At a little bit more than 2 weeks from the start of the 71th edition of the Sturgis (or Black Hills) Rally, both sides continue to fight over the STURGIS RALLY and other trademarks associated with the motorcycle event. On one side the SMRI (Sturgis Motorcycle Rally Inc.), a not for profit organization, requesting a fee from vendors for use of the name STURGIS RALLY and other trademarks on all merchandise, threatening or suing opponents violating its intellectual property acquired February 22, 2011 from the United States Patent & Trademark Office (USPTO) On the other side, a group led by the Neiman family of Rushmore Photos & Gifts, alleging that the trademark(s) can’t be enforced because SMRI made the misrepresentation of “substantially exclusive and continuous use” of the term Sturgis as a mark for 5 years before the filing of the claim, knowingly and with the intent to defraud the US Patent & Trademark Office.
Regarding this conflict, it seems that both parties enjoy using my Blog to express their multiple point of views. Because of the legal aspect and not knowing all the facts, I limit myself to reproducing the documents spontaneously sent to me by both sides. If you are interested by this issue, the 2 following documents contain interesting information to form your judgment. At the end you will read the answers that Brian Neiman made to me when I asked for a couple of clarifications.
1- Letter Dated 2001 From Sturgis Chamber Of Commerce Applying for Sturgis and Black Hills Rally.
3- Brian Neimann from Rushmore Photos & Gifts answering my questions.
1- Cyril Huze. Why did the Chamber Of Commerce filed this document in 2001. Brian Niemann. They filed it because of the opposition from Black Hills Harley Davidson, Good Sports/Hot Leathers, and Sturgis Bike Week. They were about to lose the battle if they could not come up with a valid reason to own Sturgis.
2- Cyril Huze. Was a trademark given to the Chamber Of Commerce? Brian Niemann. It was never obtained by the Sturgis Chamber Of commerce. They fought the battle and when they were about to go bankrupt, Jim Burgess (Black Hills Harley Davidson), and Jerry Berkowitz (Good Sports, Inc./Hot Leather) joined with Dean Kinney (Home Slice, Load American Roadhous) and John Johnson (First Interstate Bank) created SMRI that took the intellectual Property from the Chamber and took over the registrations of “Sturgis” and “Black Hills”. Then Jim and Jerry with Sturgis Bike Week going out of business pulled their opposition to “Sturgis” and “Black Hills” resulting in them being issued to SMRI, now ran by Dean, Jerry, Jim, and John.
3- Cyril Huze. If the trademark was not given to the Sturgis Chamber Of Commerce, it could not be enforced. Right? Brian Neiman. Even though the trademark was not ever issued to the Sturgis Chamber, Dean Kinney and John Johnson decided to have the Chamber sue Sturgis, Kentucky and a rally contained within for a children’s Charity. SMRI settled this battle after they took ownership by crushing the charity because they needed to get rid of the bad press.
4- Cyril Huze. Why did you tell me (sending me a copy of the 2001 trademark request by the Sturgis Chamber) “Here is the disputed Document that was used fraudulently to obtain “STURGIS RALLY” and “BLACK HILLS RALLY” trademarks”? Please, explain. Brian Niemann. My public statement is that SMRI obtained its trademarks by making a sworn statement to the U.S. Trademark office that STURGIS was exclusively used by the Sturgis Chamber of Commerce from 1987-2001. It’s a lie. (note from Cyril: SMRI states that such statement was never made by SMRI’s predecessor to the U.S.P.T.O)
Response from Dean Kinney of SMRi
The Chamber historically owned the intellectual property and had the sponsorship and promotion trail back to the origin of the event in 1938. Basically, the Gypsies transferred management over to the Black Hills Motorcycle Classic Board in the 70’s and in 1984 (taking this off the top of my head) that board made a formal request to become a part of the Sturgis Chamber… that is when the Chamber inherited the historical rights. They had several common law brands as well as the federal registration of the Sturgis logo, Sturgis Bike Week and Take the Ride to Sturgis and the federal applications for STURGIS and BLACK HILLS. Ultimately, they transferred all of these rights to SMRi and earlier this year the STURGIS and BLACK HILLS marks registered.