A group formed to oppose the registration of trademarks related to the Black Hills Motor Classic rally in Sturgis, S.D., has filed a legal action with the United States Patent and Trademark Office (USPTO) seeking to have trademarks for the words Sturgis and Black Hills invalidated.
The challenge asks the USPTO to find that the local holder, Sturgis Motorcycle Rally Inc. (SMRI), is not entitled to trademark rights for the terms Sturgis or Black Hills, that SMRI's marks were fraudulently obtained, that the terms are primarily geographically descriptive, and that they lack the secondary meaning USPTO would require to register a place name as a trademark.
The trademarks were registered earlier this year to SMRI, an organization reportedly formed to protect intellectual property related to the annual rally. Soon after its formation, SMRI started issuing letters to vendors requiring them to obtain license agreements in order to sell anything from T-shirts to motorcycle accessories in connection with the rally if they used the two terms.
Some merchants complied, either buying licensed goods to resell, paying for licenses or avoiding the terms on their wares. Others have put up a fight. SMRI sued Rushmore Photo and Gifts, which makes its own rally design apparel and had for years supplied rally goods to other vendors. Opponents to the mark founded Concerned Citizens for Sturgis (CCFS).
The legal action, filed Oct. 21 by CCFS, asserts that members of CCFS and others (including motorcycle clubs, campgrounds and local souvenir vendors) for years used the marks without paying SMRI or its predecessor, the Sturgis Chamber of Commerce, even before the chamber sought trademark protection back in 2001. That argument could be key to a case built on whether or not the names of geographic locations can be trademarked. Opponents to the marks claim the chamber's declaration at that time that "no other person, firm, corporation or association has the right to use the [Sturgis] mark in commerce" was knowingly false and made with the intent to deceive the Patent and Trademark Office.
SMRI so far has not returned calls and emails requesting comment on the case, which has the potential to delay the civil case against Rushmore Photo while the USPTO determines the validity of the registrations. If the marks are ruled invalid, the court could throw out the lawsuit asserting economic damage from use of the terms.
In a similar challenge in Daytona Beach, where the chamber of commerce is seeking to have a vendor's registration invalidated, a case against the vendor has been put on hold until the trademark registration issue is resolved.
Taking sides, then other sides. The CCFS pleading traces the history of efforts to register the marks, noting that the primary opponents when the chamber sought the marks 10 years ago have since become board members of SMRI.
Back then, USPTO refused the chamber's request due to opposition from entities that had already registered the terms for certain products. The chamber overcame the opposition by making deals with the owners of the registrations for using the terms on motorcycles, patches and prepared alcoholic cocktails, and by removing cigars from products covered in its applications.
The main opponents to the chamber's applications were Sturgis Motorcycles Inc., parent of Sturgis Harley-Davidson and Black Hills Harley-Davidson; and Good Sports Inc., parent of Hot Leathers. Dean Kinney, now chairman of SMRI, was president of the Sturgis Chamber of Commerce when it applied for the marks. In its opposition to the chamber's effort, Good Sports president Jerry Berkowitz attested that Sturgis was primarily geographically descriptive -- an argument he seems to be on the other side of, now, as a board member and the only sublicensor of SMRI.
Sturgis Motorcycles vice president Jim Doyle back then swore in an affidavit opposing the mark that more than 700 vendors used the term Sturgis to market rally goods each year.
Berkowitz, Sturgis Motorcycles representative Jim Burgess, and Sturgis residents John Johnson, who works for First Interstate Bank, and Dean Kinney, owner of entertainment booking company HomeSlice, formed SMRI in July. All remain board members. Once they formed SMRI, the opponents dropped their opposition.