Lawsuit And Counter Lawsuit About Sturgis Rally Trademark Use (Part 2)

(From 2 press releases received from Brian Niemann, co-owner of Rushmore Photo & Gifts and Aaron W. Davis, Partner at PATTERSON THUENTE CHRISTENSEN PEDERSEN, P.A)

On July 7, 2011, Rushmore Photo & Gifts, Inc. held a press conference in Rapid City, South Dakota announcing its intention to vigorously defend itself against recent allegations of trademark infringement made by Sturgis Motorcycle Rally, Inc. (SMRI). Indeed, the day before, Rushmore filed counterclaims in federal court seeking the cancellation of SMRI‘s registration for the name ―Sturgis based on fraud on the United States Patent & Trademark Office. Rushmore has also brought other counterclaims, including claims for damages for tortious interference and for false and fraudulent registration of a trademark.

Rushmore‘s counterclaims allege that during the process of obtaining the registration for ―Sturgis, SMRI‘s predecessor, the Sturgis Area Chamber of Commerce, swore under oath to the U.S. Patent & Trademark Office that it was the ―substantially exclusive‖ user of the name  – Sturgis from 1987 through 2001. Rushmore‘s attorney, Aaron Davis from Patterson Thuente IP, stated at the press conference, ―As anybody from Sturgis well knows, the Chamber of Commerce was not by any means the exclusive user and source of goods bearing the name  ̳Sturgis‘ ever, let alone from 1987 through 2001. According to Rushmore‘s claims, the Chamber‘s false statements to the Trademark Office allowed the ―Sturgis registration to issue, but they render the registration invalid and unenforceable.

Paul Niemann, co-owner of Rushmore, expressed significant concern for the future of the Motorcycle Rally if the fraudulently-obtained registration was allowed to survive, ―[SMRI‘s] chokehold on the Rally, with a potential tunnel vision of the future, will only serve to stagnate and deteriorate a vibrant and interesting biker Rally. Attorney Davis also emphasized that, Rushmore is not only defending themselves, but they are standing up to SMRI as a show of support to the Sturgis community as a whole and the Rally‘s many vendors, many of whom are small, family-owned businesses that have made their livings off of Sturgis‘ Rally merchandise for many, many years, and out of respect for the spirit of freedom that the Rally has historically embodied.

At the press conference, Niemann also announced the formation of a non-profit trade association – Concerned Citizens for Sturgis – which is dedicated to challenging the wrongfully-obtained registrations for not only Sturgis,but also for Black Hills which is also owned by SMRI. Until this assault was perpetrated by SMRI, we were content to go about our business allowing the free and open market to judge the content and success of products sold during the Rally. Based on their actions, the individuals that sit as the board of SMRI do not share that attitude. We fear that their ultimate goal, aside from their public image of philanthropy, is to control for their own gain a once open and free Sturgis Rally. Attorney Davis concluded, We will not back down. At the end of the day, we hope to prevent SMRI from ever again asserting their fraudulently-obtained rights‘ against anyone else.

Below the questions asked by the Defendant & Plaintiff Rushmore Photo & Gifts (I am unable to verify any of these statements )

14 Responses to “Lawsuit And Counter Lawsuit About Sturgis Rally Trademark Use (Part 2)”

  1. 1 Unkl Ian Jul 8th, 2011 at 6:44 pm

    The only thing surprising, is that it took this long.

  2. 2 nicker Jul 8th, 2011 at 7:51 pm

    Can’t wait to hear what Jeff has to say about this ….. 🙂


  3. 3 Boss Hawg Jul 8th, 2011 at 10:34 pm


    Me to…Hope he does and with the Black Hills part of the above!.

    Boss Hawg

  4. 4 10377586 Jul 9th, 2011 at 6:46 am

    Money will be the death of the rally, just give the greedy bastards a few more years and nobody will be able to afford to go.

  5. 5 Mr. Potts Jul 9th, 2011 at 8:52 am

    Remember when Sturgis was just a bunch of bikers getting together for some fun and beer. Now, it become just one big commercialized mess!

  6. 6 burnout Jul 9th, 2011 at 10:52 am

    Ridiculous! peace

  7. 7 Hawk Jul 9th, 2011 at 11:20 am

    Once again,it’s all about the money.

  8. 8 Jeff Nicklus Jul 9th, 2011 at 3:06 pm

    Nicker …. Boss,

    Please don’t get me started ….. I have way too much to do getting ready for for our trip to THE BLACK HILLS in general and Lead, South Dakota in particular for the Desperado Junction Expo in Lead. Let the greedy bastards fight it out amonug themeselves ,,,,, come on up and see us … we have $1.00 draft beer all day, every day!

    Over & Out,


    PS: Cyril will be at the Desperado Trailer on August 11 at 2:30 PM signing autographs …. stop by and say hello!


  9. 9 Drake Jul 9th, 2011 at 4:13 pm

    One of Sturgis Rally Motorcycle inc (SMRI) main shareholders is Jerry Berkowitz of Hot Leathers. Surprise, Hot Leathers is the Official Sturgis Merchandise vendor! Any further explanation anyone?

  10. 10 Cyril Huze Jul 9th, 2011 at 4:27 pm

    Sturgis Motorcycle Rally Inc (SMRI) Documents Of Incorporation dated March 31, 2010 show the main 4 shareholders being 1 Dean Kinney of Home slice. 2 Jerry Berkowitz of Hot Leathers and Good Sports 3 Jim Burgess Black Hills Harley-Davidson 4 John Johnson.

  11. 11 Road Rider Jul 10th, 2011 at 8:55 am

    Jerry Berkowitz is a liar and a greedy business man. The other thing they are going to get him on is price fixing. There are over 2 hours of recorded tapes with him talking about price fixing all t-shirts at the rally to be $14.95.

  12. 12 Darryl Jul 11th, 2011 at 10:27 am

    Once again everyone thinks that because someone is actually out after money, that they are evil.

    I have yet to see one thing in these reports that states where the money that SMRI gets goes to. Even the questions that Rushmore asks in their counterclaim contains a questions about where the funds go that SMRI collects. These are very valid questions. But lets let this run its course of action and find out where the money goes. If it goes to individuals, sure, then hang the bastards. If it is going to somehow help fund the cost of holding the rally, then I got no problem with that.

    Sturgis (and the surrounding communities) put on one hell of a rally. They welcome us and they realize the boost it brings to their economy. And everyone reading this knows damn well that back in the booming years of the industry there were fly by nighters up in the Black Hills and at every other rally selling merchandise and other things trying to make a buck and some were doing it with “Officially” licensed merchandise or if not, certainly they were using the name. I’m sure many of these people tried to skirt the sales taxes that they properly owed

    Face it people, someone has pay for the expense of the rally. I’m assuming the greatest amount of this expense comes from sales taxes generated and you can generate sales tax without having to officially license a product. But if SMRI is merely trying to get some more money that witll go back into the rally, I’m cool with that. If it goes to individuals, then maybe not. But I don’t think at this time anyone reading this knows the answers to this question yet. So let it play out people before you hang SMRO from the tallest oak tree you can find.

    One more thing, sorry, I’m not buying the “Rushmore” family business doing business since the 1930’s argument, not when it comes to the name Sturgis. Their company name is RUSHMORE Photo & GIfts, not STURGIS Photo & GIfts. You know damn wall that for years they sold Mt. Rushmore photos and gifts and they didn’t give a damn about Sturgis and didn’t phave any Sturgis merchandise till the rally made Sturgis famous. I will grant them that they were probably using the name STURGIS during the time period between 1987 & 2001 so they may have a valid claim to the name too, but come on people, use some common sense. I dont think anyone gave a damn about the name STURGIS until the rally made STURGIS famous.

    One final thing….. GO TO THE RALLY! WOOHOO! I’ll be there in 25 days and I know one thing is for sure about my money. It will be leaving my pockets going somewhere!

  13. 13 just my opinion Jul 11th, 2011 at 10:44 am

    I wonder how many of you that are bashing these guys are the same people that would no longer be able to sell your produces with the sturgis name attached? I also wonder why you might think those products will no longer sell if you take the sturgis name off of them? Could it be that your products are only selling because the sturgis name is attached? If the people that attend this rally buy T-shirts, coffee mugs and other items because of the design and not the name Sturgis, then why do you guys seem to be so upset about not being able to ride on the sturgis name? Why don’t you trademark your own name and see how many shirts or coffee cups your name will sell? The truth be told there are alot of people that feed off the Sturgis name and have for a long time. Is this trademark ligit? I don’t know, but what I do know is that we should not be bashing these guys for protecting their intellectual property. If this trademark is not ligit the courts will rule that way but until then these guys are required by law to protect that trademark or lose it. And I do know enough about these trademark issues to say that if this trademark was obtained by lieing as some of you have stated that will come out in court. But I have also seem many people try and make false claims in cases such as this so that they can benifit financally. So at this point none of us know the truth and bashing someone without knowing that truth is just ignorant.

  14. 14 Brian Berryhill aka Mr. Bitch Jul 11th, 2011 at 11:26 am

    I empathize with those who live in Sturgis and make it their home. Without the rally, would the town even exist?

    No one should “own” the name Sturgis. Can you imagine if someone in India, Pakistan or even in Europe somewhere suddenly owned the name New York? You may think that is a far-fetched idea, but is exactly what kind of door this opens. How would all those shop owners that live, pay taxes, lease stores feel if they had to purchase the right to make I love New York shirts? Could they continue to survive in New York? I live in Denver. If I want to print a shirt that represents me or my company, I can’t imagine someone telling me I have to pay them in order to put Denver, CO on it. How about the United States? Where does it stop?

    A VERY slippery slope my friends. I hope and pray they not only fight against these crooks but win and treat them like the crooks they are. It’s just another example of how our system is deteriorating. These kinds of Lawyers destroy law. I can’t say I blame them for trying. But how do they sleep at night? Do they really feel they are doing good? It has NOTHING to do with the greater good. It is about putting a LOT of power in the hands of very few(greedy and corrupt). Don’t we have enough of this in the world already? My guess is they don’t give a shit about the people in Sturgis or the greater good.

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Cyril Huze