Reacting to the feature I wrote on March 8th under the headline “Is Sturgis Motorcycle Rally Inc About To Lose All Its Sturgis Trademarks In 30 Days?” SMRI sent me a press release that I didn’t intend to run because empty of substance regarding what is the current recommendation of a Judge regarding the validity of the Sturgis trademarks. Instead, I reproduce below an excellent analysis of this trademarks battle written by Andrea Cook from the Milwaukee Journal.
“The Sturgis trademark case is a step closer to resolution after a federal judge recommended rejecting motions for dismissal and defined what he sees as the essential issue in the dispute. After six months of study, United States District Magistrate Judge John Simko of Sioux Falls filed his report and recommendation last week in the dispute between Sturgis Motorcycle Rally Incorporated, or SMRi, and Rushmore Photo & Gifts, a Rapid City wholesaler.
U.S. Chief District Judge Jeffrey Viken referred the case to him after both parties filed motions for a summary judgment that could have led to a dismissal of the case. Wal-Mart Stores, Inc., has joined Rushmore Photo & Gifts in challenging the validity of the Sturgis trademark after it was named as a defendant by SMRi.
Simko recommended that Viken deny all of SMRi’s motions for summary judgment to block the defendants’ challenge and a request for a delay in the case. Viken should also deny Rushmore Photo & Gifts’ request for a finding in its favor and that a jury needs to decide the case, Simko wrote. The Sioux Falls judge also stated his position on how to determine if the trademark can be legally enforced. ”If Sturgis means the source of products, then Sturgis is registrable because it identifies the source of products. If Sturgis means the event itself, then, Sturgis is not registrable because it does not identify the source of a product,” Simko said in the document filed March 6 in U.S. District Court.
Sturgis Motorcycle Rally, Inc., initiated the federal lawsuit in 2011 after it was allowed to register Sturgis, Sturgis Motorcycle Rally, Sturgis Rally & Races, Take the Ride to Sturgis and Sturgis Bike Week as patented trademarks. The organization claims that Rushmore Photo & Gifts and Wal-Mart have infringed on its trademarks by selling items that say “Sturgis” without getting the permission of SMRi. Both sides in the case said the judge’s recommendations were positive.
SMRi contends that Simko’s recommendation does not deny or even recommend denying the right for SMRi to continue to use the legal Sturgis trademarks it has been entrusted to protect. This follows two other rulings that were in favor of SMRi, including a judgement against an entity that billed itself as the “Little Sturgis Rally,” SMRi board member Ross Lamphere said Monday in a news release. ”Without the Sturgis motorcycle rally there could be no ‘Little Sturgis Rally.’ Without SMRi, organizers of that event would have profited from the work our local community members have done over decades, would have done so at no cost, and would have been under no obligation to make any contribution to the community of Sturgis and its people,” Lamphere said. In another case, just before the 2011 Sturgis motorcycle rally, a motion for injunctive relief was filed by Rushmore Photo & Gifts against SMRi that attempted to derail the group’s legal right to defend its federal trademarks. The organization was successful in having that injunction denied, which benefited the entire community of Sturgis, according to Dean Kinney, chairman of the SMRi board. “SMRi, through our volunteer board, is charged with promoting and protecting the Sturgis motorcycle rally, while providing a charitable return for the greater Sturgis area. Part of that responsibility is to protect the intellectual property of Sturgis Motorcycle Rally, Inc. from unauthorized use, infringement and counterfeit goods and services,” Kinney said in a news release.
Brian Niemann of Rushmore Photo & Gifts said Simko’s recommendations make it clear that the trademark is not valid. “The trademark is invalid. Basically the only thing that’s going to jury trial is whether or not there was fraud committed on the USPTP” Patent and Trademark Office, Niemann said. “The thing that is very nice, I guess, is that the judge basically saw what they have done.”
In a lengthy review of the case, Simko focused his recommendations on three issues:
• Licensee estoppel — a legal doctrine that protects the holder, or licensor, of a trademark from legal challenges by its licensees. In this case, SMRi claims that Rushmore Photo & Gifts is a licensee because of a decades old licensing agreement with the Sturgis Chamber of Commerce. Not so according to Simko because the 21-year-old agreement expired before SMRi registered Sturgis.
• Fraud on the Patent and Trademark Office that may or may not have been committed by the Chamber of Commerce when it declared in 2001 that it was the exclusive user of the Sturgis mark and that the buying public identified the Sturgis mark with the source of the Chamber’s rally products. Simko says a jury will have to decide if the Patent and Trademark Office was deliberately deceived.
• Does the Sturgis mark have a distinct secondary meaning, and if so, is that identity related to SMRi’s products or the motorcycle rally held each August in the Black Hills? “How a particular word has been used and how it has been understood by the public is a question of fact,” Simko writes. “The correct categorization of a given term is also a factual issue. Contrary to the representation plaintiff Sturgis (SMRI) made to the PTO about its exclusive use of Sturgis, the term was commonly used by hundreds of others during the time plaintiff represented its exclusive use of Sturgis,” Simko writes in his report.
Viken has the option of accepting or rejecting all of Simko’s recommendations. Both parties have 14 days to craft their reactions to the judge’s comments. “There’s a lot left on the table by this recommendation,” SMRi’s attorney, Jason Sneed of Davidson, N.C., told the Journal. Sneed intends to file SMRi’s objections to Simko’s recommendations within the allotted time but he declined to say what those objections will be.
A timeline of the Sturgis motorcycle rally outlining current trademark dispute
1964: City of Sturgis closes Main Street for the Sturgis motorcyle rally
1979: Sturgis Area Chamber of Commerce becomes involved in the rally.
1986: Tom Monohan creates “Black Hills Motor Classic Sturgis Rally & Races, Black Hills, S.D.” logo.
1990: Sturgis Chamber of Commerce rally committee evolves into the Black Hills Motor Classic Board.
1991: Nonprofit corporation created to address rally problems, pool resources and solicit rally sponsors.
1992: Black Hills Motor Classic renamed Sturgis Rally & Races.
1994: Sturgis Chamber applies to register Monohan logo with U.S. Patent and Trademark Office (PTO).
Jan., 2001: Sturgis Chamber files an intent-to-use trademark application to register “Sturgis” for rally related goods and services with PTO.
May, 2001: Patent and Trademark Office rejects Chamber’s application, noting that “Sturgis” is primarily geographically descriptive.
Nov., 2001: Then Chamber president Marlin Martin tells PTO that the buying public identifies the “Sturgis” mark with the source of the Sturgis Chamber’s rally products.
Oct., 2002: The PTO publishes the Sturgis Chamber’s registration for opposition. Opposition continues until 2010. Among the opponents are Black Hills Harley Davidson and Jerry Berkowitz of Good Sports.
March 31, 2010: Sturgis Chamber and others create Sturgis Motorcycle Rally, Inc. (SMRi). Organizers include Jerry Berkowitz, Jim Burgess of Black Hills Harley Davidson, John Johnson of First Interstate Bank and Dean Kinney of HomeSlice.
June 30, 2010: Sturgis Chamber assigns its rights to the “Sturgis” trademark to SMRi.
July 2, 2010: Good Sports and Black Hills Harley Davidson withdraw their opposition to the “Sturgis” registration.
Feb. 22, 2011: SMRi granted registration of the “Sturgis” mark.
June 22, 2011: SMRi sues Rushmore Photo and Gifts and others for trademark infringement and unfair competition.
July 6, 2011: Rushmore Photo and Gifts files a counterclaim against SMRi, asserting that the “Sturgis” trademark is invalid and unenforceable.
Aug. 5, 2011: U.S. District Judge Jeffrey Viken denies Rushmore Photo and Gifts’ motion for a temporary restraining order and preliminary injunction that would have allowed Rushmore Photo and Gifts and others to sell products carrying the word Sturgis.
April 24, 2012: SMRi names Wal-Mart Stores, Inc. as a defendant.
May 25, 2012: SMRi files first motion for summary judgment
June 15, 2012: Rushmore Photo and Gifts opposes SMRi’s motion for summary judgment.
June 26, 2012: Rushmore Photo and Gifts and Wal-Mart file a motion for summary judgment.
Aug. 27, 2012: Judge Viken issues an order stopping the discovery process and refers lawsuit to U.S. Magistrate John Simko of Sioux Falls.
Jan. 23, 2013: Patent and Trademark Office notified that a court action has been filed regarding a patent or trademark.
March 6, 2013: Simko files his report and recommendation.
March 25, 2013: Deadline for SMRi and Rushmore Photo and Gifts responses to Simko’s report.
(This timeline includes information found in federal court documents and U.S. Magistrate John Simko’s report and recommendation to U.S. Chief District Judge Jeffry Viken.)