Sturgis, South Dakota is home to the world’s largest motorcycle rally. Sturgis® Motorcycle Rally started in 1938 with only nine participants and it was called the Black Hills Classic.  After the first Black Hills Classic, the name was changed to the Sturgis Motorcycle Rally. In 2000, the Sturgis Motorcycle Rally exceeded 600,000 attendees and has grown to 750,000 attendees in 2015. Now, it is a ten-day rally with concerts, camping, riding, and street foods. There are even tattoo, beard, and mustache contests. As the rally grew, people felt it needed to have an official logo. Artist Tom Monahan stepped in and donated his artwork to the South Dakota Commerce with the agreement that he would be the only vendor allowed to sell shirts with the official logo.

Over the years, vendors realized the importance and value in the official logo and became licensed vendors through the Chamber. In 2010, the Sturgis Motor Rally Inc. (SMRi) bought the trademarks from the Chamber. Now, SMRi has trademarks and copyrights on Sturgis®, Black Hills®, The Legend Lives On®, Sturgis Bike Week®, Take the Ride to Sturgis®, Sturgis® Motorcycle Rally™, Sturgis Rally & Races™ as well as five current logos.

SMRi has defended their trademarks against many people and organizations, including Rushmore Photo and Gifts (RPG) and Wal-Mart. SMRi sued RPG and Wal-Mart for unlawfully distributing trademarked Sturgis merchandise.

In a countersuit, RPG argued that “names that are geographically descriptive of a place cannot be trademarked. One exception: If a trademark applicant can prove it was the exclusive user of a geographic name for five years, a trademark could be filed.”

The court entered judgment in favor of SMRi in December of 2015. SMRi argued that RPG “is not a Sturgis, South Dakota, based business and is therefore outside plaintiff’s concession permitting the geographic use of the term ‘Sturgis’” is disingenuous.”

The jury ordered RPG to pay SMRi damages in the amount of $900,000, Wal-Mart was ordered to pay $235,000 in damages.

RPG appealed that ruling and in 2017, Jeffrey Viken, Chief Judge of the U.S. District Court of South Dakota, Western Division, vacated the original damages ruling. Aaron Davis, attorney for RPG felt this ruling was not the best outcome as the Judge upheld SMRi’s trademark rights. 

While many may not look to Sturgis for case law, this case has definitely set a precedent for other businesses dealing with similar situations.

Suiter Swantz IP is a full-service intellectual property law firm, based in Omaha, NE, serving all of Nebraska, Iowa, and South Dakota. If you have any intellectual property questions or need assistance with any patent, trademark, or copyright matters and would like to speak with one of our patent attorneys please contact us