Lawsuit And Counter Lawsuit About Sturgis Rally Trademark Use (Part 1)

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

Zipper's

16 Responses to “Lawsuit And Counter Lawsuit About Sturgis Rally Trademark Use (Part 1)”


  1. 1 Jeremy Jul 8th, 2011 at 12:50 pm

    These people at Sturgis Rally Inc. don’t fight to protect the rally, but for self-interest and money. The politics of Sturgis, a lot of BS.

  2. 2 Shifter Jul 8th, 2011 at 12:55 pm

    The Sturgis Rally belongs to all bikers. I wish that SMRI loses their lawsuits against all using the words Sturgis Rally. They protect the name of Sturgis from what and from who exactly? They just want to keep it for themselves to use it for profit. As far as I know, the strugis rally is a generic expression. Sooner or later the trademark will be tossed.

  3. 3 Ken Sanders Jul 8th, 2011 at 1:01 pm

    If I buy a Sturgis tee shirt in Sturgis it will not be because it’s the official one. I will buy the one looking good to me. This group of local nobody should compete with private parties on the quality of the design. Instead, they do ugly shit , only adding the year of the rally. I will boycott all official merchandise as retaliation in defense to those who do honest business during the Black Hills event.

  4. 4 XH-D Rider Jul 8th, 2011 at 1:11 pm

    I wish Cyril you would of told us really owns the sturgis. What company or who there are.
    I hope you get this and answer it.
    Thanks

  5. 5 bigitch Jul 8th, 2011 at 2:25 pm

    i hear they are asking all parents of children being born in the area to pay for the right to have Sturgis on their birth certificate

  6. 6 Bruce Keizer Jul 8th, 2011 at 2:55 pm

    Many federal trademarks are easy to acquire, until they fall when challenged. Is SMRI guilty of “racketeering” charges on all Sturgis merchants?

  7. 7 izadore007 Jul 8th, 2011 at 5:56 pm

    Are either of these Litigants using Seniors. and Juniors. Lawyers? Ha, ho, hummmmmmmmmmmmm!

  8. 8 kilometr Jul 8th, 2011 at 7:25 pm

    The Sturgis Rally belongs to all bikers.

  9. 9 WAKE UP! Jul 8th, 2011 at 11:00 pm

    SMRI desires to own the Sturgis Rally and its marks similar to a controlled venue such as the Daytona International Speedway whereas the venue controls the gate, food and beverages sales as well as licensing of merchandise and all other aspects of the revenue stream. The SMRI board wants you to believe that they have the ability to do this, but the Sturgis Rally is not the Daytona International Speedway, it’s more like Marti Gras. Marti Gras is a collection of individual businesses, none of which control the overall event, rather compete in the open market to the benefit of the consumer.

    Under the shroud of shameless propaganda promoting that compliance with SMRI will lead to more funds coming back to improve the community of Sturgis and brainwashing those on a local basis who do not understand the ramifications to business such as Rushmore Photo & Gift and motorcycle industry businesses who count on the Sturgis Rally for their existence, SMRI is a consortium of greedy powerbrokers who threaten the very existence of the Sturgis Rally to line their a few select pockets. They are smart, they are powerful, they have money and they have the ability to spread propaganda similar to the 3rd Reich.

    Just answer this question. If the current greed mongers of SMRI were in front of Clarence “Pappy” Hoel trying to get him to join their consortium, do you think he would do it? The reality, simply stated is that if SMRI is interested in giving back to the community by enforcing its merchandising trademark rights, they should provide the public a record of all financial contributions they have made to the community of Sturgis through the sale of their merchandise before the start of the 2011 Sturgis Rally. None such document has ever been provided.

    The Sturgis Rally is a free and independent commercial market. Thank you SMRI for galvanizing all of us who are vested in the real health and sustainability of the event by giving us all a common enemy. The Sturgis Rally will continue to thrive and prosper at your expense and no matter how much money you have, or talented your attorneys are, you will never be able to realize your lifelong vision of greed, lies and propaganda.

    That is unless YOU stand by and let them get away with it! It’s time to wake up and rise to the challenge for the welfare of the Sturgis Rally. Our thoughts and payers to Paul, the staff and families of Rushmore Photo & Gifts.

  10. 10 Cyril Huze Jul 9th, 2011 at 4:01 pm

    XH-Rider. My information is the following: Documents of incorporation of Sturgis Rally Motorcycle Inc. show as main shareholders. 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 Walt Lumpkin Jul 10th, 2011 at 9:14 am

    The lawsuit against the Little SturgisRally in Kentucky pushed me over the edge.

  12. 12 Caz Jul 11th, 2011 at 10:58 am

    Isn’t this what Harley did to places using the word/term HOG – claimed it was a trademark and attackked businesses that had been using the name before HD formed its own H.O.G? Some independent shops stood up against HD and won…

    The Sturgis event was for many years a free biker party that many wantd to disassociate themselves from because of the wild partying and real bikers there now, it seems to me, that some corporation want to turn it into a theme park that you have to pay to get into… The reason it was great was because it didn’t conform – don’t let these guys turn it into something like Disneyland – Bikerworld?

    It was bad enough when HD built a bike called ‘The Sturgis’ for their weekend outlaw customers…

  13. 13 Caz Jul 11th, 2011 at 11:34 am

    I think people have to be careful about letting companies, corporations or whatever from taking over things that have come about from informal origins. Back in the 70s Sturgis was a free event that many would have disassociated themselves from because of the scale of partying and scooter trash who showed up. Now someone wants to own it!

    This happened when Harley trademarked the name HOG for its H.O.G organisation – suddenly the Motor Co unleashed its lawyers on small independent shops that had been using the word HOG (because of its slang reference to Harleys) for years before the H.O.G. was formed. C&L Hog Shop, Hog Farm, HOG Hollow etc. Some stood up to Harley and won.

    I don’t think anyone needs anyone to own Sturgis to make it into a biker theme park – Bikerworld or Bikerland – that bikers have to pay to get into otherwise cafes, bars and campsites that aren’t in the corporation’s favour may be closed, barred or whatever. It was bad enough when Harley built a big twin called a ‘Sturgis’ for its weekend outlaw customers…

    If anyone ‘owns’ Sturgis, it ought to be the Jackpine Gipsies – they started things but it wasn’t until the biker crowd started showing up in big numbers that the place became famous.

    Caz

  14. 14 TattooedinTexas Jul 12th, 2011 at 9:37 am

    This rally is becoming more and more political and financial than it has ever before. I personally know quite a few riders that will never go back to Sturgis. This city is money hungry and trying to get every possible dollar from riders that frequent this event. It’s becoming so freakin’ commercialized anymore. I, for one, don’t care if I ever go to Sturgis again. I know that if I do, I will make sure to personally look for non-registered, logo’ed…WHATEVER…from this rally. Blood suckers are who runs the rally now. With its $6.00 hotdogs and way overpriced everything else, this is no longer a destination for riders, its a fleecing of the bikers that go there, and its getting worse EVERY year. It’s all about how many dollars this city can ring out of the people that go there. So very very sad…

  15. 15 LiveInNOLA Sep 24th, 2011 at 4:33 pm

    Mardi GRAS-not Marti Gras.

  1. 1 Legal troubles in Sturgis | Cartoon Thunder Pingback on Jul 28th, 2011 at 10:29 am
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