Proceeding
`Party
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA116975
`ESTTA Tracking number:
`12/27/2006
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91154601
`Defendant
`STURGIS AREA CHAMBER OF COMMERCE
`STURGIS AREA CHAMBER OF COMMERCE
`Post Office Box 504
`Sturgis, SD 57785
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`JASON M. SNEED
`ALSTON & BIRD LLP
`101 SOUTH TRYON STREET, SUITE 4000
`CHARLOTTE, NC 28280-4000
`UNITED STATES
`Opposition/Response to Motion
`Jason M. Sneed
`jason.sneed@alston.com, larry.jones@alston.com, anne.randall@alston.com
`/Jason M. Sneed/
`12/27/2006
`Response Redacted.pdf ( 30 pages )(1658912 bytes )
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`

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`‘IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`STURGIS MOTORCYCLES, INC.,
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`Opposer,
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`V.
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`_
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`STURGIS AREA CHAMBER OF COMMERCE,
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`Applicant.
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`GOOD SPORTS STURGIS, INC.,
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`Opposer,
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`V.
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`Opposition No. 91154601
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`Opposition No. 91154603
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`STURGIS AREA CHAMBER OF COMMERCE,
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`(CONSOLIDATED)
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`Applicant.
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`APPLICANT’S RESPONSE
`TO OPPOSERS’ MOTION FOR SUMMARY JUDGMENT
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`TABLE OF CONTENTS
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`I.
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`II.
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`SUMMARY OF ARGUMENT ........................................................................................ .. 1
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`OPPOSERS’ DAUNTING CHALLENGE: PROVING ENTITLEMENT
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`TO SUMMARY JUDGMENT IN OPPOSITION TO AN INTENT-TO-
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`USE APPLICATION IN A CASE REPLETE WITH FACTUAL
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`DISPUTES ........................................................................................................................ .. 2
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`III.
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`BACKGROUND WARRANTING THE REJECTION OF OPPOSERS’
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`MOTION ........................................................................................................................... .. 3
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`A.
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`B.
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`C.
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`D.
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`The Sturgis Chamber and its Promotion of the Famous STURGIS
`Rally ...................................................................................................................... .. 3
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`The Chamber’s Incontestable Registration for the STURGIS
`Composite Design Mark and its Application to Register the
`STURGIS Word Mark .......................................................................................... .. 4
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`The Sturgis Chamber and Its Common Law Rights in and to the
`Sturgis Composite Design Mark, and Its Common Law Rights in
`and to the STURGIS Mark When Used in Connection with the
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`Annual STURGIS Rally ....................................................................................... .. 6
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`The Opposers and Their Ill-Advised Opposition to the Chamber’s
`STURGIS Application ........................................................................................ .. 11
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`1
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`IV.
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`ARGUMENT SUPPORTING THE DENIAL OF OPPOSERS’
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`SUMMARY JUDGMENT MOTION ............................................................................ .. 13
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`A.
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`Opposers Have Not Shown as a Matter of Law that They Will
`Succeed on Their Section 2(e)(1) Geographic Descriptiveness
`Claim ................................................................................................................... .. 14
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`1.
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`2.
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`There is a genuine issue of material fact whether the
`STURGIS mark is the “same mark” as the Chamber’s
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`previously—registered STURGIS Composite Design mark ..................... .. 15
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`There is also, at least, a genuine issue of material fact
`whether the Chamber has made “substantially exclusive
`and continuous use” of the designation STURGIS, in
`connection with rally-related goods and services for five
`years prior to the date on which the claim of distinctiveness
`is made .................................................................................................... .. 18
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`B.
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`Opposers Have Not Shown as a Matter of Law that They Will
`Succeed on Their Fraud Claim ........................................................................... .. 22
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`V.
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`CONCLUSION ............................................................................................................... .. 25
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`TABLE OF AUTHORITIES
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`Cases
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`American Footwear Corp. v. General Footwear C0,,
`609 F.2d 655, 661 n.4 (2"d Cir. 1979), cert. denied, 445 U.S. 951 (1980) ..................... .. 17
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`Anderson v. Liberty Lobby, Inc.,
`447 U.S. 242, 248 (1986); ................................................................................................. .. 2
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`Citizens Financial Grou , Inc. v. Citizens Nat. Bank ofEvans City,
`383 F.3d 110 (3' Cir. 2004) .................................................. ., ....................................... .. 17
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`Copelands’Enterprises Inc. v. CNVInc.,
`945 F.2d 1563, 20 U.S.P.Q.2d 1295 (Fed. Cir. 1991) ................................................ .. 3, 22
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`Dreyfus Fund Inc. v. Royal Bank ofCanada
`525 F.Supp. 1108, 1116 (S.D.N.Y. 1981) ...................................................................... .. 17
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`Giant Food, Inc. v. Standard Terry Mills, Inc.,
`229 USPQ 955 (TTAB 1986) ......................................................................................... .. 22
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`In re Dial—A—Mattress Operating Corp. ,
`240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) ............................................ .. 16, 17, 18
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`In re Loew’s Theatres, Inc.,
`769 F .2d 764, 226 USPQ 865 (Fed. Cir. 1985) .............................................................. .. 16
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`In re Rogers,
`53 USPQ2d 1741 (TTAB 1999) ................................................................... .. 18, 19, 20, 21
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`Kellogg Co. v. Pack ’Em Enterprises, Inc.,
`951 F.3d 330, 21 U.S.P.Q.2d 1142 (Fed. Cir. 1991) ........................................................ .. 2
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`Lipton Industries, Inc. v. Ralston Purina Co.,
`670 F.2d 1024, 213 U.S.P.Q. 185 (CCPA 1982) ............................................................ .. 13
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`Lloyd ’s Food Products Inc. v. Eli ’s Inc. ,
`987 F.2d 766, 25 U.S.P.Q.2d 2027 (Fed. Cir. 1993) ........................................................ .. 2
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`Meyers v. Brooks Shoe, Inc.,
`912 F.2d 1459, 16 U.S.P.Q.2d 1055 (Fed. Cir. 1990) ...................................................... .. 3
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`Olde Tyme Foods Inc. v. Roundy ’s Inc. ,
`961 F .2d 200, 22 U.S.P.Q.2d 1542 (Fed. Cir. 1992) ........................................................ .. 2
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`Opryland USA, Inc. v. Great American Music Show, Inc.,
`970 F .2d 847, 23 U.S.P.Q.2d 1471 (Fed. Cir. 1992) ........................................................ .. 2
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`Scudder ’s v. Pacific Gamble Robinson Co.,
`136 USPQ 418, 419-20 (TTAB 1962) ............................................................................ .. 19
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`Van-Dyne-Crotty, Inc. v. Wear-Guard Corp,
`926 F.2d 1156, 1159, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991) .................................... .. 18
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`Young v. AGB Corp,
`152 F.3d 1377, 47 U.S.P.Q.2d 1752 (Fed, Cir. 1998) .................................................... .. 13
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`Statutes
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`15 U.S.C. § 1051(b) ...................................................................................................................... .. 5
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`15 U.S.C. § 1052(e)(1) ................................................................................................................ ..14
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`37 C.F.R.§2.41(b) ......................................................................................................... .. 14, 15,16
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`Fed. R. Civ. P. 56(c) ..................................................................................................................... .. 2
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`Other Authorities
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`T.M.E.P. § 1212.04(b) .......................................................................................................... .. 16, 19
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`T.M.E.P. § 1212.05 ..................................................................................................................... .. 19
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`T.M.E.P. § 1212.06 ..................................................................................................................... .. 19
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`T.M.E.P. § 1212.09 ............................................................................................................... .. 19, 21
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`I.
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`SUMMARY OF ARGUMENT
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`Applicant, the Sturgis Area Chamber of Commerce (the “Sturgis Chamber”), urges the Board to
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`reject the improvidently-filed motion for summary judgment of Opposers Sturgis Motorcycles, Inc.
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`(“SMI”) and Good Sports Sturgis, Inc. (“Good Sports”). Genuine issues of material fact exist as to both
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`of the claims on which Opposers have moved: geographical descriptiveness without acquired
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`distinctiveness, and fraud.
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`As to the geographical descriptiveness claim, the Sturgis Chamber properly has relied on its
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`substantially exclusive use of the STURGIS mark in connection with the promotion and sponsorship of
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`the annual STURGIS Rally, as well as its ownership of an incontestable registration of and extensive use
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`of the STURGIS Composite Design mark, to support a claim of acquired distinctiveness in the
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`prosecution of the STURGIS application. Moreover, because it is necessary for the Board to evaluate the
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`commercial impressions of consumers in determining whether the previously registered mark is the “legal
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`equivalent” of the subject mark, such a claim is particularly inappropriate for summary judgment.
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`Opposers’ fraud claim is another example of a claim ill—suited for resolution on summary
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`judgment. Opposers in their argument not only misconstrue and leave out important facts from the
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`deposition of the witness whose statement they claim provides the basis for their fraud claim, but they
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`also try to estimate what his intent was in making such statements, though: (a) the witness was not even
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`asked at his discovery deposition about the declaration Opposers now say was fraudulently made; and (b)
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`Applicant has not yet put on its trial evidence. As a final basis for fraud, Opposers allege that because
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`they have not reviewed certain documents supporting the Sturgis Chamber’s use of the STURGIS mark
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`(claiming that such documents were not produced), it was fraud for the Applicant to allege use at all.
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`For the reasons set forth in detail below, Opposers’ summary judgment motion should be
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`rejected, and the Board should allow this matter to proceed to trial.
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`II.
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`OPPOSERS’ DAUNTING CHALLENGE: PROVING ENTITLEMENT TO
`SUMMARY JUDGMENT IN OPPOSITION TO AN INTENT-TO—USE
`APPLICATION IN A CASE REPLETE WITH FACTUAL DISPUTES
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`Opposers have invested 48 pages of briefings — including 24 pages of allegedly “undisputed
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`facts” -— plus another two inches ofpaper comprised ofexhibits and reports, in their attempt to show why
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`there is no genuine issue of material fact. If the sheer mass of paperwork itself does not show that there
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`are a great number of genuine issues of material facts in dispute between the parties, the Board also
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`should consider that Opposers are trying to prove, prematurely, that there is no genuine issue of material
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`fact regarding: (a) the alleged distinctiveness of a mark subject to an intent—to—use application for which
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`consumers’ commercial impressions must be evaluated; and (b) fraud pertaining to the intent of a
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`deposition witness of whom Opposers did not even ask about the allegedly fraudulent declaration.
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`Generally, summary judgment is appropriate in cases where the moving party establishes that
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`there are no genuine issues of material fact which require resolution at trial and that it is entitled to
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`judgment as a matter of law. Fed. R. Civ. P. 56(0). An issue is material when its resolution would affect
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`the outcome of the proceeding under governing law. Anderson V. Liberty Lobby, Inc., 447 U.S. 242, 248
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`(1986). However, a dispute over a fact which would not alter the Board's decision on the legal issue will
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`not prevent entry of summary judgment. See, e.g., Kellogg Co. v. Pack ’Em Enterprises, Inc., 951 F.3d
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`330, 21 U.S.P.Q.2d l 142 (Fed. Cir. 1991). A fact is genuinely in dispute if the evidence of record is such
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`that a reasonable fact finder could return a verdict in favor of the nonmoving party. See Lloyd ’s Food
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`Products Inc. v. Eli ’s Inc., 987 F.2d 766, 25 U.S.P.Q.2d 2027 (Fed. Cir. 1993). The nonmoving party
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`must be given the benefit of all reasonable doubt as to whether genuine issues of material fact exist, and
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`the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts,
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`must be viewed in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great
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`American Music Show, Inc., 970 F.2d 847, 23 U.S.P.Q.2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v.
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`R0undy’s Inc., 961 F.2d 200, 22 U.S.P.Q.2d 1542 (Fed. Cir. 1992).
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`By resolving all doubts as to the facts in favor of the Sturgis Chamber, and by taking into proper
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`account the nature of this proceeding and the underlying application, the Board will have little difficulty
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`in denying the motion. The parties moving for summary judgment, in this case SMI and Good Sports,
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`have the burden of demonstrating the absence of any genuine issue of material fact, and that they are
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`entitled to judgment as a matter of law. See, e.g., Copelands ’ Enterprises Inc. v. CNVInc., 945 F.2d
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`1563, 20 U.S.P.Q.2d 1295 (Fed. Cir. 1991). In deciding a motion for summary judgment, the Board may
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`not resolve an issue of fact; it may only determine whether a genuine issue of material fact exists. See
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`Meyers v. Brooks Shoe, Inc., 912 F.2d 1459, 16 U.S.P.Q.2d 1055 (Fed. Cir. 1990).
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`III.
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`BACKGROUND WARRANTING THE REJECTION OF OPPOSERS’ MOTION
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`A. The Sturgis Chamber and its Promotion of the Famous STURGIS Rally
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`Since 1938, there has been conducted annually in and around the City of Sturgis, South Dakota, a
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`series of races, rallies and other motorcycle—related exhibits, promotions, competitions, concerts and
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`related activities. A principal purpose of this annual event is to promote economic development in the
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`City of Sturgis and the nearby Black Hills area of South Dakota and Wyoming. Traditionally held during
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`the first week following the first full weekend in August, this annual event has been a tremendous success
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`and in recent years has attracted hundreds of thousands of visitors and participants each year from
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`throughout the country and abroad, so that it has become the premier motorcycle-related event in the
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`world (the “STURGIS Rally”). Over half a million motorcycle enthusiasts and members ofthe general
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`public attend the STURGIS Rally each year. (Declaration of Dean Kinney, attached hereto as Exhibit A
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`(“Kinney Decl.”), at 1] 5).
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`Beginning at or soon alter its inception in 1938, the STURGIS Rally was known primarily as the
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`“Black Hills Motor Classic.” In or about 1992, the official name ofthe event was changed to the “Sturgis
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`Rally & Races.” The annual event is also popularly identified by consumers and attendees of the event as
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`“Sturgis.” (Kinney Decl., 11 6). The success of this event, particularly in recent years, is due, at least in
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`large part, to its longstanding, continuous and extensive sponsorship, promotion and support by the
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`Sturgis Chamber. For decades, the Sturgis Chamber, previously functioning, at least in part, through its
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`Black Hills Motor Classic Committee, has promoted and otherwise supported the various activities
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`relating to this event. As a result of its efforts, the Sturgis Chamber has derived significant revenues
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`which, in turn, provide a significant economic benefit to the citizens of Sturgis and the nearby Black Hills
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`region. (Kinney Decl., 1[ 6). As a non-profit entity registered with the State of South Dakota that is
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`comprised of hundreds of members of the Sturgis, South Dakota area business community, the Sturgis
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`Chamber is uniquely situated to represent the collective interests of the business community in the
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`organization and promotion of the STURGIS Rally, so as to promote economic development in the
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`Sturgis area and to ensure that the financial benefits associated with the STURGIS Rally are returned to
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`the local community. (Kinney Decl., ‘ll 7).
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`For these reasons, the Sturgis Chamber became the sole entity responsible for the operation and
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`promotion of the Sturgis Rally around 1984, having been assigned the right to operate and promote the
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`Sturgis Rally from the Black Hills Motor Classic Board.
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`In promoting and otherwise supporting the
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`annual Sturgis Rally & Races, the Sturgis Chamber has used and pennitted others to use, certain
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`proprietary service marks to identify the races, rallies and other activities comprising this annual event.
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`Those proprietary designations have included STURGIS, BLACK HILLS, STURGIS RALLY &
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`RACES, STURGIS MOTORCYCLE RALLY, BLACK HILLS MOTOR CLASSIC, BLACK HILLS
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`MOTORCYCLE RALLY & RACES, and a logo which includes at its center and as the largest and most
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`prominent textual component thereof, the term “STURGIS” (hereinafter referred to as the “STURGIS
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`Composite Design”). (Kinney Decl., 1111 7-8).
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`B. The Chamber’s Incontestable Registration for the STURGIS Composite Design
`Mark and its Application to Register the STURGIS Word Mark
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`The STURGIS Composite Design is the subject of U.S. Service Mark Registration No. 1,948,097,
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`issued January 16, 1996 to, and currently owned by, the Sturgis Chamber. (See Exhibits 3 and 4 to
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`Opposers’ brief supporting their motion for summary judgment and Kinney Decl., 1] 9). The services
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`recited in the federal registration of the STURGIS Composite Design mark are the services of promoting
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`and sponsoring the annual motorcycle rally and are more particularly stated as: “Promoting sports
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`competitions and/or events of others, namely motorcycle rallies, exhibits and competition; andpromoting
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`economic development in the City ofSturgis and the Black Hills area ofSouth Dakota and Wyoming” in
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`International Class 35. The STURGIS Composite Design mark registration, which is now incontestable,
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`reflects a date of first use in July 1986. (Id.). The registered STURGIS Composite Design has been used
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`continuously since 1986 by the Sturgis Chamber and by others acting under authority of the Sturgis
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`Chamber. (Kinney Decl., 1] 10). The mark subject to Reg. No. 1,948,097 often is referred to by the
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`Sturgis Chamber, by members of the Sturgis community, and by the thousands of motorcycle enthusiasts
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`who attend the annual Sturgis Rally, as the “STURGIS Logo” or the “Official STURGIS Logo.” The
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`STURGIS Composite Design mark, or “Official STURGIS Logo” as it is known, has as its most
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`prominent feature the word STURGIS, located in bold, capital letters at the center of the mark and in
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`proportionally larger type than the other features of the mark. (Id.). The Sturgis Chamber did not
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`disclaim the word ‘STURGIS” during the prosecution of Reg. No. 1,948,097.
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`To further strengthen the designation STURGIS as a mark when that designation is used to
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`promote Rally-related goods and services, the Sturgis Chamber applied on January 31, 2001 to register
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`the word mark STURGIS with the PTO pursuant to Application Serial No. 76/201,759, in 20 classes of
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`goods and services. In each listing of goods is included the limitation, “all of the aforementioned goods
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`relating to the STURGIS motorcycle rally.” This application was filed on an intent-to—use basis
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`pursuant to 15 U.S.C. § l051(b) et seq., the Applicant having both a bonafide intention to use the mark in
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`commerce in the United States in connection with the described goods and services and having already
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`made actual use of the mark in connection with many of the described goods and services. (Kinney
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`Decl., 1] 11). The application was published for opposition on October 15, 2002, and has been opposed by
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`SMI and Good Sports in the present proceeding.
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`C. The Sturgis Chamber and Its Common Law Rights in and to the Sturgis Composite
`Design Mark, and Its Common Law Rights in and to the STURGIS Mark When
`Used in Connection with the Annual STURGIS Rally
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`The STURGIS Composite Design has been used by and under the authority of the Sturgis
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`Chamber since at least as early as July 1986. As a result of the longstanding continuous advertising,
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`promotion and use of the STURGIS Composite Design, that designation has a distinctive quality and has
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`acquired special and particular significance and very valuable goodwill as identifying the annual event
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`and the Sturgis Chamber, so that when members of the public see that designation, they automatically
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`think of the annual event and/or its promoter, the Sturgis Chamber. Consequently, through such usage
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`and recognition, the Sturgis Chamber has acquired common-law rights in the STURGIS Composite
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`Design as a proprietary service mark, which rights extend, without limitation, to the exclusive right to use
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`the STURGIS Composite Design and/or any similar design mark in South Dakota and elsewhere in this
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`country. (Kinney Decl., 1] 12).
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`Having lived in the Sturgis area for over 36 years, been involved in the STURGIS Rally as a
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`member of the media for over 19 years, and been involved in business—related activities related to the
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`STURGIS Rally for over 12 years, Dean Kinney, former Sturgis Area Chamber of Commerce President
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`and current President of the Applicant’s exclusive licensing agent, HomeSlice Corporation, believes that
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`when STURGIS Rally attendees, members of the public, and potential purchasers of STURGIS Rally
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`goods and services see the STURGIS Composite Design mark, they automatically think of the event or a
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`connection between the goods or services and the official sponsor of the STURGIS Rally. Many of those
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`persons understand that the official sponsor of the STURGIS Rally is the Applicant, while others properly
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`understand that the Sturgis-area business community at large (which they may or may not understand to
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`exist in the entity of the Sturgis Area Chamber of Commerce) is the official sponsor of the STURGIS
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`Rally. Thus, the STURGIS Composite Design is linked in the minds of consumers with the Chamber, as
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`the STURGIS RalIy’s official sponsor. (Kinney Decl., 11 13).-
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`Likewise, for decades the Sturgis Chamber has used and/or permitted others to use the proprietary
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`designation word mark STURGIS in conjunction with the Chamber’s promotion and management of the
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`annual event, including all of its related activities. Such use has occurred not only through use of the
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`STURGIS Composite Design mark, of which the most prominent feature is the word STURGIS, but also
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`by using and permitting others to use the designation STURGIS and/or the term STURGIS RALLY &
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`RACES on or in connection with STURGIS Rally—related goods and services. As a result of these
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`longstanding, continuous usages of the STURGIS designation in connection with the services offered and
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`sold by the Sturgis Chamber, the STURGIS designation has a distinctive quality and has acquired special
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`and particular significance and very valuable goodwill as identifying the annual event and the
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`promotional services of the Sturgis Chamber, so that when members of the public see or hear such
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`designation used in conjunction with motorcycle rally—related goods or services, they automatically think
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`of the annual event or a connection between these goods and services and the STURGIS Rally’s
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`promoter. Consequently, through such usage and recognition, the Sturgis Chamber has acquired
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`common-law rights in the mark STURGIS as a proprietary mark, which rights extend, without limitation,
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`to the exclusive right to use such designation and/or any confusingly similar designation in South Dakota
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`and elsewhere in this country in conjunction with the promotion of this annual event. (Kinney
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`Decl., 111] 14, 16).
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`The STURGIS mark has been used by Applicant and its licensees on and in conjunction with the
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`following goods and services:
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`Promoting sports competitions of others, namely, motorcycle and vehicle rallies, exhibits
`and competitions; promoting the goods and services of others by arranging for sponsors
`to affiliate their goods and services with the STURGIS motorcycle rally; promoting
`economic development in the City of Sturgis and the Black Hills area of South Dakota
`and Wyoming; and mail order, catalog, retail store, wholesale store, on—line retail store,
`and retail television store services featuring general merchandise and souvenirs relating
`to the STURGIS motorcycle rally (in International Class 35);
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`Entertainment services in the nature of organizing and conducting motorcycle and vehicle
`exhibitions and rallies; organizing and conducting the entertainment events of others,
`namely, motorcycle and vehicle exhibitions, rallies, and competitions; and entertainment
`services in the nature of live civic productions and live music concerts (in International
`Class 41); and
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`Goods, including but not limited to hats, t—shirts, pins, mailers, patches, wine bottles,
`concert promotion advertisements, mouse pads, mugs and cups.
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`(Exh. 16 to Opposers’ brief, Applicant ’s Responses to Opposers ’ First Set ofInterrogatories to Applicant,
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`at No. 3; Kinney Decl., ‘H 17).
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`The specific goods on which Applicant, through its licensees, has used the mark STURGIS to
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`connote the annual Sturgis Rally include at least the following goods and services:
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`In Class 6, metal key rings, metal license plates, license plate holders and metal signs; in
`Class 8, knives; in Class 9, sunglasses, pre—recorded videos, die cast banks, computer
`mouse pads, magnets and computer screen savers; in Class 13, firearms; in Class 14,
`jewelry (such as ornamental lapel pins, charms, belt buckles, coins, medallions, and
`tokens); in Class 16, posters, bumper stickers, trading cards, decals, window stickers,
`wall calendars, brochures and books directed to motorcycles, photographs and postcards;
`in Class 18, tote bags; in Class 20, non—metal key rings; in Class 21, drinking glasses,
`drinking cups, drinking mugs, rubber, plastic or foam insulating beverage holders, water
`bottles sold empty, grease and polish rags, shot glasses, portable coolers, coasters,
`insulating sleeve holders for beverage cans and bottles, bottles, sold empty, sports bottles
`sold empty, and beer stems; in Class 24, flags, afghans, towels and pennants; in Class 25,
`sweatshirts, sweatsuits, shorts, sport shorts, golf shirts, polo shirts, Henley shirts,
`women's tops, t-shirts, tank tops, jackets (such as of satin and leather), caps, sweaters,
`headbands, belts, vests, headwear (such as skull caps and skulldamas), halter tops, gloves,
`headwraps, scarves and bandannas; in Class 26, cloth and embroidered patches and
`novelty pins; in Class 28, miniature cars, miniature trucks, model cars, Christmas tree
`ornaments, gaming chips and golf balls; in Class 32, bottled water and beer; in Class 33,
`liquor; and in Class 34, ashtrays, cigar cutters, cigarette lighters and matches (see
`Applicant ’s Response to Opposer ’s Second Set ofInterrogatories to Opposer, at No. 16,
`and Kinney Decl., ‘H 18); in Class 35, promoting sports competitions of others, namely,
`motorcycle and vehicle rallies, exhibits, and competitions; promoting the goods and
`services of others by arranging for sponsors to affiliate their goods and services with the
`STURGIS motorcycle rally; promoting economic development in the City of Sturgis and
`the Black Hills area of South Dakota and Wyoming; and mail order, catalog, retail store,
`wholesale store, on-line retail store, and retail television store services featuring general
`merchandise and souvenirs relating to the STURGIS motorcycle rally; and in Class 4],
`entertainment services in the nature of organizing and conducting motorcycle and vehicle
`exhibitions and rallies; organizing and conducting the entertainment events of others,
`namely, motorcycle and vehicle exhibitions, rallies, and competitions; and entertainment
`services in the nature of live civic productions and live music concerts.
`
`(Kinney Decl., 1] 18).
`
`Applicant, through its licensing and sponsorship activities under its proprietary marks, has reaped
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`substantial revenues from the licensed sale of the above—listed goods and services, much of which it has
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`poured back into the Sturgis community in the form of grants and donations for community projects.
`
`

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`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Applicant summarizes the approximate sale of licensed goods under the STURGIS Composite Design and
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`STURGIS marks, the royalty income received by Applicant from the sale of those licensed goods, and the
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`royalties received from sponsorships obtained by the Sturgis Chamber’s licensee, the City of Sturgis, as
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`follows:
`
`
`
`
`
`
`
`
`1986-19922
`1993
`
`1994
`1995
`1996
`1997
`
`1998
`
`
`
`
`
`Net Royalties
`Received]
`
`
`
`
`Sponsorship
`Royalties
`Collected from
`
`
`
`Total Royalties
`Collected from
`
`Licensed Goods
`
`Gross Retail
`Sales of
`
`Licensed Goods
`
`
`
`
`
`
`
` U?’aV".‘“l?_bk?___
`
`Unavable _
`—’
`Z:
`
`A
`
`'
`
`I -
`
`'—
`
`City of Sturgis
`Unavailable
`
`
`Uyewilable
`
`
`
`firth...-an..._.n-d5...'Iuu1.lIh|.I.1
`
`1999 i
`2000
`2001
`2002
`
`H—III—
`
`2003
`2004
`2005
`
`$28,956,308.47
`
`
`
`$1 ,408,344.00
`$273,369.31
`$1,681,713.31
`
`(Applicant’s Response to Opposer’s Second Set of lnterrogatories to Applicant, at No. 17, and Kinney
`
`Decl., at 1| 19). As shown above, the Sturgis Chamber, through its licensees, has sold almost $29 million
`
`in licensed goods bearing the STURGIS designation since l993, resulting in the accrual of over $1.4
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`million in royalties from the sale of licensed goods. (Kinney Decl., 1| 20).
`
`The Sturgis Chamber also licenses its STURGIS and STURGIS Composite Design marks to the
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`City of Sturgis in connection with the annual STURGIS Rally. The City, in tum, sells official
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`sponsorships for the annual event and pays to the Sturgis Chamber a royalty from the sale of such
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`‘Does not include miscellaneous revenues associated with the licensing of the STURGIS Composite Design mark
`and the STURGIS mark.
`
`2 Information for the years 1986-1992 presently is not available.
`
`

`
`
`
`
`
`
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`sponsorships, which royalties, as shown above, have totaled an average of approximately $20,000 since
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`1993. Sponsors of the Sturgis Rally have included Harley-Davidson, RJ Reynolds, Coca-Cola of the
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`Black Hills, the Rapid City Journal, and Williams Distributing of the Black Hills — Budweiser. (Kinney
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`Decl., 1] 21). Thus, as reflected by the above chart and the testimony of the Chamber’s exclusive
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`licensing agent, in recent years the Sturgis Chamber has obtained over $1.6 million in licensing and
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`royalty revenues associated with the STURGIS and STURGIS Composite Design marks. (Kinney
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`Decl., 1] 22).
`
`As a licensee o the Sturgis Chamber, the City of Sturgis not only sells sponsorships for the
`STURGIS Rally, but itlalso expends a great deal of its own resources supporting the STURGIS Rally
`each year in the form of sanitation and security services at the STURGIS Rally, and in the advertisement
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`and promotion ofthe STURGIS Rally each year through the City’s STURGIS Rally Department. Based
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`on information received by the Sturgis Chamber from the City of Sturgis, since 1999 the City of Sturgis
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`has spent over $7.7 million in its support of the Rally. Because of the large crowds attending the
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`STURGIS Rally, businesses like Opposers Sturgis Motorcycles, Inc. (“SMI”) and Good Sports Sturgis,
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`Inc. (“Good Sports”) also reap substantial benefits in the sale of their own merchandise at their respective
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`motorcycle and leather goods businesses because of the efforts of the Sturgis Chamber and its licensee,
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`the City of Sturgis, in preparing for, sponsoring and promoting, protecting and cleaning up after the
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`STURGIS Rally. (Kinney Decl., 1] 23).
`
`The Sturgis Chamber not only strives to promote economic development in the Sturgis
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`community and Black Hills region, but it also gives much of its royalties back to the community in the
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`form of charitable grants and donations. Since 1993, Applicant has contributed over half a million dollars
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`of Sturgis Rally royalty revenues to the betterment of the Sturgis community, by making contributions to
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`over 90 different causes and organizations, including the Meade County summer school program, the
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`Salvation Arrny’s food cupboard, the Sturgis Arts Council, the Sturgis Jaycees, Sturgis Little League,
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`Sturgis Police Department D.A.R.E. program, Sturgis Volunteer Fire Department, Black Hills Area
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`Habitat for Humanity, Crisis Intervention Shelter, special projects of the City of Sturgis, and the Girl
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`10
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`

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`Scouts. These activities have engendered a great deal of goodwill for the Sturgis Chamber and its
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`sponsorship and promotion of the STURGIS Rally. (Kinney Decl., 1] 24).
`
`D. The Opposers and Their Ill-Advised Opposition to the Chamber’s STURGIS
`Application
`
`As described above, the Sturgis Chamber is a non-profit community association