Please select your home edition
Edition
RS Sailing 728x90

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

Zhik AkzoNobelb 660x82Barz Optics - San Juan Worlds Best EyewearMackay Boats

Related Articles

She’s still here with us, and now we can be there for her
Of the many endearing qualities in Lisa Blair, the one that is paramount is her effervescence. Of the many endearing qualities in Lisa Blair, the one that is paramount is her effervescence. Yet it is what lies behind that which could be her most incredible characteristic. Sometimes you can almost overlook her steely determination, but not for long when you start talking with her. Catching up with her live from Cape Town surely was a vivid reminder of not only what this sailor can accomplish
Posted on 24 Apr
Gladwell's Line - Timeout in Bermuda and a decision OTUSA will regret?
With Emirates Team New Zealand's AC50 now in Bermuda and being re-assembled, it is time to take a breath With Emirates Team New Zealand's AC50 now in Bermuda and being re-assembled, it is time to take a breath from what has been a hectic couple of months, both in Auckland and Bermuda. The third major Practice Session has concluded in Bermuda. This was conducted almost entirely if winds of around 16-25kts - starting to get close to the top end of the range for the AC50's.
Posted on 20 Apr
America's Cup - Glenn Ashby on hitting the AC50's sound barrier
These boats are incredible. The performance that can be achieved in light airs is the amazing thing. The big difference between the AC72, the America's Cup Class, used in the 2013 America's Cup in San Francisco and the smaller AC50 to be sailed in Bermuda, lies in their light and medium air performance. 'These boats are incredible. The performance that can be achieved in light airs is the amazing thing. In 7-8-9-10 knots of breeze, you are sailing at 30kts at times.
Posted on 18 Apr
America's Cup - Bernasconi on expected winning factors in Bermuda
ETNZ's Technical Director, Dan Bernasconi has let out a few clues as to where he thought the differences might lie Emirates Team NZ's Technical Director, Dan Bernasconi has let out a few clues as to where he thought the differences might lie once the six teams entered in the 35th America's Cup. 'We have had a great run', he says. 'We've had a few hiccups along the way, as always. But the boat is going really well. We are getting through manoeuvres very well. And we think our straight line speed is good.'
Posted on 18 Apr
A Q&A with Nicole Breault about women’s match racing in the USA
I caught up with Nicole Breault to learn more about women’s match racing in the USA and about her upcoming Clinegatta. I caught up with Nicole Breault to learn more about the state of women’s match racing in the USA, and to also hear more about her upcoming Clinegatta, which is set to unfurl on the waters of San Francisco Bay this July, and which could be a great resource for other talented female match racers who are looking to sharpen their skills.
Posted on 17 Apr
America's Cup - Team NZ return fire at Coutts' social media bullets
Emirates Team New Zealand have corrected the allegations made by America's Cup organisers Emirates Team NZ have corrected the allegations made by America's Cup organisers in a media release on Thursday (NZT) over the team's daggerboard use. In the release, replayed by America's Cup Events Authority and Oracle Team USA CEO Sir Russell Coutts on his Facebook page. It was claimed that the Kiwi team had an issue with daggerboards and were using a rule they had not supported to keep sailing
Posted on 2 Apr
A Q&A with Charles Pessler, the regatta director of the legendary STIR
I corresponded with Charles Pessler, STIR’s regatta director, to learn about the event’s recent changes and evolutions. I recently corresponded via email with Charles “Chuck” Pessler, who is serving as the regatta director of the legendary STIR, to learn more about the changes and evolutions that have taken place at the event since my 2010 trip to racing paradise.
Posted on 22 Mar
New Pacific 52 class makes its debut in San Francisco
The first of two new-build Pacific 52's from Auckland's Cookson Boats is now sailing in San Francisco. The first of two new-build Pacific 52's from Auckland's Cookson Boats is now sailing in San Francisco. Invisible Hand for San Francisco's Frank Slootman replaces his earlier RP63 of the same name. She will soon be joined by a second Cookson build, Bad Pack (Tom Holthus) from the same moulds. A third, RIO 52 is for RIO 100 supermaxi owner Manouch Moshayedi.
Posted on 18 Mar
A Q&A with Chris Woolsey, regatta chair of the Miami to Havana Race
I talked with Chris Woolsey, regatta chair of the Miami to Havana Race, to learn more about this exciting race to Cuba. The 2017 Miami to Havana Race is set to begin on March 15 and promises high adventure-both sailing-related and cultural-for the sailors lucky enough to be participating in this historical-and for now legal-race. I talked with Chris Woolsey, regatta chair of the Miami to Havana Race and SORC race chairman, to learn more about this exciting race to Cuba.
Posted on 13 Mar
Gladwell's Line - Of Carnage, Characters and Colour
About this time of an America's Cup season, the sap begins rising as new boats are launched About this time of an America's Cup season, the sap begins rising as new boats are launched, and Cup fans get their first sight of the various team designers' response to the latest America's Cup Class rule. In the monohull days, of course, we initially only got a partial glimpse thanks to the shrouding practices adopted by all teams to hide the nether regions of their America's Cupper
Posted on 13 Mar