sail-world.com
 
 
News Home Cruising Photo Gallery Video Gallery
Sail-World.com : Kirby files to cancel Laser Trademark and Sunburst Logo for Boats
Kirby files to cancel Laser Trademark and Sunburst Logo for Boats


Mick Anderson/Sailingpix.dk    Click Here to view large photo


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.

Bruce Kirby -    


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


by MarineBusiness-World.com

  

Click on the FB Like link to post this story to your FB wall

http://www.sail-world.com/index.cfm?nid=109354

9:58 PM Fri 10 May 2013GMT


Click here for printer friendly version
Click here to send us feedback or comments about this story.

Click for further information on
2013 Bruce Kirby Inc vs PSE, ISAF, ICLA etc.,

Related News Stories:

08 May 2013  US Laser trademarks up for grabs?
08 May 2013  Laser Lawsuit - Challenge to Laser trademark ownership
06 May 2013  ISAF and ILCA on thin ice? Intellectual Property Rights and Copyright
01 May 2013  ISAF Laser intervention - Supply problems looming?
30 Apr 2013  Laser ISAF ILCA action brings expanded Bruce Kirby law suit
24 Apr 2013  It's the boat that matters, not the name
24 Apr 2013  Laser Legal tangles continue
24 Apr 2013  Statement from the International Laser Class Association
24 Apr 2013  ISAF Statement On International Laser Class
12 Apr 2013  Kirby Torch replaces Laser, production heads to Canada
MORE STORIES ...






News - USA and the World































America's Cup: Challenger calls Competitor Meeting ahead of deadline *Feature by Richard Gladwell Sail-World.com/nz,




































Volvo Cork Week - Three bullets for ballistic catapult
Nacra 17 Europeans - Besson and Riou lead the overall standings
Formula 16 World Championship - Aussies claim title in Newport
Vestas Sailrocket 3 - The journey beckons
Clipper Round the World - London to provide emotional heroes welcome
ISAF Youth Worlds - Italians to lead RS:X fleet in Tavira
Vestas Sailrocket 3 - Over the Horizon
Foiling Week - Italian Moth Championship - Final results
NYYC Race Week - Yachting history on display
Rescued sailors reach shore after dramatic ocean rescue
Half Ton Classics Cup: Swuzzlebubble out front on Day 1 + Video
New York Yacht Club Race Week - Yachting history on display
Volvo Cork Week - Thrilling conditions welcome international fleet
Nacra 17 Europeans: Success for Italy's Bissaro and Sicouri
America's Cup: 2017 venue short-list reduced to two Cities
Formula Windsurfing Youth and Master Worlds overall
49er and 49erFX Europeans: Pitfalls aplenty on day 1 + Video
ISAF Youth Worlds - Laser Radial sailors look to join list of legends
Coville soon to chase solo circumnavigation record in giant trimaran
Fierce competition at the Meanline Fins Slalom Challenge
Volvo Ocean Race - Team Brunel opt for experienced winner   
Bakewell-White supermaxi designed to take Transpac's Barn Door Trophy *Feature   
Crew rescued by navy patrol from J/111 racer after Mayday in storm   
Team Alvimedica practice in Newport, RI - Photos   
18 foot skiff European Championship (Open Europeans) - Final results   
Nacra 17 European Championships - No action on day 1   
ISAF Youth Worlds - 29er and SL16 sailors prepare for battle + Video   
Volvo Ocean Race: Eight new crew members named by teams   
Volvo Ocean Race: New additions to Spanish team announced   
2014 Cape Panwa Hotel Phuket Raceweek - Phuket Island is ready to host   
PWA Awaza World Cup - Cyril Moussilmani and Delphine Cousin on top   
Foiling Week - Moth Class Italian Open Championship Day 2   
America's Cup: Luna Rossa foiling in AC45s at their Italian base   
Star World Championship - Germans claim dramatic win in Malcesine   
PWA Awaza World Cup - Down to the wire in Turkmenistan   
Route Halifax Saint-Pierre - Off to France!   
Nacra 17 Europeans - La Grande Motte back in Olympic classes arena   
Stena Match Cup Sweden - Hansen hat trick in Marstrand + Video   
Route Halifax Saint-Pierre Race keeps an eye on Arthur   
World Match Racing Tour: See the Finals replay at the Stena Match Cup   


For this week's complete news stories select    Last 7 Days
   Search All News
For last month's complete news stories select    Last 30 Days
   Archive News







Sail-World.com  


















Switch Default Region to:

Social Media

Asia

Australia

Canada

Europe

New Zealand

United Kingdom


http://www.sail-world.com/event_images/image/Twitter_logo_small.png http://www.sail-world.com/event_images/image/FaceBook-icon.png  http://www.sail-world.com/event_images/image/RSS-Icon.png

United States

Cruising Northern

Cruising Southern

MarineBusiness World

PowerBoat World

FishingBoating World

 

Contact

Commercial

News

Search

Contact Us

Advertisers Information

Submit news/events

Search Stories/Text

Feedback

Advertisers Directory

Newsletter Archive

Photo Gallery

 

Banner Advertising Details

Newsletter Subscribe

Video Gallery

Policies

 

 

 

Privacy Policy

 

 


Cookie Policy

 

 



This site and its contents are © Copyright TetraMedia and/or the original author, photographer etc. All Rights Reserved.  Photographs are copyright by law.  If you wish to use or buy a photograph contact the photographer directly.
XLXL WAS US
LocalAds   DE  ES  FR  IT