Stacey Dogan, Mark Lemley, Jessica Litman, Mark McKenna, Jennifer Rothman, Jessica Silbey, and I filed an amicus in the Mongols trademark forfeiture case. We argue that, while trademark forfeiture is generally possible, any successful transfer would have to include goodwill. Even if the forfeited marks weren’t abandoned by nonuse or by transfer in gross, the current Mongols would retain substantial freedom to continue to identify themselves as Mongols.
Speaking only for myself, packing this all into 15 pages was a challenge, and sparked some questions about collective membership marks generally. I think the strongest argument against the forfeiture is that it is inherently impossible to include the goodwill of a collective membership mark in a forced transfer, because the goodwill is tied to the membership itself. I think a rational system could rule one way or another on this–in other areas, courts have been very forgiving about what counts as a transfer of goodwill. A First Amendment claim to self-identification perhaps strengthens the argument against forced transfer, but then to me raises the question whether the government has any business registering/enforcing collective membership marks for social associations in the first place. I am in full agreement with the underlying premise–Mongols shouldn’t be stopped from calling themselves Mongols just because they committed crimes–but I don’t actually see how the right to self-identify distinguishes these Mongols from a hypothetical breakaway group that thinks of itself as the true Mongols. In the past few decades, courts have used trademark rights to suppress the self-identification of breakaway groups, both political and religious–but is trademark law really sufficiently tailored for this job?
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