STURGIS RALLY TRADEMARK OFFICIALLY STRUCK DOWN!!!
Love IT’S ABOUT TIME! Who owns the rights to “Sturgis”? After more than a decade of battling, there is finally a firm answer to this question—we all own it because it is in the public domain. This means that any business planning to use the words “Sturgis,” “Sturgis Rally & Races” or “Sturgis Motorcycle Rally” may do so without any fear of getting themselves into legal hot water. Sturgis Motorcycle Rally, Inc.(SMRI) may no longer attempt to claim ownership of the “Sturgis,” “Sturgis Motorcycle Rally” or “Sturgis Rally & Races” trademarks according to an order issued by Federal Judge Jeffrey Viken. A ruling on February 14, 2019 from Judge Jeffrey Viken in the US District Court, District of South Dakota, Western Division stated: “The record does not support a finding that SMRI owns, produces, or operates the rally, or does anything else that might allow it to acquire ownership over the rally itself or its intellectual property. The record indicates to the contrary that the rally is a pluralistic endeavor.” So what does that mean exactly? And why is it a good thing? Let’s look at a piece of recent history to put this into perspective. In the late 1970s and early ’80s, residents in the City of Sturgis brought to vote a referendum to kill the Sturgis Rally. The City of Sturgis kicked bikers out of city park, and city politicians stated it was time to get them out of town. The rally moved to campgrounds and establishments outside of city limits, and for the next 20 years, the Sturgis Rally was promoted by those private businesses. It wasn’t until nearly two decades later that the City of Sturgis Chamber of Commerce attempted to falsely claim ownership of Sturgis, Sturgis Rally and Sturgis Motorcycle Rally, alleging it had not been used or promoted by anyone other than the City of Sturgis Chamber of Commerce. The recent court ruling nullifies that attempt for what it was, a grab. You never know which way a government politician is going to turn, or what they will choose to support or kill. This ruling helps to ensure that if something ever happened again like what did in the early ’80s, the rally can move and prosper anywhere outside of town just like it did in the early ’80s. A city only controls what happens within the city. Biker passion trumps government intervention when it comes to keeping a motorcycle rally tradition alive. And that’s why this court ruling is important to the longevity of the Sturgis Rally’s existence. The poster shown above is an example of the word “Sturgis” being used in the public domain to promote the rally more than two decades prior to the attempted trademark claim. At the time this poster was produced and distributed, the City of Sturgis was actively trying to keep bikers out of town. What else does this ruling mean? The court order is consistent with the 8th Circuit Court ruling from February 22, 2019, which stated that the STURGIS mark and many others are invalid. This new order takes things a step further by ordering that trademark cancellations be sent to the United States Patent and Trademark Office. A November 2, 2018 ruling had previously stated that SMRI, in fact, did not own or have valid trademark rights to “Sturgis,” “Sturgis Rally & Races” or “Sturgis Motorcycle Rally.” The summary stated, “SMRI and its witnesses were … not credible as a matter of law when they told the jury that it and its predecessors-in-interest had been the substantially exclusive users of the word.” It went on to state, “…a trademark owner cannot establish that its mark is valid simply by getting its officials and agents to say that it is. Businesses that once feared attempted enforcement of the publicly available words by SMRI can now find comfort knowing that the trademarks have been ordered to officially be wiped from the books. SMRI can longer attempt to enforce ownership rights over the names “Sturgis,” “Sturgis Motorcycle Rally” or “Sturgis Rally & Races”.. The ruling by the US Eighth Circuit Court of Appeals has brought major vindication to Rushmore Photo & Gifts (RPG) and the Niemann family who have been fighting hard to defend this stance against Sturgis Motorcycle Rally, Inc. (SMRI). Rushmore Photo & Gifts, Inc., owned by the Niemanns, had long produced souvenir items containing the words “Sturgis,” “Sturgis Rally & Races” and “Sturgis Motorcycle Rally.” They had always known these terms were public domain, and they never strayed from that belief, even after SMRI registered the mark “Sturgis” (long after it had been used by others in public domain), began a licensing program for its use and slapped RPG with a trademark infringement lawsuit. According to a press release issued by RPG April 3, 2019, “Until the Niemann’s and Rushmore Photo & Gifts prevailed at the Eighth Circuit, a South Dakota district court had in place a permanent injunction on the use of [Sturgis] marks, which ultimately represented hundreds of thousands of dollars in lost business for Rushmore Photo & Gifts and its owners.” As Judge Viken stated in his February 14, 2019 ruling, “The terms STURGIS, STURGIS RALLY & RACES, and STURGIS MOTORCYCLE RALLY when used by the defendants, or by anyone else for that matter, do not infringe on SMRI’s marks.” Judge Jeffrey Viken in the US District Court, District of South Dakota, Western Division Sturgis Court Case PDF Download PDF File Here Trademark Court Case Download PDF File Here Love
NO STATE TRADEMARK FOR the NAME STURGIS!!…..
Love SOUTH DAKOTA Secretary of State Gant reminds trademark applicants about what cannot be trademarked. This is in reponse to the tremendous reaction caused by certain groups who lay claim to the name Sturgis that are trying to prevent others from using the name Sturgis on products they are selling. Buck Lovell….. Secretary of State Jason Gant noted today that the public should be aware that South Dakota Law places certain restrictions on trademarks, and those seeking to trademark their name for exclusive use need not apply. “South Dakota law does not allow persons to simply trademark a name or a location to deny its use to others. Any trademark registration with a name or location can only be used in connection with additionally descriptive terms distinctive of the applicant’s goods or services,” Gant said. “In other words, I couldn’t trademark the name “Jason Gant” in South Dakota, but I could trademark “Jason Gant Widgets.” “The same goes for geographically descriptive terms such as “Black Hills,” or “Spearfish.” In the past, based on state law, our office has denied such requests based on SDCL 37-6-10,” Gant said. “The key for trademark applicants is that the requirement for a trademark is that a term’s use must be distinctive. You can protect the identity and distinctiveness of your product, but you can’t deny someone the use of their name, just because they might have the same name.” Controversies over protecting names have arisen recently due to a group in Sturgis filing for federal trademark protection for “Sturgis,” and “Black Hills” and a state prison inmate suing actor Mike Rowe because they share the same name. Gant noted, “In the case of trademarking “Sturgis” and “Black Hills,” this only could have taken place at the federal level, because my office has and will continue to reject similar applications, based on 37-6-10. Unfortunately, the parties involved are left to fight that battle in federal court.” “In the case of South Dakota’s Mike Rowe bringing suit against Mike Rowe, the narrator of The Deadliest Catch, for virtue of having the same name, everyone has their right to have their day in court. However, anyone attempting to trademark a personal name for their own exclusive use would find their application rejected in South Dakota.” Main Street Sturgis in the winter…..where are the bikers? Love
