In a Decade Long Racketeering Case, an Unconventional Trademark Battle is at Play

For years, undercover agents, countless drug busts, and racketeering, money laundering, and murder charges have followed the Mongols, “a biker group [that federal law enforcement authorities] consider one of the most dangerous criminal enterprises in the country,” Serge F. Kovaleski wrote for the New York Times last week. But the authorities are not just pursuing the Mongol members, themselves, but one of their biggest assets, as well: their arsenal of trademarks.

Dating back to the time of the group’s founding in 1969 in Montebello, California, its members have adorned their leather jackets with patches that consist of “an image of a man with sunglasses, mustache, and queue, wearing a black vest, holding a sword, and riding a motorcycle.” That is how the the Mongols’ U.S. trademark registrations describe the group’s carefully protected logo, at least. Others’ motorcycles bear this image. Still yet, no small number of the Mongols’ 1,000-or-so members have opted for far more permanent displays, tattooing the group’s logo on their skin.

“The patch is like the American flag to these guys and speaks to the identity of the club, the individual and the culture,” said William Dulaney, a retired associate professor who is an expert on motorcycle groups, told Kovaleski. The “unifying” nature of the trademark is precisely why federal prosecutors are gunning for it in a currently pending trial underway in Southern California, which centers on alleged violations of the Racketeer Influenced and Corrupt Organizations (“RICO”) Act.

They are hoping to seize the group’s federally-protected moniker and logo by way of an interesting interpretation of asset forfeiture law, which the FBI calls “a powerful tool used by law enforcement agencies against criminals and criminal organizations to deprive them of their ill-gotten gains through seizure of these assets.” Typically, such forfeiture procedures see the government seize cash, cars, or even real estate that represent the proceeds of, or were used to facilitate the crimes at issue. In terms of the Mongols, the (intangible) objects of the state’s desire are trademarks.

“The government will show that the marks served as unifying symbols of an enterprise dedicated to intimidating and terrorizing everyone who is not a member, and assaulting and killing those who have sworn their loyalty to other outlaw motorcycle gangs,” prosecutors stated.

This is not an entirely unprecedented tactic when it comes to the prosecution of the Mongols. State attorneys have been trying for at least 10 years to strip the gang of its property interest in its trademark-protected name and its logo in a web of litigation that started with a racketeering case filed against 80 senior gang members in 2008.

In an early round, the late U.S. District Judge Florence Marie Cooper approved the prosecution’s request for forfeiture and “authorized the seizure of ‘products, clothing, vehicles, motorcycles, books, posters, merchandise, stationery, or other materials bearing the Mongols trademark’ from members, their relatives and any associates.” The decision was reversed in 2009. 

In a separate civil lawsuit, Mongols member Ramon Rivera, who was not one of the 80 members named as a defendant in the RICO case, argued – with the help of the American Civil Liberties Union –  that by allowing the forfeiture of the Mongols' name and patch, the court had run afoul of the First Amendment rights of people connected to the motorcycle club that had not committed crimes. The purpose of forfeiture "is to victimize the 700 to 800 members who've done nothing wrong,” they asserted.

U.S. District Judge David O. Carter ultimately found that the prosecution’s forfeiture attempt was not "substantially justified," and forced the state to pay upwards of $250,000 for Rivera’s lawyers’ fees.

Still yet, another case followed in 2010 in which “federal judge Otis Wright, preliminarily forfeited the logo to the government after the lead defendant and former club president, Ruben Cavazos, reached a plea deal with prosecutors.” However, the Mongols’ counsel fought back, arguing that it was “the club, not Mr. Cavazos, [that] owned the rights” in the trademarks, and Judge Wright “regrettably” held that “the marks were not forfeitable since they belonged to the organization.”

Over the years, Kovaleski writes, “The trademark part of the case has been punctuated by conflicting interpretations of intellectual property law, judges overruling their own orders and confusion over who even owns the rights to the logo.” With that in mind, the Mongols and legal enthusiasts, alike, are watching this case closely. Chances are, other organizations – whether it be the Hell’s Angels or the members of the Hispanic street gang MS13 – are, too.