Sturgis Rally Trademark War Is Raging

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.

 

2- Letter From SMRI Dated July 15, 2011.

 

 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.

Zipper's

18 Responses to “Sturgis Rally Trademark War Is Raging”


  1. 1 Boss Hawg Jul 17th, 2011 at 9:39 am

    Smoke and mirrors by an apparent greed to suppress others through legal posturing with who has the biggest stack of…shit….that being SMRi. I am all for Brian Neimann from Rushmore Photos & Gifts if anybody is to prevail.

    To enlighten those that do not know….think about this and the following Five Reasons to Incorporate A Nonprofit Association. In my opinion, here are five circumstances that made it worthwhile for SMR’i to incorporate their Non-Profit…haha

    Their Association May Make Profits From Its Activities. If SMRi makes a profit from its activities, becoming a nonprofit corporation yields great benefits: As long as the money it makes is related to charitable activities, SMRi as a nonprofit corporation won’t pay income tax on it.

    They May Want to Apply for Public or Private Grant Money. Without tax-exempt status, SMRi group is unlikely to qualify for many public and private grants. While they can form a nonprofit, tax-exempt association rather than a corporation, qualifying for a tax exemption as an association is harder — it requires preparing and adopting a complicated set of organizational papers and operating rules. Further, it’s generally easier to get the IRS to approve a tax exemption for a nonprofit corporation.

    They May Want to Solicit Tax-Deductible Contributions. If SMRi is a tax-exempt nonprofit corporation, donors can deduct their gifts to SMRi group on their federal and state tax income returns.

    They May Want Protection From Personal Liability for the Group’s Activities. If SMRi group finds itself the target of a lawsuit, which it has, incorporation can provide welcome peace of mind. Nonprofit corporations can be sued — but their members and directors are generally protected from personal liability, meaning that their own money, houses, cars, or other property isn’t at risk. .

    Additional Benefits of Organizing a Nonprofit. The major one is nonprofits can take advantage of other benefits such as Property tax exemptions. In addition to an exemption from income taxes, nonprofits are usually exempt from paying property taxes on real estate and other property…yes “other property” which is called a “welfare exemption.”

    Their Advocacy Efforts Might Provoke Legal Quarrels. Although nonprofits may engage only in very limited political advocacy (unless they elect to follow special federal lobbying rules), advocacy efforts may occasionally draw a nonprofit into an unwanted lawsuit. Incorporating can support directors and officers in defending the lawsuits and protect them from personal liability.

    Nuff said…

    Boss Hawg

  2. 2 Brandon Jul 17th, 2011 at 9:54 am

    Not for profit corporation can also pay salaries….and contract individuals and corporations for work…Who is getting a profit from this situation. Is one of the members Hot Leathers? Well…Nobody should ever get a trademark on Sturgis Rally or Black Hills Rally. It was created by bikers not by these opportunists clowns at SMRI. We don’t need them to do charity work. Good charity work is done by independent people and benefit locals. For SMRI, charity is a mask to hide their commercial pursuit.

  3. 3 Tony Rex Jul 17th, 2011 at 10:00 am

    It’s because of these people that bikers no more attend rallies. Shame on SMRI. Hope that a judge void these abusive trademarks when he will discover how they were obtained. Don’t buy any licensed Sturgis Rally merchandise when you are in South Dakota.

  4. 4 William Andrews Jul 17th, 2011 at 10:08 am

    Trying to understand. The Sturgis Chamber Of Commerce was unable to get the trademark in 2001, but sells the rights to SMRI and SMRI gets the trademark? Something very wrong somewhere. If defendants have the necessary financial resources to fight in court they are going to prevail. No doubt for me.

  5. 5 Sturgis Zoo Jul 17th, 2011 at 10:15 am

    Was there exchange of money between the Sturgis Chamber Of Commerce or Marlin Martin? How can the Sturgis chamber can sell an intellectual property it doesn’own? Fraud?

  6. 6 just my opinion Jul 17th, 2011 at 1:38 pm

    There obviously is a Trademark or there would be nothing to fight over. And if there is a Trademark then someone is not being honest as to that fact. So if a person will stretch the truth on that fact what else are they not being honest about?
    I would be willing to bet that when or if this gets to court that both sides will get a small victory.
    The rally folks will likely retain all rights as to the Trademark as being used in connection to the rally and motorcycle related events and merchandise and the other side will likely be able to use the word Sturgis on NON Motorcycle products.
    Here is a question for you guys.
    Why would someone that sells photos and gift care so much about a motorcycle rally Trademark? Because he knows that attaching that label or name ads value to his products.

    Some of you have stated we should not buy rally products because of this fight and that this meaning
    ” greedy people ” is what is wrong with the motorcycle industry. well how about this. Why don’t we back our fellow motorcycle riders instead of just believing some guy who owns a Photo’s and gifts store who is so upset because he can’t ride of the backs of those that own the Trademark that he is feeding off of.
    The thing that some of you need to remember is that people will say anything to get what they want and we don’t know who is right on this issue so let’s not jump to the defense of someone that does not even have anything to do with our world of motorcycles until we get the facts.
    I don’t know who is right or wrong in this case but I do know that there must be a Trademark or there would be no fight and if this photo shop owner was not truthful about that how can we believe anything he say’s?

  7. 7 Grayhawk Jul 17th, 2011 at 2:08 pm

    Ok my other comment on this same subject on one of its previous blog listings was a bit of territorial wishful thinking and maybe a touch of humor.

    But have the city fathers missed or turned a blind eye to something here; is not the real money and perceived advantages in their, most if not all of the board members of SMRI having said rights, own personal business entities also associated with and conducting commercial related business during the rally and if so can one not surmize what better way to possibly enhance ones own personal business and interest gains than to control the licensing and possible selection of whom ever else wants to commercialize/compete in this event through it’s namesake.

    So does that maybe translate into a point the non-profit figurehead corp is/maybe irrelevent in a sense? Do not the licensing fees only go to and thru the SMRI non profit 501c which one might maybe just consider mere pittence in the big picture?

    The possible gains, business advantages, and control of the almighty dollar shares and distribution of same and as such is that not an unhealthy and maybe questionably posture or are they all fair and equitable people just wanting to be a part of and do their part in helping out?.

    Just asking. City Fathers

  8. 8 Donny Jul 17th, 2011 at 2:23 pm

    “Just My Opinion” Rushmore photos & Gifts (confusing name) has always been a big tee-shirts vendor in Sturgis. Under which criteria a license Sturgis Rally is given or refused to a vendor? Get rid of this Jerry Berkowitz in the board. He is the owner of Hot Leathers and he is the guy who is deciding who can or can’t sell official rally merchandise? A good way to eleminate his competitors. How many times charities have been used to cover and hide financial interests? All this smell bad.

  9. 9 Kelley Jul 17th, 2011 at 2:47 pm

    If there is such a fight it can only be because of huge financial interests. Helping the community can be done many other ways. You don’t need a trademark to do this. The trademark should not exist, will always be a source of abuse by those who own it. Apparently, it already started with an evident conflict of interest with Hot Leathers being both a vendor and giving licenses to who he wants.

  10. 10 BH Mama Jul 18th, 2011 at 10:02 am

    Rushmore Photo & Gifts is not a store front at all. It is in fact, a family owned wholesale business that have been around longer than the rally. I know for a fact, that selling Sturgis merchandise is a small part of what they do and always has been. This is a case of having done business in an area for many, many years and then all of the sudden someone comes along and takes that opportunity away under fraudulent means. I would stand up and fight too. The facts are being stated by the Niemann Family and I pray they will prevail. This may be being fought out in this blog Cyril, but come on, isn’t that something you’re allowing? This holds an interest for many and I appreciate you giving me the opportunity to view the actual documents and stay aware as this situation updates. Fair competition benefits us, the end consumer, so we should all take an interest.

  11. 11 Olive Oil Jul 18th, 2011 at 11:45 am

    How about digging my brick up off of Main Street. Can’t say I will ever be back. It is all greed and money while the rally goers get ripped off worse and worse each year. Lots of other places to ride. Best thing about Sturgis is the ride there and the ride out of there.

  12. 12 ragingbull Jul 18th, 2011 at 11:54 am

    Legal trademarks create royalties which will ultimately bump up the price of everything relating to the rally so we the consumer end up paying more money for goods – I think they’re all a bunch of greedy opportunists – good biz for lawyers though

  13. 13 Buffalo Head Jul 18th, 2011 at 12:39 pm

    Sturgis trademark is just another official racket by a group of greedy businessmen. I live near Spearfish. Local merchants don’t seem to see SMRI as a good thing for the community.

  14. 14 Darryl Jul 18th, 2011 at 3:33 pm

    Like many of you, I’ve been following this story. Unlike many of you though, I’ve been more on the side of Sturgis having a legal right to have their name trademarked. I still believe that. I think by tradmarking the name, that a great deal of good could be done and money used from such licensing of the trademark could be used for good purposes, (rally promotion, benefits, etc.)

    This weeks posts I still believe all of the above. The city of Sturgis, through either itself or it’s chamber of commerce, should be able to control the use of the name. Howevier, with the postings this week I see some major issues.

    1.) It is STILL unclear to me, how much of the licensing fee goes to Berkowitz and a few others. Sure the company is non-profit, but that doesn’t mean that “admin” fees are paid out to it’s directors and such. I’d like to know for sure that no licensing fees end up in any individual’s pockets.

    2.) Lets for a minute ASSUME that Berkowitz and none of the others get any money from the licensing fees. That 100% of the money winds up in the hands of the city or the Chamber and that they use it all for the betterment of the rally. I’m still not comfortable with the fact that Berkowitz gets to decide what products are going to be “officially” licensed. Even if he doesn’t get anything off the licensing fee, if he controls what products are licensed and only licensed products can be sold, then in effect he’ll get to monopolize what products are sold at the rally.

    I’m not saying Berkowitz or the SMRI board are bad or that they have bad intentions, But if they are truly only working for the Chamber or Commerce or a City of Sturgis board of some kind, then those entities need to step in and say that having the trademark contolled by SMRI is not the way to go. Make it more public so that there are fewer questions and there aren’t even any hints of inappropriateness. Quite frankly, this whole issue is putting a bad taste in peoples mouths and that is certainly not good for the rally.

  15. 15 Woody Jul 18th, 2011 at 9:57 pm

    Short and sweet-are the monies earned from the trademarks going to those who do the work or operating the rally and those who live in the community that host it, or is some going elsewhere? There’s a lot of hard work to put on this or any rally, and a lot of good AND bad side effects to the community at large. It makes complete sense for these folks to trademark it and use proceeds from the rights to reimburse all those who work so hard to make it happen. If other folks are making money off it just because it’s there to be had-shame on them.

  16. 16 rallyvendor Aug 12th, 2011 at 7:46 pm

    If Jerry from Hot Leathers is involved, you can be sure its for the dollars to be made. The way its set up he will be able to sell many many more products than he would have before the slimey deal was made. Well I guess its the American way. I would rather buy from China than from Hot Leather, oh I forgot thats where most of their stuff comes from…

  1. 1 Sturgis Rally Trademark War Is Raging – No Relief in Sight | ProRidersMarketing Pingback on Jul 18th, 2011 at 10:10 am
  2. 2 Legal troubles in Sturgis | Cartoon Thunder Pingback on Jul 28th, 2011 at 10:28 am
Comments are currently closed.
Crusher
S&S
S&S
Barnett
S&S

Subscribe

Socialize

Facebook Google+ Twitter