are considering appeals, and some are speculating this case could ultimately be heard by the U.S. Supreme Court. A U.S. Government representative has been quoted as expressing the belief that the court was required by federal law to issue the forfeiture order requested by the U.S. Government. If this question is raised on appeal and if the case reaches in the U.S. Supreme Court, it will be another in a recent string of cases defining the law at the intersection of trademark and First Amendment rights.