Bruce Kirby Inc. today filed the below petition to cancel US trademark registrations directed to both the word LASER and the Sunburst logo for boats. According to US Trademark Office records, these US registrations are owned by Karaya (Jersey) Limited based in St. Helier, Jersey, Channel Islands. Grounds for the petitions are abandonment and failure to exercise control over the goods made and sold under the marks.
Some history .. 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.
However there now appears to be significant grounds for doubt on the ownership of the Laser trademarks and the iconic Sunburst logo.
This follows the second challenge from Kirby Inc. casting doubt on the trademark ownerships to the United States Patent and Trademark office. This second legal challenge no doubt confirms why Kirby had recently filed for US ownership of the Laser trademark, a move which had puzzled close observers of the unfolding drama.
This subject is now certain to be a hot topic at this weekend’s ISAF mid-year conference in Copenhagen.
Here is a copy of the petition to cancel the Laser trademark and Sunburst logo,
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
IN THE MATTER OF
U.S. Trademark Registration Nos.
Bruce Kirby, Inc., :Petitioner,
Karaya (Jersey) Limited,: Registrant
Cancellation No. v.: [not yet assigned]
PETITION TO CANCEL
Bruce Kirby, Inc. ('Petitioner') hereby petitions to cancel U.S. Trademark Registration
Nos. 1,038,170 (for the mark LASER) and 1,800,653 (for the mark ) (collectively, the 'LASER Trademarks') 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. 1,038,170 is Karaya (Jersey) Limited, a corporation organized under the laws of Jersey, having an address at 14 Conway Street, St. Helier, Jersey.
3. According to the records of the USPTO, the current owner of U.S. Trademark Registration No. 1,800,653 is Karaya (Jersey) Limited, a corporation organized under the laws of Jersey, having an address at 14 Conway Street, St. Helier, Jersey.
4. 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.
5. Petitioner is the owner of U.S. Trademark Application Serial No. 85876136 for the trademark LASER, filed on March 14, 2013 and alleges a bona fide intention to use the mark in commerce under Section 1(b) of the Lanham Act.
6. On information and belief, Registrant has ceased use of the LASER Trademarks in connection with the goods identified in U.S. Trademark Registration Nos. 1,038,170 and 1,800,653 and intends not to resume such use.
7. On information and belief, Registrant has allowed numerous third parties to use the LASER Trademarks in connection with the goods identified in U.S. Trademark Registration No. U.S. Trademark Registration Nos. 1,038,170 and 1,800,653 without authorization and/or license and/or without exercising control of the goods associated with the registered trademarks for a period of greater than three (3) years.
8. As a result of its non-use of the LASER Trademarks in connection with the goods identified in U.S. Trademark Registration Nos. 1,038,170 and 1,800,653 with an intention not to resume use, Registrant has abandoned the LASER Trademarks with respect to those goods within the meaning of 15 U.S.C. § 1127.
9. As a result of its allowing third parties to use the LASER Trademarks in connection with the goods identified in U.S. Trademark Registration Nos. 1,038,170 and 1,800,653, without authorization and/or license and/or without exercising control of the goods associated with the registered trademarks, Registrant has abandoned the LASER Trademarks with respect to those goods within the meaning of 15 U.S.C. § 1127.
WHEREFORE, Petitioner prays that the Trademark Trial and Appeal Board grant its petition and cancel U.S.
Trademark Registration Nos. 1,038,170 and 1,800,653.
Date: May 10, 2013
Wesley W. Whitmyer, Jr.
Andy I. Corea
Brian L. Repper
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 Bedford Street
Stamford, CT 06905
Telephone: (203) 324-6155
Facsimile: (203) 327-1096
ATTORNEYS FOR PETITIONER
CERTIFICATE OF SERVICE
This is to certify that on this date, a true copy of the foregoing PETITION TO CANCEL is being served, by first class mail, postage prepaid, to the owner of record of U.S. Trademark Registration Nos. 1,038,170 and 1,800,653 at the address for the party identified as 'Current Owner' in the USPTO TSDR database:
Karaya (Jersey) Limited
14 Conway Street St. Helier Jersey
With a copy by first class mail, postage prepaid, to the listed Domestic Representative for U.S. Trademark Registration No. 1,800,653:
Ilan Nordmann c/o Dory Ventures
25 Van Zant Street
Norwalk, CT 06855
Date: May 10, 2013
/s/Joan M. Burnett
Joan M. Burnett
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