Sturgis Motorcycle Rally Inc. Keeps Telling Licensees Its Trademarks Are Valid While Courts Keep Insisting They Are Not

from the vroom-vroom dept

As many of you will be aware, there is a small town in South Dakota, Sturgis, that turns into the place to be if you're into motorcycle rallies. Many of you may not be aware, however, that this rally and town have become the center of a years-running trademark dispute. Sturgis Motorcycle Rally Inc. (SMRI), which helps put on the rally, moved to trademark the name of the town and the rally, and then began bullying local Sturgis businesses for daring to use the town's name or the name of the event. This was done, according to SMRI, for the purpose of protecting the event and town, which makes little to no sense. In the end, the two trademarks in question were one that was a geographical name and one that was almost purely descriptive of a social event.

As it turns out, subsequent rulings on the matter did not go in SMRI's favor. This is creating some confusion in Sturgis, as SMRI's strategy for dealing with the legal losses appears to be simply pretending that they didn't occur.

Despite court rulings in the past year making some Sturgis Motorcycle Rally trademarks invalid, Sturgis Motorcycle Rally, Inc., continues to maintain the validity of the marks.

In emails and letters to licensees in recent months, the not-for-profit organization, which oversees the licensing of the trademarks, tells licensees all marks are still valid.

“It continues to be SMRI’s position that all of its trademarks are valid and protectable and enforceable. SMRI expects further court proceedings to address those issues with finality,” said Jason Sneed, SMRI’s attorney.

But in the past year, two separate courts ruled that SMRI did not own or have valid trademark rights to names “Sturgis,” “Sturgis Rally & Races,” and “Sturgis Motorcycle Rally.”

I'll say this: it's a bold strategy. I'm apparently not as creative as the folks at SMRI, because I never would have thought of the solution to multiple courts telling me my trademarks are invalid might simply be to say, "Nuh-uh!" This does cause one to question what the repercussions for this behavior might be, however, as extracting money out local businesses by asserting trademark rights the legal system insists you don't have certainly does sound like fraud.

Some of the folks on the receiving end of SMRI's bullying agree and want their fellow local businesses alerted to the truth.

Rushmore Photo & Gifts, Inc., owned by the Niemann family of Rapid City, has long produced souvenir items containing the words “Sturgis,” “Sturgis Rally & Races,” and “Sturgis Motorcycle Rally.”

“They (SMRI) have snubbed their noses at Viken and the 8th Circuit ruling,” said Brian Niemann, president of Rushmore Photo & Gifts. “We have filed a motion to have Viken reach out to them and stop them from basically lying to their licensees.”

It seems obvious that the misrepresentation by SMRI cannot be allowed to continue. It's also obvious that the granting of these trademarks that never should have been granted is not doing the town and rally any good, no matter what SMRI has said in the past. Again, if the Trademark Office had put just a little more thought into these applications, all of this could have been avoided.

Filed Under: motorcycle rally, south dakota, sturgis, trademark
Companies: smri, sturgis motorcycle rally inc.


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  • icon
    Anonymous Anonymous Coward (profile), 7 May 2019 @ 5:57pm

    Antithesis

    'Trademark Office' and 'more thought' are two phrases that don't really seem to mix well. Sometimes thought floats to the top, but more often trademarks rise.

    reply to this | link to this | view in chronology ]

  • icon
    That One Guy (profile), 7 May 2019 @ 8:30pm

    Playing chicken with the courts

    “It continues to be SMRI’s position that all of its trademarks are valid and protectable and enforceable. SMRI expects further court proceedings to address those issues with finality,” said Jason Sneed, SMRI’s attorney.

    But in the past year, two separate courts ruled that SMRI did not own or have valid trademark rights to names “Sturgis,” “Sturgis Rally & Races,” and “Sturgis Motorcycle Rally.”

    Well, assuming the judges involved have any sort of spine it seems to me that that would be a slam-dunk case for fraud and/or extortion, depending on how the prosecutor cares to run with it. Two separate courts have told them that the trademarks are invalid(and therefore any licensing demands based upon them), yet they completely ignored those two rulings and are instead acting as though they had never happened because a future court might vindicate their position.

    They have either let their egos completely overwhelm their common sense, or they are really sure that any judge(s) that might take up the case are going to be spineless and punish them with nothing more than a shaken finger and a disproving stare.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 7 May 2019 @ 8:58pm

      Re: Playing chicken with the courts

      I'd add contempt of court charges too.

      reply to this | link to this | view in chronology ]

      • icon
        Seegras (profile), 8 May 2019 @ 5:35am

        Re: Re: Playing chicken with the courts

        This is actually not a matter for a (civil) court, but quite clearly fraud, so call the police and have them open a criminal investigation.

        reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 8 May 2019 @ 10:13am

        Re: Re: Playing chicken with the courts

        Probably only works if the court enjoined them from making such claims.

        reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 8 May 2019 @ 7:26am

      Re: Playing chicken with the courts

      they are Venue shopping to try and get the "Sure you can trademark Comic Convention" Judge to rule on this one, nudge, nudge,wink, wink

      reply to this | link to this | view in chronology ]

      • identicon
        Bobvious, 8 May 2019 @ 3:23pm

        Re: Re: Playing chicken with the courts

        Judge, Judge, Wink, Wink

        reply to this | link to this | view in chronology ]

      • icon
        Dark Helmet (profile), 8 May 2019 @ 3:41pm

        Re: Re: Playing chicken with the courts

        Thank you for reminding me. I'm going to try not to go even a week without reminding everyone in some post or another that the fact that SDCC not only won its case AND legal fees, but still has its idiotic trademark, is the stupidest fucking thing ever.....

        reply to this | link to this | view in chronology ]

  • identicon
    Pixelation, 7 May 2019 @ 9:06pm

    Hey, Sturgis Motorcycle Rally Inc...

    Happy Birthday to you, Happy Birthday to you...

    reply to this | link to this | view in chronology ]

  • identicon
    bobob, 7 May 2019 @ 10:45pm

    First of all, since when has asserting trademark rights, copyright or patent infringement by people who don't actually have those things slowed anyone down? The few people who have been sanctioned in any meaningful way are a mere perturbation in the trolling business and even then, it's only because the guilty parties ignored repeated threats of being fined or jailed. It seems to me that the smri folks are doing what businesses do - break the law as long as possible if it's bringing in revenue.

    To the best I can tell, just based on how many techdirt articles are devoted to people doing this sort of thing, getting a disproving stare or a finger shaken at them might take a while and anything more meaningful than that isn't a sure thing.

    Even if they have to eventually stop under threat of a serious penalty, they will still have profited from doing as they are doing until that time arrives, so regardless of how shitty it is, it makes good business sense as long as the courts do what (nothing) the courts have been doing.

    reply to this | link to this | view in chronology ]

    • icon
      That One Guy (profile), 7 May 2019 @ 11:55pm

      Re:

      Indeed, so long as it's easier and/or more profitable to ignore the law/courts, and any punishments are almost certain to be well under the gain(if there's any punishment at all), then there's no reason not to do so. Unless judges start handing out actual penalties for stunts like this what they're doing may be contemptible, but it's hardly surprising.

      reply to this | link to this | view in chronology ]

    • identicon
      Christenson, 9 May 2019 @ 3:54pm

      Re: bias...

      Techdirt is a biased source for how much trolling goes on.... because Mike likes that sort of stuff, and so do we. So we never see the million times about "no trolling here!".

      There's a few willing to do it, sure.. but Paul Hansmeier is in jail.

      reply to this | link to this | view in chronology ]

  • icon
    K`Tetch (profile), 7 May 2019 @ 11:32pm

    Sounds like they're just playing at being good bikers.

    "A rebel without a ™"

    And clearly they're telling the courts "yeah, whatcha got?"

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 8 May 2019 @ 4:17am

      Re:

      "A rebel without a ™"

      Or a clue, as the old song goes. They may soon find themselves changing their tune. "I fought the law and the law won" seems appropriate.

      reply to this | link to this | view in chronology ]

      • identicon
        Annonymouse, 8 May 2019 @ 11:08am

        Re: Re:

        Except there enough examples of the law being an ass and they themselves not being held accountable for their actions .

        reply to this | link to this | view in chronology ]


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