Please select your home edition
Edition
Naiad

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 Isotak Ocean 660x82Newport Boat Show 2016 660x82Wildwind 2016 660x82

Related Articles

Gladwell's Line - Does the America's Cup really need a Star Chamber?
The first meeting of the three-man America's Cup Arbitration Panel is believed to have taken place in London The first meeting of the three-man America's Cup Arbitration Panel is believed to have taken place in London in the past week or so. Officially the date hasn't been publicly announced. The venue hasn't been publicly named, and the parties have appeared before a Panel that is publicly nameless.
Posted on 23 Jul
America's Cup - Glenn Ashby on Emirates Team NZ's road to Bermuda
Part 2 of the interview with Emirates Team NZ skipper Glenn Ashby. In this part of the interview we look at what is going to happen once Emirates Team NZ get their 'AC49.5' sailing in Auckland, and how the campaign may shape up before they leave for Bermuda. Ashby wouldn’t be drawn on whether Team New Zealand had started their AC50 build, with July being the usual start of what is usually a five-month build and commissioning period for an end of December launch.
Posted on 10 Jul
America's Cup - Glenn Ashby on Emirates Team NZ's new AC49.5
Sail-World talks with Emirates Team NZ skipper, Glenn Ashby on what is different about the team's new test boat Just under 11 months out from the 35th America’s Cup, Team New Zealand does not seem to be in its customary place at the front of the starting grid to be the first to launch their Challenger, or are they? Although they will be one of the last of the six teams to launch an AC45 Surrogate, Emirates Team New Zealand may have stolen a march with a boat that is as close as you can get to an AC50.
Posted on 9 Jul
Gladwell's Line - Emirates Team NZ launches shadow AC50
Emirates Team NZ took a late but significant step along the road to the 35th America's Cup, with the launch of their AC4 Emirates Team NZ took a late but significant step along the road to the 35th America's Cup, with the launch of their AC45S - as the test boats are called in the Protocol which governs the 2017 event. The bloated Protocol, which now runs to 83 pages of legalese, is restrictive on the size of boat that can be built as a test platform but doesn't restrict the number that can be built.
Posted on 22 Jun
Platino recovery - Family confirms that tug has made rendezvous
Reports in social media say a salvage tug has made a rendezvous with the Platino earlier than expected. Reports in social media by family and friends of Nick Saull, the crew member killed during a catastrophic incident abroad the 66ft yacht Platino say the salvage tug which left on Tuesday night has made the rendezvous earlier than expected. The Facebook report says the tug, Sea Pelican, arrived on Friday morning, the weather in the area has eased and with a more favorable outlook.
Posted on 16 Jun
Rio 2016 - Double Olympic medallist on the delights of Guanabara Bay
Olympic Gold and Bronze medallist Bruce Kendall updates on the 2016 Olympic venue at Guanabara Bay. Olympic Gold and Bronze medallist, and now a windsurfer coach, Bruce Kendall has made several trips to the 2016 Olympic venue at Guanabara Bay. He updates on the pollution issue which is clearly not going to be resolved in a couple of months, and also shares his views on the venue from a sailing competition perspective.
Posted on 14 Jun
America's Cup - Artemis win Chicago as Team Japan wins two races
Louis Vuitton America's Cup World Series got three races away on Super Sunday. After losing the first official day of racing due to light winds and the non-arrival of the onshore breeze, Louis Vuitton America's Cup World Series got three races away on Super Sunday. From a racing perspective this was probably the best day of racing yet in the series which counts for points in the Qualifying Series of the America's Cup in 11 months time.
Posted on 12 Jun
America's Cup - Emirates TNZ NZ and Oracle capsize in Chicago Practice
Emirates Team New Zealand and Oracle Team USA capsized in Practice Racing at the Louis Vuitton ACWS Chicago There was action aplenty on Practice Day at Louis Vuitton America's Cup World Series Chicago, after Emirates Team New Zealand capsized in their match with Oracle Team USA, and then Oracle Team USA capsized later in the day. Team NZ's skipper skipper Glenn Ashby performed some impressive acrobatics ejecting from the AC45 capsize, without injury.
Posted on 11 Jun
America's Cup - Changes proposed to control future Cup options
Changes are being mooted to put the America's Cup on a longer-term footing according to the Daily Telegraph (UK) News that changes are being mooted to put the America's Cup on a longer-term footing is being floated in the Daily Telegraph (UK) by the British Challenger, Land Rover BAR. According to the Telegraph, some of the teams in the 2017 America's Cup are keen to lock-in parameters which would bind successive holders of the a style and frequency for the next America's Cup Match.
Posted on 8 Jun
America's Cup - AC50 construction uncovered - Part 2 - Wings and Costs
Second part of a two-part series looking at the AC50 construction progress at Core Builders Composites Second part of a two-part series looking at the construction progress at Core Builders Composites, and features of the AC50 class which will be used in the 35th America's Cup in Bermuda. Tim Smyth takes us on a tour of the CBC facility in Warkworth, and hour's drive north of Auckland. Where several AC50's, components and wingsails are under construction or have already been shipped to the teams.
Posted on 5 Jun