Not surprisingly, as the Sturgis Rally got started on August 6, public relation campaigns were launched by both parties opposing each other about the legal right and stated benefits to have or not the Sturgis Motorcycle Rally and variations of the name registered as trademarks.
On one side, SMRI, owner of several of these trademarks since about 1 1/2 years, continues to argue that the development of a licensing program related to the trademarked “brand” maximizes the value of the intellectual property of the Sturgis® Motorcycle Rally(TM) and helps in allocating its revenue in the community to help fuel the local economy.On the other side, opponents led by Rushmore Photo & Gifts Inc.has taken legal action against SMRI arguing that “Sturgis”is the common name for the annual motorcycle rally that is held annually in and around Sturgis, and that according to common law is a generic name and can’t be a valid trademark. Nonetheless, Sturgis Motorcycle Rally, Inc. (“SMRI”) has claimed that it exclusively owns the name “Sturgis” as it relates to the rally, and last year SMRI sued Rushmore Photo & Gifts, Inc. (“Rushmore”) for trademark infringement over Rushmore‟s decades-long use of “Sturgis” on its rally merchandise. As a reference, last year a federal court in Florida held that the name “Daytona Beach Bike Week” was generic of describing an event and consequently could not be a valid trademark.
Regarding the legal process, Rushmore moved for dismissal based on fraud on the Trademark Office, citing extensive evidence that SMRI‟s predecessor-in-interest, the Sturgis Area Chamber of Commerce, defrauded the Trademark Office knowing that its use of the name “Sturgis” was not exclusive and that “Sturgis” primarily referred to the rally itself, not the Chamber. Although its response papers to Rushmore‟s dismissal motion were due on July 20th, Rushmore states that SMRI did not substantively respond. If you wish to know the facts, the law, and form a judgment about where lies public and bikers interest, evidence presented by both parties, summary judgment motion material are available for you to read at the United States District Court for the District of South Dakota‟s Website.
The Sturgis name litigation will culminate around May 2013 when a trademark judge will decide to cancel or to confirm the current trademarks held by SMRI. In Sturgis this year you could buy the “official” merchandise or many other “non-official” designs from a very large number of vendors. I am not aware and was not informed of any actions made by SMRI to shut down these vendors selling their own Sturgis and Black Hills merchandise.