SMRi, a non-profit group who owns the Federal Trademark Registration in relation to Sturgis Rally goods and services, opposes the attempt of a Fresno, California-based business to land the rights to the term ‘Sturgis Rally Week’ for business purposes.
Renegade Classics Corp. seeks to establish the exclusive right in the United States to use the term “Sturgis Rally Week” with a motorcycle design. SMRi, owner of senior rights to the Sturgis, Sturgis Bike Week, Sturgis Rally & Races (TM) and Sturgis Motorcycle Rally (TM) 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. “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,” said SMRi Board President Dean Kinney. “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% 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.
“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,” said Kinney. “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.”