Sturgis Motorcycle Rally Claims Exclusive Rights to City Name

Since at least 1938, the Sturgis Motorcycle Rally (“Rally”) has been held each year in and around the City of Sturgis, South Dakota and has attracted hundreds of thousands of visitors to the area.  This year, a newly formed organization, Sturgis Motorcycle Rally, Inc. is claiming exclusive trademark rights to the city’s name and seeks to obtain a royalty on products which bear the name “Sturgis.”

The trademark dispute concerning the “brand” Sturgis goes back to January 30, 2001 when the Sturgis Area Chamber of Commerce filed a trademark application for STURGIS (“Sturgis Mark”).  The Sturgis Mark was filed for a huge range of goods and services in fifteen (15) classes including key rings, pocket knives, firearms, stickers, shot glasses, flags, T-shirts, belt buckles, gaming chips, water, liquor, and beer.

Initially the Sturgis Mark was rejected for being primarily geographically descriptive– that is, simply referring to the city of Sturgis, South Dakota.  This initial refusal was overcome by Chamber of Commerce by claiming five years of substantially exclusive use of the STURGIS Mark.   (Which, considering all of the memorabilia sold at the Rally by so many different vendors seems quite a stretch.)

Not surprisingly, the Sturgis Mark was opposed by two large vendors of Sturgis merchandise, Good Sports, Inc. (“Good Sports”) and Black Hills Harley-Davidson (“Black Hills H-D”).  Late in the opposition proceedings, however, the Chamber of Commerce, Good Sports, and Black Hills H-D decided to let bygones be bygones and join forces.  The three entities thereafter formed a “non-profit” joint venture, Sturgis Motorcycle Rally, Inc. (“SMRI”), and assigned the trademark rights to the Sturgis Mark to SMRI.  With no opposition pending, the Sturgis Mark proceeded to issue on February 11, 2011.

SMRI thereafter sought to enforce its trademark “rights” with threats and litigation, including a lawsuit filed June 22, 2011 against Sturgis vendors Rushmore Photo and Gifts, Inc. (“Rushmore”) and JRE, Inc. (“JRE”).  Rushmore and JRE responded to the lawsuit by filing counterclaims for non-infringement and invalidity of the Sturgis Marks as well as for fraud.

SMRI pressed its case on July 27, 2011 by filing a motion to dismiss defendant’s counterclaims based on a claim that defendant’s counterclaims contradict themselves and the failure of the defendants to make specific fraud allegations against SMRI.

Rushmore and JRE thereafter filed a surprise motion for a temporary restraining order and preliminary injunction on August 3, 2011 to prevent SMRI from carrying out threats of confiscating vendor merchandise when the Rally begins Monday August 8, 2011.  Rushmore’s motion argues that Sturgis Mark was fraudulently obtained by SMRI and is invalid and unenforceable as a trademark.  In it’s motion, Rushmore attached declarations from twenty-eight (28) Sturgis vendors who state that they have been selling items bearing the city’s name for years, have never paid anyone a licensing fee, and that the Chamber of Commerce and SMRI have no right to prevent others from putting the city’s name on merchandise sold at the Rally.

The next day, August 4, 2011, SMRI filed its opposition to the injunction motion.  SMRI argues that its trademarks are presumed valid, Rushmore has not met its burden for injunctive relief, and that the defendants are creating “consumer confusion.”  (Presumably someone who buys a sticker or key chain which says “Sturgis” will be confused into thinking that the product is endorsed by the Chamber of Commerce or SMRI — just like a shot glass which says “London” is clearly endorsed by the Queen.)  SMRI also points out that it has donated its licensing fees to many great causes in and around Sturgis and therefore the court should cut SMRI a break.

On August 5, 2011, the court held a hearing and is currently considering the evidence presented.  It is unknown whether a ruling will be issued during the Rally being held this week.


The judge denied the motion for TRO and the preliminary injunction.  This ruling is not surprising given the difficult burden of showing irreparable harm (that is, harm which cannot be remedied by money) in a case that is essentially about money.  It is being misreported that the judge ruled that only officially licensed merchandise will be allowed at the rally.  The judge, however, may no such ruling as that issue was not before the court.  SMRI may, however, make such a request in the future, but it is unlikely to be heard prior to the end of this year’s rally.

Own Your Power – Did Oprah Winfrey Steal this Trademark?

Author, speaker, coach, and radio show personality Simone Kelly-Brown has sued television host, actress, producer, and philanthropist Oprah Winfrey over the trademark Own Your Power.

Kelly-Brown has had the mark Own Your Power registered in the United States since 2008 and claims a date of first use back to 2006.  In the complaint filed against Oprah and others, Kelly-Brown and her company Own Your Power Communications, Inc. accuses Oprah of the “brazenly unlawful disregard for the existence and use of [her] Company’s Trademark” as well as being at the helm of a “Partnership and Campaign to destroy [the] Company’s goodwill.”  Kelly-Brown further states that it was “unconscionable commercial practice, deception, fraud, false pretense, false promise, and misrepresentation” for Oprah to use the mark Own Your Power without her permission.

Months prior to filing the lawsuit, Kelly-Brown’s attorney, well-known intellectual property attorney Patricia Lawrence-Kolaras sent Oprah a detailed twelve (12) page letter setting out Kelly-Brown’s claims of trademark infringement.  According to the complaint, after receipt of this letter “On April 20, 2011 Harpo attorney David Fleming, Esq. of Brinks Hoffer Gilson & Lione acknowledged representation of members of the OYP Partnership and refused to direct his clients to halt the infringement of Kelly-Brown’s registered OYP Trademark.”  Translation: go pound sand.


The defendants named in the lawsuit are:  Oprah Winfrey, Harpo Productions, Inc., Harpo, Inc., Hearst Corporation, Hearst Communications, Inc., Wells Fargo & Company, Estee Lauder Companies, Inc., Clinique Laboratories, LLC, and Chico’s Fas, Inc.

Since the complaint was only recently filed, none of the defendants have responded.

According to the complaint, the basis for including Wells Fargo, Estee Lauder, Clinique and Chico’s is  an alleged “partnership” with those sponsors and Oprah’s company.  As evidence, attached to the complaint is an advertisement where these sponsors of the event are listed under the heading “IN PARTNERSHIP WITH.”

Needless to say, this evidence is a bit flimsy.  We will see shortly whether this evidence is enough to survive an anticipated motion to dismiss by these entities.  It is difficult to image that there is actually a “partnership” among Oprah Winfrey’s company and its advertisers and that this “partnership” collectively infringed Kelly-Brown’s trademark.

Oprah Winfrey should also be able to personally get out of the case.  To keep Oprah in the case Kelly-Brown will need to show that Oprah actively and knowingly participated in furtherance of the alleged trademark infringement.  Considering that most of the alleged infringement occurred prior to the notice letter sent by Kelly-Brown’s attorney, it is doubtful that Oprah even knew about Kelly-Brown’s alleged trademark rights until recently.  Moreover, it is unlikely Oprah was directly involved in what amounts to an event name and/or catch phrase.

As for Harpo Productions, Inc., Harpo, Inc., Hearst Corporation, Hearst Communications, Inc., at least one of these entities will be stuck in the case.  The other entities will likely be dismissed for being too far removed from any alleged trademark infringement.


While it appears that Kelly-Brown has legitimate trademark rights and that those trademark rights may have been infringed, her biggest hurdle will be proving damages.  In fact, it is possible that Kelly-Brown’s “Own Your Power” event which purportedly took place two days after Oprah’s “Own Your Power” event had an increased attendance from persons believing they were going to see Oprah’s event.  While that type of consumer confusion is possibly trademark infringement, Kelly-Brown did not exactly loose any money because of it.

The best argument for damages Kelly-Brown has is for money to cover “corrective advertising” so the public no longer associates “Own Your Power” with Oprah.  Based on the market reach of Oprah, an expert witness will certainly be able to come up with a sizable sum.

Stay tuned.  This one is just getting started.

A-B InBev Trademarking Area Codes: 702, Las Vegas for Beer

Anheuser-Busch InBev has filed trademark applications with the USPTO seeking to protect “area codes” in major markets as brand names for beer.  [INSERT DRUNK DIALING JOKE HERE].

Included in the list of area code beer names is 702 the area code for Las Vegas.  Currently, A-B InBev owns the trademark “312” for beer (the area code for Chicago) and is apparently planning on expanding the area code brands across the country (or at least in major metropolitan markets which lend themselves to a single area code).  Currently, A-B InBev has filed for the following area codes as federal trademarks for beer:

202 (Washington, D.C.)
214 (Dallas)
216 (Clevland)
303 (Denver)
305 (Miami)
312 (Chicago)
314 (St. Louis)
412 (Pittsburg)
415 (San Fransisco)
602 (Phoenix)
615 (Nashville)
619 (San Diego)
702 (Las Vegas)
704 (Charlotte)
713 (Houston)

Whether or not use of a telephone area code is “geographically descriptive” is open for debate.    As set out in the Trademark Manuel of Examining Procedure (TMEP), Section 1210.02(a), “A geographic location may be any term identifying a country, city, state, continent, locality, region, area or street.”  TMEP Section 1210.02 states that, “A mark is primarily geographic if it identifies a real and significant geographic location, and the primary meaning of the mark is the geographic meaning.”  Arguably, 702 identifies the geographic area within that area code, namely Las Vegas.

However, in reviewing other trademarks for the Las Vegas area code “702” only one of the trademarks, “The 702 Scene” was required to disclaim the area code, presumably on the basis of geographic descriptiveness.  The trademark “702” for clothing was allowed without any disclaimer as was “702 MOTORING” for an auto parts store, “702DENTIST” for dental services, “BLACKBOOK702” for advertising and talent services, and “702 HELL” which is currently published for opposition for clothing.

If the trademark office does view the area code beer brands as “geographically descriptive,” then in order to register the trademarks, A-B InBev will most likely have to actually brew the beers within the area code identified on the label.  This is because trademarks with geographically descriptive terms ordinarily need to originate in the location identified in the trademark or they are considered “geographically misdiscriptive.”  (e.g. a trademark for cheese which contains the words “Wisconsin Cheese” better be for cheese actually made in Wisconsin or the public may be mislead).  Geographic trademarks which are “geographically misdescriptive” will be refused by the trademark office.

For the benefit of each of the local economies located withing the area code beer brands I hope that A-B InBev actually does build breweries in each of those locales.


DJ Paulie vs. DJ Pauly D

Long time disc jockey DJ Paulie has sued Jersey Shore star DJ Pauly D for trademark infringement.   Also caught up in the lawsuit is the Palms where defendant DJ Pauly D is a resident DJ for Moon, Rain, and the Palms Pool in Las Vegas.

Although not nearly as famous as DJ Pauly D, the older DJ Paulie claims to have used his trademark in interstate commerce as early as 1973.  DJ Paulie’s biggest claim to notoriety stems from his claim in his complaint that,

After the attack on 9-11 in New York City, [DJ Paulie] was hired by the United States Post Office to write the music and produce their official 9-11 Memorial Fundraising Song, “September Mourn”, for the benefit of the victims’ families.

(While it appears that DJ Paulie did produce “September Mourn” based on the exhibits attached to the complaint, I was unable to locate anything to indicate that DJ Paulie was hired by the U.S. Post Office or that the Post Office ever had and “official 9-11 Memorial Fundraising Song.”)

DJ Paulie complains that DJ Pauly D’s success has negatively affected his search rankings. Indeed when performing a search for DJ Paulie, Google inquires whether you really meant DJ Pauly D (which is probably who most people are actually searching for).  It is unknown when DJ Paulie’s website became completely swamped by the Jersey Shore actor, but many Google and Bing algorithm tweaks in recent years  seem to favor “big brands” and Goggle’s algorithm clearly recognizes DJ Pauly D as the more prominent “brand.”

DJ Pauly D’s attorneys have not yet responded to the complaint, but I suspect that they will argue that the older DJ Paulie abandoned the mark at some point in his long carrier and did not begin using it again until 1999 or 2000 when was launched.  DJ Pauly D could then argue that he is actually the senior trademark user.   According to DJ Pauly D’s bio he has been a DJ since the age of 16 (1996).

Over at the trademark office, DJ Pauly D’s pending applications for the mark DJ Pauly D have been rejected by the trademark office based on a likelihood of confusion with DJ Paulie’s mark.  DJ Pauly D is in a tough spot at the trademark office as there is little chance of convincing the examining attorney who (rightly) has identified this likelihood of confusion issue.  DJ Pauly D’s trademark office options at this point are: (i) appeal the matter to the trademark trial and appeal board; (ii) settle with DJ Paulie and enter into a co-existence agreement; or (iii) start a cancellation proceeding at the trademark office against DJ Paulie arguing that DJ Pauly D is actually the senior trademark user.



Geek Trademark Infringement: Best Buy vs. Newegg

Back before anyone could remember, a “geek” was a carnival performer who entertained and disgusted his audience with morbid and gross stunts.  Today, the carnival stunts are left to modern day performers such has superstar Johnny Knoxville and his Jackass crew who no one would refer to as “geeks.”

Today, geeks distinguish themselves by being able to read binary and hexadecimal numbers as well as trace the origins of the movie Blade Runner to the book “Do Androids Dream of Electric Sheep?

So it is natural to use the work “geek” in conjunction with the sale and service of computers, right?  That’s what Newegg believes, rebuking a cease and desist letter from Best Buy which demanded that Newegg cease its use of the trademark GEEK ON.  According to Best Buy, its rights in its various GEEK SQUAD marks are being damaged by Newegg’s GEEK ON mark.

As the old adage goes, a good sketch is better than a long speech.  Compare the logos for yourself:


Does Best Buy own the word “geek.” Does it own the work “geek” when used as part of a black and orange logo? Does it own the work “geek” when used to advertise computers and computer repair AND a black and orange logo is used stylized with an “on” button?

When Best Buy sent its cease and desist letter on May 26, 2011 it stated:

Given Best Buy’s long-standing prior use of the GEEK SQUAD mark, Geek Squad Trade Dress, and Tie and Power Button Design, Best Buy is concerned that Newegg’s use of the Geek On Logo is likely to create confusion among consumers and to dilute the distinctive quality of the GEEK SQUAD mark in violation of Best Buy’s trademark rights.  Best Buy is particularly concerned because the Geek On Logo features the GEEK-component of Best Buy’s GEEK SQUAD mark, is depicted in the same orange-and-black color scheme as Best Buy’s Geek Squad Trade Dress, features a power button design that is very similar to the Geek Squad Tie and Power Button Design, and is used to promote Newegg’s competing consumer electronics retail services.

On June 6, 2011, Newegg responded by telling Best Buy to go pound sand.  Newegg’s response letter stated:

First, we respectfully disagree with your assertion that Newegg’s “Geeek On” promotions constitute trademark infringement.  Best Buy Neither owners nor has exclusive rights to the word “Geek”, and best Buy neither owns nor has exclusive rights to use a general, unstylized computer power button icon.

No mention was made by Newegg of the combination of Geek, the power button, and a black and orange color scheme.   Thus far Best Buy has not filed suit and Newegg continues to use its Geek On logo.  It will be interesting to see if either company decides to geek out and take further action.

Chrome Turf War: Did Google abandon the Chromium Trademark?

Chromium OS is the open source development version of Google Chrome OS.  Google filed an application for Chromium back in September 2008 and began using the term a few months later in December 2008.  On November 19, 2009, Google released its Chrome OS source code as Chromium OS under the BSD license.

Seven months later, in June 2010, ISYS Technologies, Inc. a Salt Lake City based technology company filed a trademark application for ChromiumPC.  ISYS filed the application as an “intent to use” application meaning that ISYS was not yet using the mark in commerce, but intended to do so in the future.  Apparently, the mark was slated for a company related to ISYS, Xi3 Corp.  According to the Xi3 website ChromiumPC is “the world’s first desktop computer designed to run Google’s Chrome operating system.”

On May 23, 2011, Google filed an opposition proceeding against the ChromiumPC mark indicating that the mark ChromiumPC is likely to cause confusion with its mark for Chromium.  (Based on Xi3 Corp’s admission in its press release that ChromiumPC is its PC which runs the Google Chrome OS, another possible grounds for opposition –not yet argued by Google– is that ChromiumPC is generic for a PC which runs the Chromium operating system.)

On June 6, 2011, ISYS responded with a lawsuit against Google.  Although it filed the mark as an “intent to use” trademark, ISYS now claims in the lawsuit that it has been using the ChromiumPC since 2009.  This claim appears to be based on the President of ISYS, Jason Sullivan, registering the domain name on November 20, 2009 — which, not surprisingly, is one day after Google announced Chromium OS.  Clearly, ISYS’ use of the Chromium name is tied to Google’s well-known trademark for Chromium.

In the complaint, however, ISYS argues that any rights Google may have had in the mark Chromium have been abandoned:

33. Google abandoned any trademark rights in Chromium software by failing to control the nature and quality of the open source software developed by others but at the same time permitting others to distribute the third party software under the Chromium mark.

This argument, if accepted by the court, would put the trademarks of every open-source project in danger of abandonment.  The basis of this argument is known in trademark law as the “Naked Licensing Doctrine.”  That doctrine states that  a trademark owner no longer has a valid trademark if it licenses the mark in such a way to others that the mark no longer has any meaning.

The 10th Circuit court of appeals, which covers the District of Utah where the complaint was filed, has recognized this doctrine:

“When ‘a trademark owner engages in naked licensing, without any control over the quality of goods produced by the licensee, such a practice is inherently deceptive and constitutes abandonment of any rights to the trademark by the licensor.’” Stanfield v. Osborne Indus., 52 F.3d 867, 871 (10th Cir. 1995).

Here, however, it is not clear that Google has licensed its Chromium mark to anyone, let alone engaged in “naked licensing.”  While the Google-authored portion of Chromium is released under the BSD license, other parts are subject to a variety of different open-source licenses, including the GNU General Public License (GPL), MIT License, the LGPL, the Ms-PL, and the MPL/GPL/LGPL tri-license.  Regardless, none of these licenses grant any trademark rights.

Concurrently with the filing of the lawsuit ISYS filed an emergency motion for injunction relief.  In this motion ISYS again argues that Google abandoned the Chromium mark:

In this case, Google began an open-source software initiative in late 2008. Google invited independent third party software developers to participate. Many did so. Google failed to exercise quality control over the software developed by the third parties. Exhibit 7. Google permitted the third parties to do whatever they wanted in software development. Id. Google chose not to control, inspect, verify or guarantee any of the software prepared by the third parties. Id. Nevertheless, Google permitted and encouraged the third parties to brand their varying independent software products with the mark CHROMIUM. Id. his is classic trademark abandonment. By abandoning control of uses of the mark CHROMIUM, Google has forfeited all rights to a CHROMIUM mark software.

ISYS, of course, fails to produce any evidence from these third-party developers who are allegedly running wild with the Chromium trademark.  (A quick internet search did not turn up any third-party developers using the mark in this manner).

As evidence ISYS attaches Exhibit 7 to the Motion, which are print-outs from Google’s website and news articles.  No pinpoint sites are provided to explain where developers are utilizing an alleged naked license.

The President of ISYS, Jason Sullivan, states in a declaration in support of the motion that “Since 2009, ISYS has continuously promoted its new computers under the CHROMIUMPC brand at trade shows.”  However no brochures or documentation dated in 2009 are provided as evidence.  His declaration does include a picture of a computer allegedly branded with the ChromiumPC mark (although it is difficult to say whether that is an actual branded product or a mock-up of what the logo would look like on the product.)

Stay tuned.  A hearing in this matter has been set for June 14, 2011.  We should learn then whether ISYS’ creative “abandonment” argument has any traction.

Trademark Wars: Better Know an App Store -Part 4, Apple vs. Amazon

This is the fourth in a multi-part series.  If you have not read Part 1Part 2 or Part 3 yet, you may want to read those parts of the Apple App Store trademark saga first.

Apple’s Trademark Complaint Against Amazon

On March 18, 2011 Apple filed a trademark lawsuit against Amazon.  Amazon had recently released the “Amazon Appstore for Android” which Apple believes is an infringing use of Apple’s claimed exclusive right to use the term APP STORE.  The lawsuit was subsequently amended on April 8, 2011 and Apple’s Amended App Store complaint will be the one that Amazon responds to.  The lawsuit contains the most common trademark claims for relief including both federal and state law trademark infringement, dilution, and state law unfair competition. The case essentially boils down to one allegation in the complaint, namely, is App Store recognized as the source identifier for Apple’s app store and no other.  Apple alleges,

The general consuming public of the United States widely recognizes the APP STORE mark as designating Apple as the source of services and/or goods.

While that statement may have been true during the summer of 2008 when Apple’s app store was first launched, three years later every mobile device has its own app store in one form or another.  Certainly owners of popular Android phones (who as of January 2011 outnumber iPhone users) would not immediately associate “app store” with Apple.  Similar to Apple’s arguments against Microsoft’s trademark opposition, Apple argues in its complaint that it “coined the term APP STORE.” As we saw in, Part 1 of Trademark Wars: Better Know an App Store, however, to say that Apple coined the term “app store” is quite a stretch to say the least.  Apple also argues in the amended complaint that it popularized the use of the term app store, which is certainly true.  Apple states,

When it launched, the APP STORE service represented a revolutionary kind of online software service and was an instant commercial and critical success. As a columnist for The New York Times remarked soon after the launch of the service, “[n]othing like the App Store has ever been attempted before.” Apple coined the term APP STORE as a means of branding its new service. The term APP STORE was not in general use in connection with the distribution of software programs prior to Apple’s adoption of the term as a trademark.

Consumer Confusion?

Apple goes on to argue that the “Amazon Appstore” would confuse consumers into believing that the store was sponsored or approved by Apple.  Apple states,

[C]onsumers of mobile software downloads are likely to be confused as to whether Amazon’s mobile software download service is sponsored or approved by Apple or is merely a conduit for Apple’s APP STORE service.

Really? Someone seeing the Amazon Appstore would think it was from Apple?  Perhaps if they though Amazon and Apple were the same company that might be the case.  While it is conceivable that Apple could dig up a paid expert to make such a finding, I would not envy having to write that expert report.

Trial by Jury

One final note– Apple requested a jury trial in this case.  This move is very interesting since Apple’s strongest arguments seem to be a ridged application of trademark law rather than actual evidence of any consumer confusion (which a jury could relate to).

Current Status

This should be an interesting case which we will be following closely.  Next up– Amazon will be answering the complaint or filing a motion to dismiss on or before April 25, 2011.

EU: Google Adwords Trademark Bidding may be Trademark Infringment

The Advocate General of the European Union issued a written opinion in the Interflora Inc v. Marks & Spencer case finding that the defendant’s bidding on the keyword “interflora” through Google Adwords may amount to trademark infringement.

The Applicant, Interflora operates a network of independent florists who provide flower delivery in the UK and across Europe.  The defendant, Marks & Spenser provides flower delivery services in competition with Interflora in the UK.

The opinion finds that advertisers who choose keywords identical to a trade mark of another may obscure whether the goods or services referred to originate from the  the advertiser or the trade mark owner.  In a radical departure from case law in the United States, the EU’s Advocate General found that, at least in the case of the Interflora trademark, it is immaterial whether the resulting ad displays the trademark or not (see Paragraph 42).

The Advocate General distinguished the Interflora case from other trademark bidding cases based on the fact that the “Interflora” mark represents a network of independent florists.  Searching for “Interflora” and having the Marks & Spencer ad pop-up could lead a consumer to believe that Marks & Spenser was part of the Interflora network.

The Advocate General concludes that, Interflora should be allowed to block Marks & Spenser from bidding on its Interflora trademark in Google Adwords.

The Advocate General’s opinion is preliminary and will now be considered by the European Union Court of Justice which will issue a final judgment.

Redskins tell Washington Post to Cease and Desist using Redskins Name

In what must be one of the stranger cease-and-desist requests in recent memory, the Washington Redskins have reportedly demanded that its home-town newspaper the Washington Post cease and desist using the name “Redskins” as part of its blog.  What?

A blog about the Redskins being told that they cannot use the name Redskins in their blog title?

The webcast and blog which was originally called “Redskins Insider” has since been named to “Football Insider.”

Did the Post have to change the name of its blog and webcast? Maybe.  That hypothetical case would hinge on whether readers of the Post believed that the Redskins organization was somehow sponsoring the blog and webcast.  (Although it seems doubtful that a jury made up of those in the D.C. area would believe that the Redskins organization was sponsoring anything in the Post which can be critical of the team and its management.)

The newly named Football Insider can be read here.