Court Case Removes Limitations On Motorcycle Rally Merch

When the Sturgis Motorcycle Rally arrives in Sturgis, South Dakota, on August 2, a dispute over use of the event name may be put to rest. Earlier this year, an order by the U.S. District Court for the District of South Dakota, Western Division, ended a disagreement over the use of certain trademarks associated with the rally after almost eight years of winding its way through the courts. The court case highlights often contentious disputes that can factor into promotional products production.

In 2011, Sturgis Motorcycle Rally, Inc. (SMRI) sued Rushmore Photo & Gifts, Inc. and its owners over the use of certain trademarks printed on merchandise sold at the rally. In 2015, a civil court ruled in SMRI’s favor and awarded the company almost $1 million in damages, although a judge later vacated the award.

Both SMRI and Rushmore Photo & Gifts appealed the verdict, and on November 2, 2018, the U.S. District Court ruled “the trial evidence supports neither argument, nor any other basis for finding that the word ‘Sturgis’ identifies SMRI as a source of rally-related goods and services. The jury’s finding that the mark is invalid thus warrants reversal.” The court ruled SMRI’s unregistered, common law trademarks, “Sturgis Motorcycle Rally” and “Sturgis Rally & Races,” as also invalid.

The court did uphold the original court’s ruling that Rushmore Photo & Gifts had infringed on SMRI’s Sturgis Composite Design mark and Sturgis Bike Week mark and committed false advertising and unfair competition.

Neither SMRI or Rushmore Photo & Gifts appealed the Eighth Court’s ruling and in February 2019, the U.S. District Court for the District of South Dakota, Western Division, issued an order reiterating the “Sturgis” mark as invalid; U.S Registration Nos. 3,923,284 and 4,440,4061 for “Sturgis” as both invalid and subject to cancellation; the “Sturgis Rally & Races” mark as invalid; and the “Sturgis Motorcycle Rally” mark as invalid. Retailers are now free to use these terms in their rally-related merchandise as the 79th Sturgis Motorcycle Rally approaches.

The event draws upwards of 500,000 motorcycle riders, concert fanatics and street-food enthusiasts to Sturgis, in the Black Hills of South Dakota, every year.

filed under April 2019
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