A group of Sturgis businesses and citizens upset with Sturgis Motorcycle Rally Inc’s, efforts to control merchandising during the Sturgis motorcycle rally has taken their objections to Washington, D.C.
Concerned Citizens for Sturgis has petitioned the U.S. Patent and Trademark Office requesting it cancel SMRi’s registered trademarks “Sturgis” and “Black Hills.” Both were registered earlier this year.
Brian Niemann of Rushmore Photo and Gifts said his company is a member of CCS, along with many local merchants, realtors, campgrounds and others who have been a part of the motorcycle rally.
“I’m excited to see that people are getting involved and going forwards with what they claimed they were going to do,”
Earlier this summer, SMRi approached vendors marketing goods with the either name in connection with the motorcycle rally demanding that the vendors register their product with SMRi for the right to use those trademarks. Dean Kinney of SMRi could not be reached for a comment on this story.
Rushmore Photo and Gifts launched a legal action in federal court just days before the opening weekend of the rally to try and stop SMRi from enforcing its trademark rights. A federal judge denied RPG’s request for a temporary injunction, but set the case on the road to a trial. A trial date has not been set.
Taking the case to the Trademark Trial and Appeal Board is the next step according to Kent Mortimer, spokesperson for CCS. Mortimer owns three properties in downtown Sturgis and operates Renegade Classics, a motorcycle gear outlet.
“People have been using these marks for years,” Mortimer said. “There are so many people angry. This is their livelihood.”
The petition will be heard by a judge who will evaluate the petition on the legalities of the trademark registration, he said. The case will be decided on facts, not emotion, he said.
“We’re saying they lied on their applications,” Mortimer said.
It its petition, CCS alleges that “for many years the terms “Sturgis” and “Black Hills” are and have been used for goods and services by non-licensed third-parties,” including many members of CCS, in connection with the Sturgis Motorcycle Rally, not only in Sturgis, but throughout the area.
As far back as 2001, Jerry Berkowitz, a member of SMRi’s board of directors, and retailer of rally-related sportswear through his Good Sports company, along with Sturgis Motorcycles and Black Hills Harley-Davidson opposed a trademark application for Sturgis.
At that time, Good Sports alleged that the company had used “Sturgis” for goods and services related to the rally since 1985, according to the petition.
“As well as use of the name ‘Sturgis’ by many other vendors, the Chamber is not entitled to registration of the mark ‘Sturgis,’” Berkowitz wrote when he opposed the registration of “Sturgis” in 2001.
And, now Berkowitz’ own words could be used against him, Mortimer said.
“Now, he’s switched sides, and his own affidavit can be used against him,” Mortimer said.
According to the petition filed by CCS, when SMRi applied to register “Sturgis” and “Black Hills,” the application fraudulently claimed that no one else was using the marks. SMRi knew there were third-party uses and that it was not the exclusive user of those marks, the petition claims.
The petition also argues that “Sturgis” is geographically descriptive. It also contends that the term “Black Hills” has been used to several to identify goods and services and is not exclusive to the rally.
For more information on the trademark cancellation case or to make a donation to CCS visit www.concernedcitizensforsturgis.org.
Contact Andrea Cook at 394-8423 or firstname.lastname@example.org.