[E-trademarks] Proud Boys trademark

Fri Feb 7 19:29:05 UTC 2025

Thanks, Ted, for answering my question before I had asked it. Lots of simultaneous postings along the same line today!

bob

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Davis, Ted via E-trademarks
Sent: Friday, February 7, 2025 11:22 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Davis, Ted <TDavis at ktslaw.com>
Subject: Re: [E-trademarks] Proud Boys trademark

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          Pam’s correct: Burgess v. Gilman, 475 F. Supp. 2d 1051 (D. Nev. 2007), is the opinion arising the federal government’s seizure of the MUSTANG RANCH marks for legal brothel services to satisfy the owner’s payroll tax obligations. Not surprisingly, the government didn’t resume the marks’ use itself and apparently didn’t intend to do so. Instead, it ultimately auctioned them off to buyers who successfully fended off abandonment- and assignment-in-gross-based attacks on the marks’ validity. Although it’s difficult as a factual proposition to imagine it doing so, the church here might well either take the same course of action or license the marks’ use to another party.

          In United States v. Mongol Nation, 370 F. Supp. 3d 1090 (C.D. Cal. 2019), however, the court held that the seizure of marks owned by a motorcycle gang in the context of a criminal RICO prosecution constituted excessive punishment in violation of the Eighth Amendment.

[Kilpatrick Townsend & Stockton LLP]
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Pamela Chestek via E-trademarks
Sent: Friday, February 7, 2025 2:09 PM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>
Cc: Pamela Chestek <pamela at chesteklegal.com<mailto:pamela at chesteklegal.com>>
Subject: Re: [E-trademarks] Proud Boys trademark

This isn't particularly uncommon; the federal government owned the registration for a brothel for awhile (MUSTANG RANCH) and an outlaw motorcycle gang (MONGOLS). If memory serves the MUSTANG RANCH registration was later challenged but held not

This isn't particularly uncommon; the federal government owned the registration for a brothel for awhile (MUSTANG RANCH) and an outlaw motorcycle gang (MONGOLS). If memory serves the MUSTANG RANCH registration was later challenged but held not abandoned because the government had an excuse for non-use, it was trying to decide how to dispose of it.

It's not the assignment that's invalid; that's a court-ordered transfer of an asset. The question is what the new owner does with it afterwards to maintain (or perfect) the validity. The IDs don't mention anything about being a racist organization or fomenting riots, so a church could easily begin offering the services described in the applications.

Pam
Pamela S. Chestek
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On 2/7/2025 9:36 AM, Crane, Susan via E-trademarks wrote:
Been wondering this as well.  The decision is out of the DC Superior Court, so the judge may not really understand trademark law and the implications of the decision.

Susan L. Crane
Group Vice President, Legal
Intellectual Property, Brands & Marketing

Wyndham Hotels & Resorts, Inc.
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Susan.Crane at wyndham.com<mailto:Susan.Crane at wyndham.com>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com><mailto:e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Miriam Richter, Esq. via E-trademarks
Sent: Friday, February 7, 2025 12:29 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Cc: Miriam Richter, Esq. <mrichter at richtertrademarks.com><mailto:mrichter at richtertrademarks.com>
Subject: [E-trademarks] Proud Boys trademark

All, I’ve had a crazy week so it is possible that I’m missing something really basic here because my brain is fried, but, how is an historic Black church in DC going to own the trademark? How will they show use? I found four pending

All,

I’ve had a crazy week so it is possible that I’m missing something really basic here because my brain is fried, but, how is an historic Black church in DC going to own the trademark? How will they show use? I found four pending applications and no registrations. All four are owned by different individuals/companies and all but one are 1b.

How can the trademark PROUD BOYS indicate a Black church as the source of the goods/services being provided? Is this a common law trademark thing?

Does anyone have access to the opinion?

Best,
Miriam

Miriam Richter, Attorney at Law, P.L.
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