Sturgis Trademark Case Unfolds Further
Partying and good times abound during Bike Week, but behind the masses of bikes and the beauty of the Black Hills there is crack running right through the middle of Sturgis, South Dakota. Many of the happy visitors might be oblivious to the drama, but you can be sure the residents of Sturgis know about it. After a decade of simmering tensions over trademark issues, the conflict came to boiling point in 2011 when Sturgis Motorcycle Rally, Inc. filed a trademark infringement lawsuit against local retailers.
March 25 of this year will be a significant turning point in the battle for trademark rights to “Sturgis”, “Sturgis Motorcycle Rally”, and other associated terms. It will be the beginning of the end of the two-year lawsuit, but it might not be the end of the story, or the end of local tensions on the subject. And that’s because the roots of the conflict stretch back to the early 90s, by which time the rally had grown big enough to be a considerable commercial boon to the community, but also to require significant financial and logistical management. So began the long and rocky road to trademark “Sturgis”.
The first attempt by the Sturgis Chamber of Commerce was denied by the Patent Trademark Office (PTO) in 2001. Not until 2010 did parties previously at odds on the subject come together to form the Sturgis Motorcycle Rally, Inc. They were granted a trademark in 2011. By June of the same year they had filed a lawsuit against Rapid City’s Rushmore Photo and Gifts and other retailers, who filed a counterclaim alleging that the trademark was invalid and therefore unenforceable. Wal-Mart was named as a defendant in April of 2012.
Fast forward to August of last year when the case was put on hold by the United States District Judge and referred to a U.S. Magistrate for evaluation. The Magistrate’s report, released on March 6th, recommended that the case be decided by a jury who would be asked to consider a number of key issues questioning the validity of the trademark granted in 2011. This is the most intriguing part of the whole mess, because the jury would have to decide whether the PTO was deliberately deceived by the Chamber of Commerce way back in 2001. The Chamber claimed it was the exclusive user of the “Sturgis” mark, and as such, was used and understood by the public to identify Chamber of Commerce goods. The Magistrate found that this was not the case and that the name was being used widely, but the jury will decide if it was an intentionally fraudulent claim by the Chamber.
Though I’ll be paying close attention to this interesting case going forward, I will also be hoping that the parties find an equitable resolution sooner rather than later. Because while the two sides concern themselves with profits from t-shirts, shot glasses, and postcards, everyone else wants to get back to focusing on the good times. No one owns those, so the real Sturgis Bike Week keeps rolling on towards August, when the nation’s bikes converge on the Black Hills for the most epic bike rally of the year.
Cook, Andrea. “Judge Says Jury Can Define Sturgis Trademark.” Rapid City Journal. March 13 2013. Web March 18 2013.
Wagner, Holly. “Judge Recommends Jury Decision on Key Sturgis Trademark Issues.” Dealer News. March 13 2013. Web March 18 2013.