Where In Trademark Law Does It Say It's Okay To Trademark A Town Name 'For The Good Of The Community'?
from the curious dept
We had recently written about how a group called the Sturgis Motorcycle Rally Inc (SMRi) had received trademarks on the name of the city of Sturgis, where the famed motorcycle rally is held each August. SMRi was then using the trademark to block the sale of souvenirs from any “unauthorized provider.” This seemed absolutely ridiculous. You should not be able to trademark the name of a town under trademark law. We had thought that SMRi ran the event, but after our last story ran, we found out that it was a separate operation set up solely to “manage the intellectual property” of the event.
Either way, a district court judge has sided with SMRi and blocked others from selling goods with the word Sturgis on them without permission (i.e., without paying up). While I haven’t seen the full ruling (anyone have it?) from District Court Judge Jeffrey Viken, the quotes in the Rapid City Journal seem really troubling, and don’t seem to line up with basic trademark law:
The number of vendors selling the licensed merchandise shows that they believe they have an “exclusive product to sell,” Viken said.
Viken also noted that because royalties from the licensing agreements are used to support the rally and Sturgis charities, the harm to the community would outweigh any harm done to the vendors who are prohibited from using the word “Sturgis” on their products.
Neither of those arguments makes any sense. The fact that SMRi convinced some people to pay up suddenly means that the trademark is valid? Huh? What sort of logic is that? As long as someone claiming a bogus trademark gets someone to pay then that must mean that the mark is valid? Talk about an easy scam. Get a questionable trademark, get a buddy to “license” it, and never worry about anyone challenging the mark again.
Separately, the idea that since royalties support a charity it’s okay to abuse trademark law seems beyond belief. I’m curious where in the Lanham Act it says “descriptive terms are okay to trademark if the judge thinks it’s good for the community”?