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”?

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Companies: sturgis motorcycle rally inc

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Comments on “Where In Trademark Law Does It Say It's Okay To Trademark A Town Name 'For The Good Of The Community'?”

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57 Comments
Anonymous Coward says:

Maybe people should start posting videos on video websites.

http://www.youtube.com/watch?v=jd5Qw2O6C_o (at 2:12 he makes some comments about Kim Kardassian suing Blue Navy, this video was on the most viewed today along with all the videos showing the Indiana colapse, oh snap I’m getting news from Youtube now)

Not even the funny guys are letting go of the ridiculousness of the system anymore.

That Anonymous Coward (profile) says:

This might end up being much more messy for the city.

From some posts people who work the event have been putting up.
http://www.sturgisfun.com/forum/index.php?PHPSESSID=fee61870d7d149bcf398abb8c3ce8744&action=recent;start=90

“In a letter dated March 29, 2011, which I have attached in another post, SMRI states that they are a non-profit organization that will be licensing vendors to produce products. What I find strange is that Jerry Berkowitz is the person that?s been contacting vendors asking them to get a sub-licensing and pay fees to Hot Leathers. Hot Leathers is definitely a for-profit business and in no way any type of charitable organization! I fully expect Jerry will be putting his money in when this battle goes to court. With this special deal that Jerry has with SMRI his business, Hot Leathers, would be worth millions of dollars more. Jerry is old, he?s had cancer already and maybe looking to sell his company and retire. What better way to add value to your business than an exclusive agreement to sell sub-licensing for anyone wishing to use the word ?Sturgis? on a rally related item? Jerry could retire in style and go live out the rest of his days like a fat cat. “

Fiduciary responsibility anyone? Routing payments through an outside company that just happens to be owned by the guy in charge of the non-profit seems… hinky. More digging shows the payments are being routed to a Connecticut based corporation owned by the guy running this.

“What do you suppose would happen if ALL non “official” vendors didn’t carry Sturgis licensed shirts and pins? Do you suppose the city might literally CHOKE on hundreds of thousands of unsold merchandise???”

“Could the same thing happen in Sturgis? History often repeats itself, especially for those that will not learn from it. Jerry Berkowitz, owner of Hot Leathers and vendor at the Sturgis rally, who now has control of Sturgis Motorcycle Rally, Inc. (SMRI) has the power to say who gets a license and who doesn?t to print T-shirts. What a surprise that his biggest competitors, vendors who have sold at the Sturgis rally for years, are being denied a license! It?s not just T-shirts, it?s everything that vendors sell. Jerry now is acting like he has full control of this rally.”

Now take these with grains of salt, because these are people on the other side of the issue. But many of them actually own property on main street in town, pay taxes on that property, and rent out booths to vendors. And now they are being told that vendors are not interested in coming and maybe setting up shop outside the city proper.

It appears the original case boiled down more to the company in question claiming their goods were licensed when in fact they were not. Then the other parts of the issue were added in to bolster their claims. They had been selling goods with the word Sturgis on it for 20 years. Seems a little late for a trademark to be given on something that has been in use for that long.

Oh and the trademark appears to be wholly owned by the outside company that really is not beholden to the city in any way shape or form.

I expect this to be ugly someday soon, when they ask where all the money went and the board has just increased their compensation package.

*giggle* I wonder if the town board will have to pay a fee to put the word Sturgis on the stationary before this is all over.

MM_Dandy (profile) says:

Re: Re:

*giggle* I wonder if the town board will have to pay a fee to put the word Sturgis on the stationary before this is all over.

The name ‘Sturgis’ is so closely associated with the rally that I wonder how easy it would be to clear the ‘moron in a hurry’ bar. Would they be able to win a trademark case against, say, Sturgis Beef Jerky?

Richard (profile) says:

Charity is a good cover story

For self interest. Remember Peter Pan.

All the pro-copyright people said “It’s terrible Gt Ormond St. Hospital will lose out when the copyright expires – so we must extend the term. (By the way that will extend OUR terms as well – but I hope you don’t notice that)”.

When what they should have said was “It’s terrible Gt Ormond St. Hospital will lose out when the copyright expires So one of us should repeat JM Barrie’s generous gesture and donate the copyright on a newer work as a replacement”.

abc gum says:

As a collector of motorcycle memorabilia, I’m happy to no longer be confused about where these biker rallies occur. Who knows, I could’ve ended up in BFE spending my hard earned money upon fake Sturgis souvenirs.

If the people of Sturgis do not get paid for the creation of the town, they will stop creating towns, think of the citizens for once you greedy freetards.

I wonder how many souvenirs they sell with Harley Davidson on them. You think they are paying the proper licensing fee upon those transactions?

Anonymous Coward says:

Re: Re: Re:

Please. If he wants to argue that the mark is not valid, then let’s see his legal arguments as to why he thinks so. You won’t get any such arguments, that much is obvious. He wants to be a law blog, but without the burden of actually arguing and presenting the law. It’s cluelessness at its best, and people like you eat it all up.

That Anonymous Coward (profile) says:

Re: Re: Re:3 Re:

So your point is you can’t actually come up with anything other than insulting the blog to support your claims that he’s not done any research.

It doesn’t bother you that a Judge cited “its good for the community” as a basis for making a legal decision. That is a new legal test we have to pass now?

The entire case seems questionable, especially an outside group that has NOTHING to do with the event snapping up the marks and the funneling payments to an out of state corporation rather directly into the accounts of the “non-profit” they claim to be.

Its like an onion, and every layer of this is stinking more and more.

And your best answer is because hes a dork.

Cite caselaw upholding a trademark based on for the “good of the community”.
Cite caselaw for a trademark to be valid when the original use in commerce predates your filing by 40 years easily.
Cite caselaw where a private group is allowed to Trademark an event and city name THEY DON’T RUN OR OWN.

Anonymous Coward says:

Re: Re: Re:4 Re:

It doesn’t bother you that a Judge cited “its good for the community” as a basis for making a legal decision. That is a new legal test we have to pass now?

That’s just it. If you or Mike actually looked at the context the judge said that in, it would make sense. I’ve explain the context below in another post. But of course, you guys don’t look at the context or try to actually understand any of it before you jump in with the IP bashing.

“Quick to judge” would be the nice way of saying it. “Idiotic” would be more fitting, though.

That Anonymous Coward (profile) says:

Re: Re: Re:5 Re:

I see words, I see no citation to support your claims.

I see your opinion but lacking anything to back it up.

I see my posts looking into the Trademarks being gobbled up by this group, I see vendors annoyed and talking, I see questionable behavior of moving money out of the city & state.

You can’t be bothered to find 1 weblink to share, to solidify your position and yet you are the chosen one we are all meant to fall on bended knee to believe.

Anonymous Coward says:

Re: Re: Re:3 Re:

Says the King of FUD himself. You demand well-founded logical arguments yet give none yourself, demand references yet provide none, and request respect yet give none. That pretty much sums it up?

Physician… heal thyself.

And if that is your cite, then there are loads of legal arguments to your zero.

Booyah!

That Anonymous Coward (profile) says:

Re: Re:

Oh wise AC who has all of the answers, why don’t you enlighten all of us morons will all the these proposed facts.

Because showing actual proof to refute what has been said would be a much better way to make your point.

Or are you just mad that Mike is popular and none of the cool kids invited you to the party behind the barn?

So show us the truth… or get back under your bridge.
Support your statement with facts or F…. nevermind…

mike allen (profile) says:

Re: Re:

I have met some very ignorant people in my time but congratulations AC. You are the most ignorant person ever produced in this world.
It is in most countries and some states in the USA illegal to trademark a persons or TOWNS, city or village name. even by the town itself more so by a separate company. the reason being the “unintended results”, like being charged extortionate amounts to the council and public bodies for their letterheads.

Anonymous Coward says:

Re: Re: Re:2 Re:

In deciding whether to grant the TRO/preliminary injunction, the judge weighs several factors, including harm and public interest.

This is what the judge said, according to the transcript:

Well, then, to move to the other Dataphase factors of the threat of irreparable harm to the movant if injunctive relief is not granted; and secondly, which is capable of being combined, the state of balance between the harm to Rushmore Photo and injury that granting the injunction will inflict on other parties litigant; that’s the reality that is in this testimony and I think testimony presented by witnesses for both parties that certainly more than 50 percent, somewhere between 70, 80, and perhaps a higher percentage of Main Street Sturgis vendors are selling licensed goods under this mark, and the mark has been previously protected by predecessors and interests and enforced by some of those holders. And so that does show that in terms of harm to the public, we have a body of licensees who believe that they have an exclusive product to sell; it’s been licensed; they have paid for the license; and the market would either be diluted, damaged, or affected by inferior or infringing goods if I restrain the enforceability of the Sturgis mark.

The other part here, if we look at the harm, the rally is in part or perhaps even largely funded in terms of its ability to be produced and run successfully, partly funded by the royalties flowing from the Sturgis mark; and I believe if we eliminated that, that there would be harm done. The charities that have been listed both in testimony and in the plaintiff’s submission in their brief, those are community charities that also benefit. That ties in, of course, to the public interest.

What is the public interest here? The public interest with regard to enforcing the mark so that the royalties can flow into the entities which have been identified, that is, a production and successful holding and hosting of the rally by the city of Sturgis and the charities which benefit the public interest certainly weighs in favor of protecting those interests.

So overall on the state of this record, without more, and in the context of a temporary restraining order and request for preliminary injunction, I do find that the request for injunctive relief must be denied.

As you can see, the judge was applying a balancing test, looking at the factors delineated in Dataphase (which is binding circuit precedent on this court).

Mike frames the issue thus: “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”?”

Nowhere in the Lanham Act does it say that, obviously, so right away you should be on notice that Mike is framing things the wrong way. Whether it’s a descriptive term (the implication being that the mark is not valid; but of course, there’s no actual argument from Mike) is not before the court. As the judge explains in the transcript, the mark is presumed to be valid since it’s registered, and the merits of the case haven’t been looked at yet. This is only a TRO/preliminary injunction, remember, so the judge is limited by what evidence he can look at and consider. And as indicated above, the judge does a balancing test that considers the harm and the public interest, among others. So yes, being “good for the community” is quite relevant.

Mike chose not to look into any of this. Instead, he saw a chance to bash on IP. Never mind what the facts of the case are, what sort of motion the judge was actually considering, and what the factors are that the court was looking at. Nope, he saw a chance to say how dumb something was, and the only one who came out looking dumb was him. Again.

Did that frame it for ya?

That Anonymous Coward (profile) says:

Re: Re: Re:3 Re:

“a production and successful holding and hosting of the rally by the city of Sturgis”

The mark is held by a “non-proft” not connected to the city. It does NOTHING except attempt to control what merchandise can be sold at the event. It puts NO MONEY OR EFFORT into the creation or running of the event. The money is funneled to a board members business and an outside corporation based across the country.

This mark was granted on items that were produced by others for years before this “group” attempted to snatch up the ability to put Sturgis Motorcycle Rally on everything imaginable.

This mark is being used to stop the lead board members business competitors from doing business as they have done for years.

Pointing out it helps the community is NOT a legal test, and should not have been considered in the ruling. While the mark is still considered valid, the ruling should have followed the law and not an emotional heart string plea that its “for the charities”.

That Anonymous Coward (profile) says:

Oh my…
http://tess2.uspto.gov/bin/showfield?f=doc&state=4007:g4mv1d.2.103

Sturgis on patches is a trademark of Harley Davidson.
So I guess this means no patches for the rally, unless someone pays Harley.
Oh and on liquor, and food made of eggs, and prolly more…

http://tess2.uspto.gov/bin/showfield?f=doc&state=4007:g4mv1d.2.98

Sturgis as owned by the “non-profit”.
IC 025. US 022 039. G & S: clothing, namely, T-shirts and caps. FIRST USE: 19840100. FIRST USE IN COMMERCE: 19840100

Oh and its on Sturgis Bike Week.

And from one of the other marks the “non-proft” holds…

“Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “STURGIS” APART FROM THE MARK AS SHOWN”

The mark is listed as Sturgis Bike Week.

Mind you there are about 104 Sturgis related records, alive and dead.

And here is the big one…

http://tess2.uspto.gov/bin/showfield?f=doc&state=4007:g4mv1d.2.76

key words in the trademark….
“all of the aforementioned goods relating to the STURGIS motorcycle rally”

and another

http://tess2.uspto.gov/bin/showfield?f=doc&state=4007:g4mv1d.2.57

The non-profit getting it on everything under the sun including afghans.

More interesting is the first uses in commerce is listed only as early as the 80s… for an event started in 1938.

Is this another one of those things that was just fine until the lawyers got ahold of it?

darryl says:

Re: Re: Bega Cheese please....

Those Kirls !

Right they were from baga, but not murdered in bega, and the people who did murder them are not from bega, (from Yess, near Canberra)
Did you actually READ the freaking link you posted ?

And I have never seen an advertisment for “Bega schoolgirl murders, and cannot see how tradmarks has anything to do with murder.

What would that make ‘columbine’ then ?

basically you are just one sick prick….

DogBreath says:

Hidden clauses and meanings in legal rulings

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”?

I’m sure the judge found it right next to that secret hidden implied cover-it-all clause that is found in all such misguided judgments. It can be always be located in close proximity to “it’s for the children”.

James Plotkin (user link) says:

Points of law

Ok…It seems people here are complaining an awful lot about the lack of legal analysis in this piece…

(Full disclaimer- I’m not a lawyer, just a bright eyed law student with a particular interest in IP).

Regardless of whether an entity has a trademark containing a geographical indicator, that registration would only be valid with reference to the goods and services it is meant to demarcate. Therefore, the fact that Harley Davidson has the TM for Sturgis in reference to motorcycles and motorcycle apparel doesn’t prevent “Sturgis real estate” or “Sturgis birth control tests” from marketing their product with the Sturgis name. That being said, those two examples would likely be considered purely descriptive and would not be eligible for trademark protection anyways. Suffice to say that Harley wouldn’t be able to stop hem form operating under those names.

Another option is to disclaim the name of the twon in the trademark. For example the trademark “Canadian outgear” may be registerable if the registrant desclaims “Canadian” in the mark.

In reality, it all comes down to confusion. A person can register a mark using the name of a town or any other geographical indicator so long as it doesn’t create confusion with another registrants mark in relation to their goods and services.

I wish to point out that this is separate from mislabeling ones product using regional distinctions such as “Champagne” or “Whiskey”. A person in Italy may not call their sparkling wine champagne as is could mistakenly suggest that the product came from the champagne region of France.

I hope this helps clear up a little of the confusion.

P.S. – What a bull shit decision! I hope the judge had more to say for herself than “it’s for charity”…That reasoning is totally unfounded in law…and logic…

darryl says:

So long and thanks for all the Sturgis

Do you think a Swiss pocker knife is trademarked (that’s an entire country !!!!)

or Winbleden
or Gladstanberry
or Jamaican Cigars

Bundaberg Rum

Cuban Cigars

Texas tea

Isle of Man TT

Spannish mackrel

Irish Stew

I have a dog its breed is “tenterfield terrier” and its not even from tenterfield.

MOON SHINE !!!! trademarking the Moon !!!!!.

Get real Mike..

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