MINNEAPOLIS—November 2, 2018—The US Court of Appeals for the 8th Circuit published its opinion today, finding that a federally registered trademark for the mark Sturgis, owned by Sturgis Motorcycle Rally, Inc. (SMRI), is invalid. This is a major victory for Rushmore Photo & Gifts, the Niemann family of Rapid City, SD, and Wal-mart Stores, Inc., the defendants in this seven-year dispute over the Sturgis mark, The Court found that SMRI’s unregistered, common law trademarks “Sturgis Motorcycle Rally” and “Sturgis Rally & Races” are also invalid.
SMRI maintained that the Sturgis mark identifies a distinct source of rally-related goods and services and that consumers associate the mark with the rally, which SMRI promotes. The Court rejected SMRI’s arguments, finding no evidence to allow the jury to infer that consumers associate the word Sturgis with only SMRI.
“The trial evidence supports neither argument nor any other basis for finding that the word “Sturgis” identifies SMRI as a source of rally-related goods and services. The jury’s finding that the mark is invalid thus warrants reversal,” the Court stated.
The Court remanded several issues to the District Court for additional proceedings consistent with the opinion.
Patterson Thuente IP trial lawyers Eric Chadwick, Brian L. Stender, and Adam Szymanski represented Rushmore Photo & Gifts, the Niemann family, and Wal-mart Stores, Inc. in the case.