US court cancels Sturgis Motorcycle Rally TM after Walmart dispute

A US district court has ruled that a trademark owned by the organisers of the Sturgis Motorcycle Rally (SMR) for the word ‘Sturgis’ is invalid.

On Wednesday, December 11, the US District Court for the District of South Dakota dismissed an appeal from SMR, which had disputed an earlier finding that it had failed to prove the mark was valid.

SMR had argued that being unable to prove that its trademarks are valid before the US Court of Appeals for the Eighth Circuit is not the same as a finding that the trademarks are invalid.

But the district court said this argument “ignored the Eighth Circuit’s holding”.

“The US Court of Appeals for the Eighth Circuit has spoken. The ‘Sturgis’ mark is invalid,” the court said in its ruling.

The decision comes after SMR took action against Walmart and a souvenir maker, Rushmore Photo & Gifts for trademark infringement in 2011.

In a win for Walmart and Rushmore in February 2018, the appeals court held that there was no evidence to suggest that consumers associate ‘Sturgis’ with SMR, or that the mark indicates that SMR provides rally-related goods and services.

It said that SMR needed to show “long and exclusive use” of the word in the sale of its goods, but SMR’s evidence directed the court to uses of the word in reference to the motorcycle rally or the city of Sturgis.

The court said this was a descriptive use of the mark and did not show that ‘Sturgis’ was being used to identify a source of products, and granted a preliminary injunction prohibiting SMR from asserting the mark.

In the latest decision, Rushmore Photo & Gifts said SMR was perpetuating misleading assertions before the US Trademark Trial and Appeal Board by maintaining that the invalidity of the ‘Sturgis’ mark is not final.

It said the court must remove that confusion.

In its counterargument, SMR said the appeals court had issued a preliminary injunction, not a permanent one.

But, the district court held that the finding that the mark is not valid is also a finding that the mark is invalid.

The court cancelled the trademark and notified the US Patent and Trademark Office of the cancellation.

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