Please select your home edition
Edition
Kilwell - 1

Kirby files to cancel Laser Trademark and Sunburst Logo for Boats

by MarineBusiness-World.com on 11 May 2013
© Mick Anderson / Sailingpix.dk http://sailingpix.photoshelter.com/

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.
1,038,170
1,800,653

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.

Respectfully submitted,

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
Email: litigation@ssjr.com

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

Related Articles

Laser Lawsuit - Kirby´s dramatic move
Kirby Inc. increases pressure on LP, ISAF and the ILCA when they asked Court to issue a prejudgment remedy against LP. Kirby Inc. yesterday dramatically increased the pressure on LP, ISAF and the ILCA when they asked the US Federal Court in Connecticut to issue a prejudgment remedy against LP. If this was to be granted as requested LP and its associates would be unable to build Lasers or have anyone else build them for them, while the Courts then could take their time hearing the case.
Posted on 18 May 2013
Laser Lawsuit - Challenge to Laser trademark ownership
New development in legal battle between Bruce Kirby, the designer of the Laser dinghy and LaserPerformance. 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.
Posted on 8 May 2013
ISAF and ILCA on thin ice? Intellectual Property Rights and Copyright
Commentary on lawsuit between Laser designer Bruce Kirby, builder Laser Performance and its associates and ISAF and ILCA Extracts from an article written for Scuttlebutt USA by IPR lawyer John Harwood-Bee on the lawsuit between Laser designer Bruce Kirby, builder LPE and associated companies and ISAF and ILCA.
Posted on 6 May 2013
ISAF Laser intervention - Supply problems looming?
The long running dispute now it appears that its likely to threaten supplies of Lasers. The long running dispute between the designer of the Laser dinghy Bruce Kirby and one of the Laser builders LaserPerformance, the builder and supplier of Lasers into UK, Europe and North America, because of non-payment of design royalties is now much wider than ever before and now it appears that its likely to threaten supplies of Lasers.
Posted on 1 May 2013
Laser ISAF ILCA action brings expanded Bruce Kirby law suit
Bruce Kirby Inc. today filed a First Amended Complaint adding claims related to the ILCA Rule Change, the ISAF Reversal In a widely anticipated move Bruce Kirby Inc. today filed a First Amended Complaint adding claims related to the ILCA Rule Change, the ISAF Reversal on the Fundamental Rule change, the apparent new ISAF Plaques and other matters, and adding as a party the owner of the Laser trademarks in Europe: Velum Limited ITM SA (Antigua and Barbuda).
Posted on 30 Apr 2013
It's the boat that matters, not the name
We have had calls and e-mails from around the world asking if there is anything that can be done to save the Laser. In an attempt to rescue the Laser Class from its downhill course of the past few years I have reluctantly decided that a name change, or re-branding is necessary. During the past three or four years dealers have had difficulty getting timely delivery of boats, and in particular, of parts.
Posted on 24 Apr 2013
Laser Legal tangles continue
Major developments with ISAF changing tack, now in conjunction with ILCA moving boldly to remove Kirby´s design rights. Previously ISAF had recognised that LPE were no longer licensed Laser builders and had stopped the issuance of plaques by ILCA. Major developments in the last few days with ISAF changing tack and now in conjunction with ILCA moving boldly to remove Bruce Kirby´s design rights
Posted on 24 Apr 2013
Statement from the International Laser Class Association
Newly designed ISAF plaques available to all the current ISAF and ILCA approved manufacturers of the Laser dinghy in acc ISAF and ILCA have taken steps to assure the uninterrupted supply of class legal Laser brand sailboats around the world. This includes making newly designed ISAF plaques available to all the current ISAF and ILCA approved manufacturers of the Laser dinghy in accordance with the ILCA class rules.
Posted on 24 Apr 2013
ISAF Statement On International Laser Class
ISAF has been named a co-defendant in the legal proceedings filed in the US District Court. ISAF Statement - On 22 March the International Sailing Federation (ISAF) published a statement concerning the Laser Class dispute and proceedings filed by attorneys acting for Bruce Kirby. The legal situation is on-going but ISAF can confirm that: ISAF has been named a co-defendant in the legal proceedings filed in the US District Court.
Posted on 24 Apr 2013
The Kirby Torch - Latest news after Laser lawsuit
Canadian Bruce Kirby designed a 'car-topper' in 1969. It was launched as a Laser in 1970 Canadian Bruce Kirby designed a 'car-topper' in 1969. It was launched as a Laser in 1970 and more than 210,000 Lasers later, it is THE dinghy success story.
Posted on 11 Apr 2013
Bakewell-White Yacht DesignKilwell - 3Sailutions - Rutgerson