January 27, 2020
The Sturgis Motorcycle Rally is an annual, world famous motorcycle rally held in Sturgis, South Dakota since 1938. The trademark over “Sturgis” and several related phrases has been held by Sturgis Motorcycle Rally Inc. (“SMRI”) since 1996, preventing businesses from freely using or producing goods bearing the word, causing great consternation among the rally attendees and those living in Sturgis. However, that looks to have changed after a Federal Court Judge issued an order on December 11, 2019 cancelling the “Sturgis” trademark.
Rushmore Photo & Gifts Inc. (“Rushmore”) had long been using the word “Sturgis” on the souvenirs it sold and continued to use it even after SMRI registered the trademark. In 2011, SMRI began a trademark infringement lawsuit in an attempt to prevent RPG from using the word “Sturgis.” The dispute went to trial in 2015 where the jury found in favour of SMRI, placing an injunction on the use of “Sturgis” marks. However, the jury’s verdict was overturned in favour of Rushmore when the appellate court ruled that SMRI did not have trademark rights to the word.
On December 11, 2019, Federal Judge Jeff Viken confirmed that the “Sturgis” mark was invalid and that a trademark cancellation be sent to the United States Patent and Trademark Office, thereby placing “Sturgis” in the public domain.
Authors: Scott Kerr and Megan Brooks