Last week, I wrote about how despite their less-than-savory reputations, outlaw motorcycle clubs are excellent role models when it comes to trademark strategy. It’s not surprising that trademarks are critical to these groups. The central purpose of belonging to an outlaw motorcycle club is the affiliation with the group as a whole. The trademarks of these clubs (called “colors”) signify this affiliation. Members of these clubs wear vests, called “cuts” that include the club’s colors as well as indicators of rank and geographic affiliation. If a member of a motorcycle club were not allowed to identify himself as such, he would not be able to operate under the goodwill (badwill?) of the organization as a whole, and the value of the membership would be greatly diminished. In other words, a Hells Angel that isn’t a Hells Angel®, isn’t a Hells Angel.
Apparently, federal prosecutors have gotten wind of this concept. As a test case, the federal government has been trying (mostly unsuccessfully up to this point) to seize the trademarks of the “Mongols” motorcycle club. The entire history of the case is long and frankly pretty boring, but the theory is interesting. The federal government believes that the Mongols are using the club to engage in illegal activity. If the federal government owned the Mongols’ trademark rights, they could stop any person from wearing Mongols colors or even organizing under the Mongols name. This would not only stop any suspected criminal activity, but would essentially eviscerate the club. The club would have to rebrand itself under a new name, a difficult undertaking for such a large and dispersed group held together almost entirely out of goodwill for the brand.
While most businesses should not be worried about the federal government seizing their trademarks, this issue does highlight the damage that can be done if a business is forced to give up its trademarks, which typically occurs when a business begins using a mark without properly searching to see if it is already in use.