This page apologizes for the unnecessary consternation it has caused some members of the Mongols Motorcycle Club with the posting below titled “New Battle Over Mongols Marks.”
The issue has been argued before three judges and it should have been decided last July. A fine lawyer, gentleman and scholar named David Blair-Loy who is the Legal Director of the ACLU Foundation of San Diego & Imperial Counties as well as informed and respectfully regarded members of the Mongols have asked me to provide a clarification. So I am. Blair-Loy corrects me:
“You write, “Former Mongols President Ruben ‘Doc’ Cavazos trademarked the Mongols insignia in the name of a corporation he owned.” While the government might make that argument, I don’t believe it’s legally correct.
“As I’ve written in the briefs and as Judge Cooper found, the Club acquired the trademarks by first use in 1969 and 1970 (top rocker and center patch, respectively). Trademarks do not need to be registered. The marks were eventually registered in 2003 and 2005. Though Doc signed the registration materials, he did so on behalf of the Club. The marks are collective membership marks. As a matter of law, only the Club, not any individual member, can own or register them.
“Though documents were executed purporting to assign the marks to Shotgun Productions LLC, those assignments were invalid as a matter of law, as Judge Cooper found. The Club later recorded corrective assignments in any event.”
Why Did Rebel make This Mistake
It seemed to me at the time I published the story that I need to raise this issue before July 15th. Just in case. I replied to Blair-Loy:
“Sure I hear. Doc could not trademark the Mongols marks because they already were collective membership marks that belonged to a group called the Mongols. As I understand, the government disputes this because trademarks were issued to Shotgun Productions. The government also, I suspect, will introduce a wiretapped conversation between Doc Cavazos and his son from February 14, 2008 in which they discuss extending the trademark to include the logo.
“What I find gray and what I think the DOJ intends to paint gray is what Doc forfeited. All the legalities in this case have always been a dog chasing his tail. The Mongols is a racket because it is a racket. Doc can forfeit the marks because he trademarked them. He could trademark them because a trademark was issued to Shotgun Productions. And there are two judges ruling on what seems to me to be essentially the same issue. Maybe I am wrong but I am not subtle enough to reduce the issue to something other than a dichotomy. Doc owned the trademarks or he didn’t. Maybe this is just something procedural that I am missing. Judge Wright ruled that Doc had something to forfeit. It seems to me that the government would not have asked Judge Wright to rule on this forfeiture if they were not up to something. I put the story up because I think the government is up to something. At first glance, the civil and the criminal rulings seem to contradict each other.”
In any event, I now know that Judge Wright cannot proceed with this forfeiture until sometime after August 12, 2010 when a series of depositions will be completed in his court. The Club is on top of the situation. Don’t worry. Be happy.
The complete text of Judge Wright’s forfeiture ruling of June 15th follows.
Case 2:08-cr-01201-ODW Document 3854 Filed 06/15/10
PRELIMINARY ORDER OF FORFEITURE AS TO RUBEN CAVAZOS [REGISTERED MARKS]
Upon consideration of the revised application of plaintiff United States of America for a preliminary order of forfeiture pursuant to Count Eighty-Five of the Indictment, defendant Ruben Cavazos’s plea of guilty to Count One of the Indictment, defendant’s plea agreement, defendant’s change of plea hearing, and the evidence presented with the government’s application, the court ORDERS as follows:
I. FORFEITABLE PROPERTY
For the reasons set out below, the following described property, and all rights, interests and privileges appurtenant thereto (hereinafter, the “Forfeitable Marks”) is subject to forfeiture to the United States. As alleged in Count Eighty-Five of the Indictment, the government has established the requisite nexus between the Forfeitable Marks and the offenses described in Count One of the Indictment pursuant to 18 U.S.C. § 1963(a). All right, title, and interest of RUBEN CAVAZOS in the Forfeitable Marks is hereby forfeited to the United States. The Forfeitable Marks are more particularly described as:
1. The mark assigned Registration No. 3076731 (serial no. 78610213), issued to Mongol Nation on or about April 4, 2006, purportedly for use in commerce in connection with promoting the interests of persons interested in the recreation of riding motorcycles.
2. The mark assigned Registration No. 2916965 (serial no. 76532713), issued to Mongol Nation on or about January 11, 2005, purportedly for use in commerce in connection with promoting the interests of persons interested in the recreation of riding motorcycles.
IT IS FURTHER ORDERED as follows:
A. Upon the entry of this Order, and pursuant to Fed. R. Crim. P. 32.2(b)(6) and 18 U.S.C. § 1963(c) and (g), the United States Attorney General (or a designee) is authorized to seize the Forfeitable Marks and all rights, interests and privileges appurtenant thereto. To the extent the United States at any time identifies specific tangible property subject to forfeiture pursuant to this Order, the United States may apply for a seizure warrant to seize such property in the manner set forth in 18 U.S.C. § 1963(e), and shall move to amend this or any other then existing order of forfeiture in this matter to include such property, pursuant to Fed. R. Crim. P. 32.2(e).
B. Upon entry of this Order, the United States is further authorized to conduct any discovery for the purpose of identifying, locating, or disposing of property subject to forfeiture pursuant to this Order and Rule 32.2(b)(3) of the Federal Rules of Criminal Procedure. “Any discovery” shall include all methods of discovery permitted under the Federal Rules of Civil Procedure.
C. Upon entry of this Order (and at any time in the future after amendment of the applicable order of forfeiture in this matter), the United States Attorney General (or a designee) is authorized to commence any applicable proceeding to comply with statutes governing third party rights, including giving notice of this and any other Order affecting specific property. The following paragraphs shall apply to any ancillary proceeding conducted in this matter:
(1) Pursuant to 18 U.S.C. § 1963(l)(1), the United States Marshal shall forthwith publish once in a newspaper of general circulation notice of this order and any other Order affecting the Forfeitable Marks, and notice that any person, other than the defendant, having or claiming a legal interest in the property must file a petition with the Court within thirty (30) days of the publication of notice or receipt of actual notice, whichever is earlier. The United States shall also, to the extent practicable, provide written notice to any person known to have an alleged interest in the Forfeitable Property.
(2) Any person, other than defendant CAVAZOS, asserting a legal interest in the Forfeitable Marks may, within thirty days of the publication of notice or receipt of notice, whichever is earlier, petition the court for a hearing without a jury to adjudicate the validity of his alleged interest in the property, and for an amendment of the order of forfeiture, pursuant to 18 U.S.C. § 1963(l)(2).
(3) Any petition filed by a third party asserting an interest in the Forfeitable Marks shall be signed by the petitioner under penalty of perjury and shall set forth the nature and extent of the petitioner’s right, title, or interest in such property, the time and circumstances of the petitioner’s acquisition of the right, title or interest in the property, any additional facts supporting the petitioner’s claim, and the relief sought. 18 U.S.C. § 1963(l()(3).
(4) The United States shall have clear title to the Forfeitable Marks following the Court’s disposition of all third party interests or, if no petitions are filed, following the expiration of the period provided in 18 U.S.C. § 1963(l)(2) for the filing of third party petitions.
D. Pursuant to Fed. R. Crim. P. 32.2(b)(3) and defendant CAVAZOS’s consent, this Preliminary Order of Forfeiture shall become final as to defendant RUBEN CAVAZOS upon entry and shall be made part of his sentence and included in his judgment.
E. The Court shall retain jurisdiction to enforce this Order, and to amend it as necessary, pursuant to Fed. R. Crim. P. 32.2(e).