Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc.
908 F.3d 313
8th Cir.2018Background
- The Sturgis motorcycle rally (since 1938) grew into a major annual event; the Sturgis Area Chamber of Commerce (later Sturgis Motorcycle Rally, Inc. — SMRI) developed and licensed various marks (notably the Monahan composite logo and word marks like "Sturgis" and "Sturgis Bike Week").
- Rushmore Photo & Gifts (the Niemanns) sold rally souvenirs, sometimes using "Sturgis" and related phrases without licensing; they briefly licensed the Monahan mark for postcards in 1999.
- SMRI obtained federal registrations (including for "Sturgis Bike Week" and a Section 2(f) registration for "Sturgis"), assigned marks to SMRI in 2010, and sued Rushmore, the Niemanns, JRE (dissolved), and Wal-Mart for Lanham Act violations and related state claims after obtaining a 2011 registration for "Sturgis."
- A jury awarded SMRI $912,500; the district court entered a permanent injunction, denied fees, granted judgment as a matter of law to dissolved JRE, but later found SMRI estopped by laches/acquiescence from collecting damages.
- On appeal the Eighth Circuit affirmed infringement findings as to the Monahan composite mark and the federally-registered "Sturgis Bike Week" mark, but reversed or vacated findings tied to the word "Sturgis" and certain unregistered marks for lack of secondary meaning, vacated the counterfeiting finding and cybersquatting verdict, and remanded equitable defenses and injunctioning issues for further proceedings.
Issues
| Issue | SMRI's Argument | Defendants' Argument | Held |
|---|---|---|---|
| Validity of the registered "Sturgis" word mark (secondary meaning / Section 2(f)) | SMRI: long, continuous, and substantially exclusive use (via Chamber/SMRI/licensing) established secondary meaning and consumer association with SMRI | Defendants: many independent third parties used "Sturgis" descriptively for the rally/city before registration; SMRI not substantially exclusive user; insufficient direct evidence of consumer association | Reversed: record lacked sufficient evidence of substantially exclusive use or secondary meaning; SMRI not entitled to presumption of validity against Rushmore; dilution and cybersquatting findings tied to that mark vacated |
| Validity of unregistered marks ("Sturgis Motorcycle Rally", "Sturgis Rally & Races") | SMRI: usage, licensing, hangtags and advertising demonstrate acquired distinctiveness | Defendants: terms are common names for the rally; licensing and hangtags do not prove consumer source-identification | Reversed: insufficient evidence that these names function as source-identifying marks (secondary meaning lacking) |
| Validity/infringement of "Sturgis Bike Week" and Monahan composite mark; willfulness | SMRI: registrations (for "Sturgis Bike Week") create presumption of validity; Monahan mark long-used and distinctive; defendants copied similar designs and sold goods to benefit from mark goodwill | Defendants: marks are generic/descriptive; use by many vendors defeats exclusivity; any similarity is descriptive/commemorative | Affirmed in part: "Sturgis Bike Week" registrations supported validity; jury had sufficient evidence to find Rushmore willfully infringed Monahan composite mark; however counterfeiting finding (substantially indistinguishable) reversed for lack of near-identity |
| Equitable defenses (laches/acquiescence) and injunctive relief | SMRI: jury verdict on willfulness/ damages precludes equitable defenses; Seventh Amendment jury right; defendants forfeited these defenses | Defendants: SMRI delayed enforcement and acquiesced; district court may resolve equitable defenses post-judgment | Vacated and remanded: district court did not abuse discretion in considering equitable defenses, but its application must be revisited on remand in light of reversals; injunction must be modified accordingly |
Key Cases Cited
- Matal v. Tam, 137 S. Ct. 1744 (2017) (trademark law’s procompetitive purposes and limits on registrations)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (trade dress protection for inherently distinctive marks)
- Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (rule on secondary meaning for product-design marks)
- Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863 (8th Cir. 1994) (treatment of Section 2(f) registrations and secondary meaning)
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014) (standard for determining "exceptional" trademark cases and awarding fees)