Laser Lawsuit - Challenge to Laser trademark ownership
by Marine Business-World on 8 May 2013
Another new development in the widening legal dispute between Bruce Kirby, the designer of the world´s best known sailing boat, the Laser dinghy and one of the Laser builders LaserPerformance (LPE) the builder and supplier of Lasers into UK, Europe and North America, because of non-payment of design royalties.
Rolex Miami OCR 2010 © Rolex / Dan Nerney
In March 2013, Bruce Kirby, Inc. filed a complaint in the U.S. Federal Court District of Connecticut, alleging unlawful counterfeiting of the Kirby dinghy by LaserPerformance principal Farzad Rastegar acting with and through LaserPerformance and its associated entities. The case also named the International Sailing Federation (ISAF) and the International Laser Class Association (ILCA) alleging they assisted LaserPerformance by continuing to supply ISAF plaques to the builder, after Kirby had given them formal notice to stop.
ISAF and ILCA defended their position, explaining that they have been acting to protect European and US supply of the boats, as LPE, the notional owner of the Laser trademark in Europe and the USA, had threatened legal action if another company began selling Laser branded boats in those markets. The situation has become very messy with Performance Sailcraft Australia saying that ISAF and ILCA´s decision to provide new plaques removing Bruce Kirby from the plaques left them unable to supply Lasers across Australia, New Zealand and the South Pacific.
This subject is certain to be a hot topic at this weekend’s ISAF mid-year conference in Copenhagen.
Ahead of this meeting, there has been movement on the Laser trademark front, with a posting today on the Kirby operated website www.kirbytorch.com revealing details of a petition to the United States Patent and Trademark office challenging the Laser trademark ownership.
The Connecticut Intellectual Property Rights law firm St. Onge, Steward, Johnston and Reens acting for Bruce Kirby Inc is claiming that the notional owner of the Laser trademark in the USA, a Swiss owned company Velum Ltd. allegedly controlled by Farzad Rastegar, the owner of LaserPerformance has committed fraud in its recent applications for US trademark renewal.
To hold a United States trademark, the owner is required to show proof of active use of the trademark and the grounds for the petition for cancellation is that publically available renewal applications by Velum states that it organizes Laser sailing events, providing Laser event NOR´s as proof.
Serious doubt is being cast on that statement, with Kirby´s attorney Wes Whitmyer, a former North American Optimist Class President and active Melges 20 owner saying today he can find no one in the North American sailing community who has ever heard of Velum organising any sailing events anywhere in the world.
This legal challenge no doubt explains why Kirby had recently filed for US ownership of the Laser trademark, a move which had puzzled close observers of the unfolding drama.
(the full copies of this material has been published on the Improper Course blog
Below is the copy of the Petition to cancel the Laser trademark ownership in the U.S.
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
IN THE MATTER OF U.S. Trademark Registration No. 3459524
Bruce Kirby, Inc., :
: Cancellation No.
v. : [not yet assigned]
Velum Limited, :
PETITION TO CANCEL
Bruce Kirby, Inc. ('Petitioner') hereby petitions to cancel U.S. Trademark Registration No. 3459524 for the mark LASER on the following grounds:
1. Bruce Kirby, Inc. is a Connecticut corporation having a place of business at 213 Rowayton Avenue, Rowayton, CT 06853.
2. According to the records of the USPTO, the current owner of U.S. Trademark Registration No. 3459524 is Velum Limited, a corporation organized under the laws of Antigua and Barbuda, with an address P.O. Box 1699 17, rue du Cendrier Geneva 1 SWITZERLAND 1211.
USPTO records do not disclose an assignment of the registration. USPTO records indicate that the domestic representative for the service of process is Ilan Nordmann, with an address c/o Dory Ventures, 25 Van Zant Street, Norwalk, CT 06855.
3. Petitioner is actively engaged in the field of sailing and the design, manufacture, production, and licensing of boat designs for use in international sailing competitions including the Olympics, and has an interest in maintaining the integrity of those competitions, including without limitation, the trademarks used in connection with those competitions.
4. On information and belief, Registrant has ceased use of the trademark LASER in connection with the services recited in U.S. Trademark Registration No. 3459524 and intends not to resume such use.
5. On information and belief, Registrant has allowed numerous third parties to use the trademark LASER in connection with the services identified in U.S. Trademark Registration No. 3459524 without authorization or license for a period of greater than three (3) years.
6. Records of the USPTO indicate that the Statement of Use that Registrant filed in order to obtain issuance of U.S. Trademark Registration No. 3459524 consisted of specimens used by a third party without authorization or license of Registrant.
7. Registrant knew at the time that it filed the Statement of Use in the prosecution of U.S. Trademark Registration No. 3459524 that the specimens of use were not being used by Registrant or by an authorized user or licensee. Registrant submitted the unauthorized and unlicensed trademark specimens of use in the prosecution of U.S. Trademark Registration No. 3459524 for the purpose of obtaining issuance of a trademark registration to which it was not entitled under the Lanham Act and USPTO regulations.
The USPTO would not have issued U.S. Trademark Registration No. 3459524 absent the submissions of the unauthorized and unlicensed specimens of use submitted with Registrant’s Statement of Use.
8. As a result of its non-use of the LASER trademark in connection with the services identified in U.S. Trademark Registration 3459524 with an intention not to resume use, Registrant has abandoned the trademark LASER with respect to those services within the meaning of 15 U.S.C. § 1127.
9. As a result of its allowing third parties to use the LASER trademark in connection with the services identified in U.S Trademark Registration No. 3459524, Registrant has abandoned the trademark LASER with respect to those services within the meaning of 15 U.S.C. § 1127.
10. As a result of its knowing submission of a third party use of its trademark as purposed use in support of registration, Registration committed fraud in the prosecution of U.S. Trademark Registration No. 3459524.
WHEREFORE, Petitioner prays that the Trademark Trial and Appeal Board grant its petition and cancel U.S. Trademark Registration No. 3459524.
May 7, 2013 /s/ Wesley W. Whitmyer, Jr.
Date Wesley W. Whitmyer, Jr.
Andy I. Corea
Brian L. Repper
ST.ONGE STEWARD JOHNSTON & REENS,LLC