A federal judge has allowed Sturgis Motorcycle Rally Inc. to add Wal-Mart Stores as a defendant in its lawsuit to protect its registered trademarks for “Sturgis” and “Black Hills.”
Sturgis Motorcycle Rally sued Rushmore Photo and Gifts Inc. last June, saying it owns the trademarks and they’re needed to protect the quality of products connected with the rally that draws hundreds of thousands of people each year.
Rushmore Photo contends the terms are geographically descriptive and shouldn’t be trademarked, and non-licensed vendors have been selling goods bearing “Sturgis” for decades.
U.S. District Judge Jeffrey Viken granted Sturgis Motorcycle Rally’s motion to add Wal-Mart Stores Inc. as a defendant this week.
Jason Sneed, a Davidson, N.C.-based attorney for the nonprofit, said the Wal-Mart store in Spearfish has been selling T-shirts bearing the “Sturgis Motor Classic” logo with tags that say “Officially Licensed Sturgis” and “Authentic Sturgis.”
“Claims are appropriate when brought against anyone in the stream of commerce selling the infringing goods,” he said.
Wal-Mart spokesman Greg Rossiter says the Bentonville, Ark.-based company respects intellectual property rights, but it does not believe the rally has valid or enforceable trademark rights to the name “Sturgis.”
“‘Sturgis’ is a city in South Dakota,” Rossiter said. “No one has exclusive rights to use ‘Sturgis’ as a trademark or prevent others from using the name ‘Sturgis.”‘
No other retailers have been named in the suit. Sneed said he couldn’t comment on whether there were plans to add others.
Brian Niemann, owner of Rushmore Photo, said he thinks the move was an attempt to get his company to make a deal.
“It didn’t work, because Wal-Mart has been a long-term retailer of ours,” Niemann said. “It wasn’t something that was going to scare us by trying to add them to the lawsuit.”
Battles over brand names related to the motorcycle rally have been going on for decades.
Sturgis vendor Tom Monahan in 1986 created what was deemed the official rally logo and donated it to the Sturgis Chamber of Commerce with the agreement that only he could produce merchandise with that design for a per-shirt fee.
While some vendors sought licenses to produce shirts with that logo, other vendors tried to change the rally’s name to “Sturgis Bike Week.” That prompted the chamber to seek trademarks.
Sturgis Motorcycle Rally Inc. was formed in 2010, and the nonprofit obtained all of the chamber’s trademarks. Sneed said the chamber and city each have seats on the nonprofit’s board of directors.
Last fall, a group of businesses formed Concerned Citizens for Sturgis petitioned the U.S. Patent and Trademark Office asking that it cancel Sturgis Motorcycle Rally’s “Sturgis” and “Black Hills” trademarks, saying the terms are geographically descriptive and shouldn’t be trademarked. A federal appeals board in March agreed to wade into the dispute.
Concerned Citizens said that when the rally applied to register the marks, it falsely claimed in its application that no one else was marketing and promoting “Sturgis” goods despite their use by numerous motorcycle clubs, campgrounds and local businesses.
Niemann said his company has been around for 75 years.
“They’re a brand new company that’s trying to tell everybody else what they can and can’t do,” he said.
Sneed said Rushmore Photo had been a licensee when the chamber owned the trademarks. He said Sturgis Motorcycle Rally is not claiming all rights to terms “Sturgis” and “Black Hills.”
“It’s claiming the use of those terms to connote goods and services related to the Sturgis Motorcycle Rally,” he said.
Niemann said his company honors the more-specific “Sturgis Bike Week” brand owned by Sturgis Motorcycle Rally Inc. and it does not use that mark in its goods.
Rushmore Photo has been producing merchandise with the “Sturgis Motor Classic” brand for the past 20 years. Before that, everyone was using different names, such as Sturgis Rally, Sturgis Rally and Races, Sturgis Motorcycle Rally and Races, and Black Hills Motorcycle Rally,” Niemann said.
“Even when it was promoted, it was always promoted as something different every year,” Niemann said. “The only constant to the whole thing is the name either ‘Sturgis’ or ‘Black Hills.”‘
Discovery in the suit is ongoing, with motions due by Oct. 31. The trademark appeal will eventually go before a three-judge panel, but the hearing could be a year away.
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