Sturgis Motorcycle Rally Trademark Woes
Sturgis Motorcycle Rally, Inc., Legal News
Sturgis Motorcycle Rally, Inc. (SMRi), a non-profit with the mission of enhancing and growing the Sturgis Motorcycle Rally and providing a charitable return to the greater Sturgis area, has filed Monady an opposition proceeding with the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office against Fresno, California-based Renegade Classics Corp.
Renegade Classics Corp. seeks to establish the exclusive right in the United States to use the terms “Sturgis Rally Week” and “Sturgis Rally Week” with a motorcycle design.
SMRi, owner of senior rights to the Sturgis, Sturgis Bike Week, Sturgis Rally & Races and Sturgis Motorcycle Rally brands, among others, has opposed the California company’s attempt to trade off of SMRi’s goodwill by registering its own confusingly similar trademarks. SMRi already is engaged in an expensive legal battle with Renegade Classics Corp’s ally, Rushmore Photo & Gifts, pertaining to Rushmore Photo’s use of terms “Officially Licensed Sturgis” and “Authentic Sturgis,” among other confusing terms.
Kent Mortimer, the owner of Renegade Classics Corp., testified on behalf of Rushmore Photo last summer in a federal court hearing in Rapid City, and Mortimer and the Rushmore Photo owners last year formed a group called “Concerned Citizens for Sturgis” for the purpose of attacking the Sturgis-based non-profit’s intellectual property rights.
Mortimer is no stranger to intellectual property litigation. Last year Mortimer and his company, Renegade, settled litigation asserted against them by Twentieth Century Fox Film Corporation in federal court in California relating to Fox’s allegation that Mortimer and his company infringed Fox’s rights in the Sons of Anarchy trademark and related copyrights.
To resolve the case (CACD Case No. cv-10-8565), Mortimer and Renegade agreed that they would be permanently enjoined from any future use of the SONS OF ANARCHY trademark, or the manufacture and distribution of any copyrighted material from the “Sons of Anarchy” television series. They also agreed to pay to Fox $50,000 for each future violation of the consent order.
Now, Mortimer and his company are seeking to register trademarks that would trade on SMRi’s goodwill.
Dean Kinney (SMRi Board President) says: “Even while claiming SMRi has no such trademark rights, and while calling themselves the ‘Concerned Citizens for Sturgis,’ a Concerned Citizen is trying to trademark Sturgis Rally Week for himself for purely commercial interests.
“We thought it important that someone protected the Sturgis brand, and do it on behalf of the Sturgis community. Some people call Concerned Citizens’ and Renegade’s actions ‘astroturfing,’ in which for-profit companies form a fake grassroots organization to generate support for their corporate, for-profit agenda. Mortimer’s effort to monopolize the term ‘Sturgis Rally Week’ while serving as President of the ‘Concerned Citizens for Sturgis’ is evidence of this.”
SMRi was created as a non-profit to support the local community through management of the Sturgis Motorcycle Rally and the intellectual property associated with it to facilitate the vitality and relevance of the most prestigious motorcycle rally in the world.
Kinney notes that SMRi’s ownership of Sturgis-related marks can be traced back to the 1938 origin of motorcycle rallies in the Sturgis area. Since then, the Sturgis Motorcycle Rally has become the basis for tourism in Sturgis and the surrounding area. SMRi is charged with growing and strengthening the Sturgis brand to build stronger motorcycle tourism, notoriety for the rally, and a stronger local economy.
Nearly 100-percent of the funds given to Sturgis Rally Charities over the years have been generated directly as a result of trademarks. The City of Sturgis, a licensee of SMRi, generates funds through the sale of sponsorships. SMRi, from licensing funds, makes an annual donation to Sturgis Rally Charities Foundation, which is tasked with improving the quality of life for residents in and around Sturgis.
Dean Kinney says: “SMRi’s legal battle is against a few select individuals who, purely for business and profit motives, don’t want to become Sturgis licensees or procure officially licensed product from existing licensees.
“SMRi expects to ultimately return millions of dollars back to the Sturgis community through the rally, ownership and control of the related marks and intellectual property, and charitable giving. We will continue to aggressively protect the Sturgis brand to enable that to happen.”
Sturgis Motorcycle Rally, inc. (SMRi) is a not-for-profit 501(c)(6) organization with no owners or shareholders and a volunteer board. The group’s primarily responsibilities are to promote, grow and strengthen the Sturgis Motorcycle Rally and provide a charitable return for the greater Sturgis area through the development of a licensing program related to the Sturgis Motorcycle Rally. The board positions represent a variety of organizations and interests in the Sturgis area, including the Sturgis Area Chamber of Commerce, City of Sturgis, the primary motorcycle manufacturer for the rally, the primary licensee, rally- and non-rally-oriented businesses.