The fight for 'Sturgis': Parties object to judge's recommendations

Publish Date: 
Mar 26, 2013

RAPID CITY, S.D. – Both sides in a federal lawsuit over trademarks related to the annual Sturgis rally are asking the trial judge to reject a magistrate judge’s recommendations in the case.

The case seeks to enforce trademark rights held by Sturgis Motorcycle Rally Inc. (SMRI) against Rushmore Photo & Gifts (RPG), among others, who are trying to convince a judge as part of their defense to declare the disputed trademarks invalid.

SMRI registered the trademarks in mid-2011. The company was formed earlier that year by the Sturgis Chamber of Commerce, which had sought to register the marks with the United States Patent and Trademark Office (USPTO); Good Sports Inc. (parent of Hot Leathers); entertainment company HomeSlice and Black Hills Harley-Davidson. Good Sports and Black Hills H-D originally had opposed the trademark action.

Several parties asked the USPTO to invalidate the trademarks, and that action is on hold until SMRI v. RPG is resolved.

SMRI sued RPG in June 2011, alleging the souvenir and T-shirt maker infringed upon SMRI trademarks by making shirts and tchotchkes with the words Sturgis or Black Hills on them. Walmart, which sells rally-themed souvenirs, became a defendant in April 2012.

Attorneys on both sides are challenging U.S. Magistrate Judge John Simko’s March 6 report to U.S. District Court Judge Jeffrey L. Viken, who is presiding over the case and who assigned the analysis to Simko.

SMRI filed a reply raising several objections to Simko’s conclusions statements and documents referenced in his report:

  • SMRI objects to Simko’s comparison of the Sturgis case to a similar case in Daytona Beach, Fla., in which registration of the Daytona Beach Bike Week mark was cancelled. Hot Leathers owner Jerry Berkowitz, through his company Good Sports Inc., has been a party to both cases, arguing against registering the Daytona mark while being in favor of registering the Sturgis marks. SMRI says that information is not in the record for this case, and even if it was, the two situations are different. They argue that Berkowitz has sided with the respective chambers of commerce in both cases.
  • SMRI says it’s a nonprofit and as a result, has no owners, so Simko’s statement that two former trademark opponents are SMRI “owners, in the sense that each has a person on the five-member board of directors of SMRI” is wrong. They also argue that the SMRI board has more than five members and all serve “in an individual capacity.”
  • Simko’s conclusion that the Sturgis marks are registerable if the public recognizes Sturgis as a source of goods, instead of as an event, is flawed, SMRI attorneys argue. They cite, for comparison, sports marks including Super Bowl, March Madness, Iditarod and several city names trademarked in relation to auto racetracks.
  • SMRI contends that RPG in 1999 received a license to create certain products bearing the design that Tom Monahan created for the chamber of commerce in 1986, but not the words in the marks SMRI now owns. The law would bar a former licensee of a trademark from contesting the mark, under most circumstances.
  • SMRI says RPG and Walmart cannot ask a judge to cancel a trademark as a defense, but instead must make a counterclaim to seek cancellation.
  • SMRI should be allowed to respond to RPG’s request for dismissal directly, if the court does not grant SMRI’s motion to throw out the RPG request.
  • SMRI attorneys say several of the documents filed by RPG are from previous trademark actions and people who aren’t parties to this case, and should be disqualified as hearsay. Some of the sources have sought to trademark or opposed trademarking some Sturgis rally terms long before the creation of SMRI. Some of the contested documents are statements made in earlier challenges before the Trademark Trial & Appeal Board of the USPTO, not as part of the record in the instant case.
  • SMRI cites a legal analysis that says even if a trademark is fraudulently obtained, as RPG and the other defendants allege in this case, “the plaintiff’s common law rights in the mark continue unabated and are sufficient to require an injunction against an infringing defendant.”

RPG’s attorneys argue in a much shorter brief that Viken should grant their motion to end the case in their favor because SMRI sought to have the motion thrown out, rather than responding to it. SMRI’s attorneys say responding would have added a claim to the case that RPG withdrew earlier. (continued)