Who owns the rights to “Sturgis”? After more than a decade of battling, there is finally a firm answer to this question—we all own it because it is in the public domain. This means that any business planning to use the words “Sturgis,” “Sturgis Rally & Races” or “Sturgis Motorcycle Rally” may do so without any fear of getting themselves into legal hot water.
December 12, 2019 Update: Judge Orders Cancellation of Several Sturgis Rally Trademarks
It’s even more official!
Sturgis Motorcycle Rally, Inc.(SMRI) may no longer attempt to claim ownership of the “Sturgis,” "Sturgis Motorcycle Rally" or "Sturgis Rally & Races" trademarks according to an order issued by Federal Judge Jeffrey Viken on Wednesday, Dec. 11, 2019.
The court order is consistent with the 8th Circuit Court ruling from February 22, 2019, which stated that the STURGIS mark and many others are invalid.
This new order takes things a step further by ordering that trademark cancellations be sent to the United States Patent and Trademark Office.
Businesses that once feared attempted enforcement of the publicly available words by SMRI can now find comfort knowing that the trademarks have been ordered to officially be wiped from the books. SMRI can longer attempt to enforce ownership rights over the names "Sturgis," "Sturgis Motorcycle Rally" or "Sturgis Rally & Races”..
This article was originally published April 15, 2019. Updates to the story will be made as the story continues to unfold.
The ruling by the US Eighth Circuit Court of Appeals has brought major vindication to Rushmore Photo & Gifts (RPG) and the Niemann family who have been fighting hard to defend this stance against Sturgis Motorcycle Rally, Inc. (SMRI).
Rushmore Photo & Gifts, Inc., owned by the Niemanns, had long produced souvenir items containing the words “Sturgis,” “Sturgis Rally & Races” and “Sturgis Motorcycle Rally.” They had always known these terms were public domain, and they never strayed from that belief, even after SMRI registered the mark “Sturgis” (long after it had been used by others in public domain), began a licensing program for its use and slapped RPG with a trademark infringement lawsuit.
The poster above is an example of the word “Sturgis” being used in the public domain to promote the rally more than two decades prior to the attempted trademark claim. At the time this poster was produced and distributed, the City of Sturgis was actively trying to keep bikers out of town.
According to a press release issued by RPG April 3, 2019, “Until the Niemann’s and Rushmore Photo & Gifts prevailed at the Eighth Circuit, a South Dakota district court had in place a permanent injunction on the use of [Sturgis] marks, which ultimately represented hundreds of thousands of dollars in lost business for Rushmore Photo & Gifts and its owners.”
On November 2, 2018, the appellate court ruled that SMRI, in fact, did not own or have valid trademark rights to “Sturgis,” “Sturgis Rally & Races” or “Sturgis Motorcycle Rally.”
The summary stated, “SMRI and its witnesses were … not credible as a matter of law when they told the jury that it and its predecessors-in-interest had been the substantially exclusive users of the word.”
It went on to state, “…a trademark owner cannot establish that its mark is valid simply by getting its officials and agents to say that it is.”
The later ruling on February 14, 2019 from Judge Jeffrey Viken in the US District Court, District of South Dakota, Western Division stated:
“The record does not support a finding that SMRI owns, produces, or operates the rally, or does anything else that might allow it to acquire ownership over the rally itself or its intellectual property. The record indicates to the contrary that the rally is a pluralistic endeavor.”
The Sturgis Motorcycle Rally was born from the Black Hills Motor Classic started by local Indian dealer J.C. (Clarence) “Pappy” Hoel in 1938. Since its inception, private area businesses throwing events such as races, concerts and rides have made, and continue to make, the Sturgis Rally what it is today.
Despite the appellate court’s ruling, SMRI has continued to claim ownership over the marks and operate its “Sturgis” licensing program. The U.S. District Court for the District of South Dakota, Western Division, issued an order in February 2019 that reaffirmed that:
- SMRI’s claim to the “Sturgis” mark is invalid
- SMRI’s claim to U.S. Registration Nos. 3,923,284 and 4,440,4061 for “Sturgis” are both invalid and subject to cancellation
- SMRI’s claim to the “Sturgis Rally & Races” mark is invalid
- SMRI’s claim to the “Sturgis Motorcycle Rally” mark is invalid
For the first time in more than a decade, RPG and other businesses will be able to produce goods in 2019 using the now defunct Sturgis trademark. RPG may have been the ones to bring and stick with the lawsuit, but they won’t be the only ones reaping the rewards of their time spent in court.
As Judge Viken stated in his February 14, 2019 ruling, “The terms STURGIS, STURGIS RALLY & RACES, and STURGIS MOTORCYCLE RALLY when used by the defendants, or by anyone else for that matter, do not infringe on SMRI’s marks.”
We all owe Rushmore Photo & Gifts a debt of gratitude for having the backbone to stand up to false claims and for helping to clarify the obvious that everyone knew to be the truth.
See the full ruling from the Eighth Circuit US Court of Appeals issued November. 2019 here.
See the full ruling from the US District Court, District of South Dakota, Western Division filed February 14, 2019 here.