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































































Rolex Big Boat Series - Plenty maintains lead by Tink Chambers, San Francisco


2014 Asia Pacific Student Cup - Count down begins by Bryan Reginald CHAN, Marina Bay


Extreme Sailing Series: Live coverage of Day 3 - view here
Volvo Ocean Race 2014-15 - Going away
Volvo Ocean Race 2014-15 - Practice makes perfect
2014 J/70 World Championship - Contrasting conditions on Day 4
Rolex Big Boat Series - 50 years of big boat racing: a retrospective
2014 Rolex Big Boat Series - Day 2
Snipe Western Hemisphere and Orient Champ: Rios takes the Championship
Volvo Ocean Race: Leg Zero signals start of the significant racing
Extreme Sailing Series: Physically demanding racing for BAR on Day 2
Emirates Team NZ: Holding second overall after Day 2 in Istanbul
Extreme Sailing Series: A force to be reckoned with in Istanbul +Video
ISAF Sailing Worlds - Day 1 images by Jesus Renedo and Pedro Martinez
Marseille One Design: GC32's Armin Strom storms ahead on day 2 + Video
ISAF Sailing World Championships - Racing underway in Santander +Video
ISAF Sailing Worlds, Santander - Erika Reineke claims Radial race win
Santander Worlds 2014 Mat Belcher (Part II) *Feature
Rolex Swan Cup - Mistral keeps fleet shoreside
PWA Cold Hawaii World Cup rescued by wave of local support
ISAF Sailing World Championship, Santander - Opening ceremony images
Volvo Ocean Race 2014-15 - Team Alvimedica geared up for Leg Zero
J/70 World Championship 2014 - Healy surfs into lead   
2014 Rolex Big Boat Series - Day 1   
2014 Rolex Big Boat Series - Gripping first day on the Bay   
2014 Rolex Big Boat Series - Day 1 images by Erik Simonson   
2014 Snipe Western Hemisphere and Orient Championship - Day 4   
Rolex Big Boat Series - Familiar conditions on day 1   
Extreme Sailing Series: Team NZ share lead after Day 1 in Istanbul   
ISAF Sailing World Championships - Thousands attend Santander opening   
Rolex Swan Cup - Day 2 images by Carlo Borlenghi   
GC32: Great Cup: Day 1, Foils, flying and an unstoppable Flavio   
Rolex Swan Cup - Classic day of racing on the Costa Smeralda   
Extreme Sailing Series - Pushed to the limit and dismasted on Day 1   
Volvo Ocean Race - A profile of Abu Dhabi Ocean Racing   
J/70 World Championship - Day 2 images by Chris Howell   
Volvo Ocean Race 2014-15 - Lego Zero crisis scenarios loom   
America's Cup: Bob Fisher on the state of the Cup   
Interview with West Coast International Canoe pioneer Del Olsen: Video   
2015 RC44 Championship Tour announced   
Extreme Sailing Series: Precious practice time put to good use   
J/70 World Championship: Day 2 - Completion of qualifying series   


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 NEW US
LocalAds   DE  ES  FR  IT