Originally posted by Buck Lovell on Sunday, 04 March 2012 in Buck Lovell's - American Biker Blog
APPEALS TO SMRI STURGIS TRADEMARK VALIDITY WILL BE HEARD.
An appeal board of the U.S. Patent and Trademark Office's Trade will be hearing a legal challenge to SMRi's claim to own the trademark rights to the words "Black Hills" and "Sturgis," according to a Washington, D.C., attorney. A Mr. Philip Hampton who will be the attorney of record for "Concerned Citizens for Sturgis," labeled the appeals board's decision "qualified good news" for all those contesting the ownership of the two disputed Sturgis motorcycle rally trademarks. Concerned Citizens for Sturgis was initiated last year following Sturgis Motorcycle Rally, Inc., or SMRi, questionable enforcement of its alleged registered trademarks during the annual motorcycle rally last August by prohibiting non-licensed vendors from selling items with those words on them. "They (SMRi) clearly have scared some people into paying tribute to them." Hampton has petitioned the U.S. Patent and Trademark Office to cancel or rescind the two possibly invalid trademarks. "We believe both of those are geographically descriptive," Hampton said as to why the words cannot be trademarked. But more importantly, Hampton said, when the application to register those trademarks was initially made by the Sturgis Chamber of Commerce in 2001, everybody was using the words on Tee shirts and other products they were selling. Vendors and others had used Sturgis for patches and other products in connection with the rally as far back as the 1940s, he said. "So much so, that no one had the exclusive right to use the marks," the attorney said. "So we believe that the trademarks should never have been issued, because even the Chamber of Commerce didn't have the right to use the mark." SMRi chairman Dean Kinney said the so called not-for-profit corporation acquired the trademarks from the Sturgis Chamber of Commerce and that it's important for the Sturgis community to own the trademarks. "We believe that these are very important to the future of the rally and the community," said Kinney, whose group spent more than $200,000 in legal fees in 2011 defending the trademarks. "If they're not protected, then you lose them," he said. Those lawsuits included winning a trademark challenge against the Little Sturgis Rally held in Sturgis, Ky., and filing a federal lawsuit for trademark infringement against Rushmore Photo and Gifts of Rapid City last year in a case that is ongoing. Kinney downplays the importance of the challenge by Concerned Citizens for Sturgis. "That hasn't changed the status of our marks," he said. "They are totally enforceable. These are registered federal trademarks. The onus is on them to show why they shouldn't be." According to Kinney, the opposition consists of about five people "who try to pretend they are 5,000 and, they hide behind Concerned Citizens for Sturgis and don't represent anyone from Sturgis." The most vocal member of Concerned Citizens is Kent Mortimer of Fresno, Calif. Mortimer's Renegade Classics owns three storefronts on Main Street in Sturgis.
Concerned Citizens for Sturgis does not maintain a membership list because of possible retribution from SMRi, which now decides which vendors can sell items with the words Black Hills or Sturgis on them. "They're trying to lock their competition out," Mortimer said. People are now starting to realize what SMRi is doing and are offering to help with the legal battle, he added. In a surprising turnabout, current non-Sturgis-resident SMRi board member Jerry Berkomitz of Manchester, Conn., was on the reverse side of the recent Florida trademark dispute involving Daytona Beach Bike Week. Berkomitz's Good Sports Daytona, Inc. was a co-plaintiff in the successful effort by the Daytona Regional Chamber of Commerce to block efforts by three companies to claim exclusive ownership of the phrase "Daytona Beach Bike Week," according to Kevin Kilian, the Daytona chamber's chief operating officer. In that case, the judge barred the defendants from claiming ownership of the term because "Daytona Beach Bike Week and its functional equivalents are generic and cannot receive trademark protection," according to a chamber news release. The judge also found that the defendant's trademark registration was "fraudulently obtained or alternatively, was improperly granted." "It's always been our assertion that Bike Week Daytona was generic and more importantly usable by anyone in the public and the business community who wants to use it," Kilian said. According to Hampton, the Daytona decision will not have any bearing on the trademark appeal, but it could be significant for the Rushmore Photo case. The hearing is not scheduled to end until early 2013.