On April 6th, I reported that the STURGIS® Word Mark in connection with Sturgis® Rally goods and services was now protected by a Federal Trademark Registration. At the time, board member of Sturgis Motorcycle Rally Inc. (SMRI) and longtime Sturgis-area businessman John E. Johnson stated that it was “an exciting development for the future protection, promotion and long-term health of the Sturgis® Motorcycle Rally, and that this Federal Trademark “also helps to further solidify the future of charitable giving offered from several organizations around the Sturgis area.” Practically, it meant that distributors and retailers of Sturgis® Rally-related merchandise would be now obliged to purchache authorized and officially licensed STURGIS® products simply by sourcing through one of the licensees or official vendors listed at Sturgis Products. (SMRI licensing agent is Lisa Weyer,at 605.347.5336)
Sturgis Motorcycle Rally Inc. made clear that it would sue all those who infringe its intellectual property. One of them going on in U.S. District Court of South Dakota is against Rushmore Photo and Gifts and its owners. As a matter of fact, this company is much more than a gift shop, it is a family-owned wholesale distributor that began its operations in 1937 (before the Sturgis Rally even existed), in fact the largest of its kind in the Midwest Region. It’s a service-based company involved in the production and wholesale distribution of Postcards/Rack Cards, Glassware, Keychains, Magnets, Books, Calendars, Headwear, Collectible Pins / Patches, Apparel, Novelties, and other souvenir related products.
The lawsuit by Sturgis Motorcycle Rally alleges that Rushmore Photo and Gift has sought to register “Officially Licensed Sturgis” with the U.S. Patent and Trademark Office, but that the application is still pending, and consequently can’t use the following claims and terms: .Officially Licensed Sturgis Products, Legendary Sturgis, Licensed Sturgis, Authentic Sturgis, Sturgis Authentic Apparel, The Only True Original, Oldest-Biggest-Best, Sturgis Motor Classic, SMC, Sturgis, and Sturgis 71st Annual Motor Classic. The lawsuit has also for objective to prevent the company to use the internet domain names SturgisRallyOnline.com, Legendary-Sturgis.com, LicensedSturgis.com, AuthenticSturgis.com, SturgisMotorClassic.com, SturgisCentral.com, Official-Sturgis.com. Sturgis Motorcycle Rally claims trademark infringement, deceptive advertising, unfair competition, dilution of the Sturgis trademark, the barring of sale of all merchandise concerned, the interdiction to use the domain names afro-mentioned, and seeks for monetary damages.
A few days ago I have been contacted by Brian Niemann, one of the owners of Rushmore Photo & Gift. He told me by email that SMRI has demanded his company rights and domain names to be transferred to them free of charge despite the fact that these rights and domain name existed before SMRI got a Federal trademark on the Sturgis Rally brand. He also told me that his company and co-owners (Brian, Carol, Paul Niemann) were filing for an Answer and Counterclaims in federal court and that I will get immediately a copy. I just received it. All those involved or can be involved in a dispute regarding the fair use of the words Motorcycle Rally for profit should be interested to read it. Just click on Answer and Counterclaims