Damages Dismissed in Sturgis Trademark Dispute

March 13, 2017
Patterson Thuente IP

Rushmore Photo & Gifts, Inc. (RPG), the Niemann family, and Wal-Mart Stores, Inc. are celebrating a victory over Sturgis Motorcycle Rally, Inc. (SMRI) in a controversial, six-year trademark dispute over the name “Sturgis.” On March 10, the Court found that RPG and Wal-Mart had valid equitable defenses to SMRI’s trademark claims. The Court vacated and dismissed the entire jury damage award of $912,500, ruling that “SMRI is barred from recovering damages and profits from the defendants for the time period prior to October 30, 2015.”

RPG was sued by SMRI in June of 2011 for infringement of its alleged trademarks, which include the name “Sturgis.” In response, RPG, a Rapid City family-owned business that has sold Sturgis-rally-related merchandise for more than 30 years, argued that SMRI’s claims were barred by the equitable doctrines of laches and acquiescence. The Court agreed. The Court, however, also upheld SMRI’s trademark rights—at least for the time being.

“We are very pleased with the ruling of the Court,” said Brian Niemann, co-owner of RPG. “However, we intend to continue the challenge against the validity of SMRI’s alleged rights and will appeal that part of the ruling.”

Link to Order: http://bit.ly/2n5Zfcm