sail-world.com
 
 
News Home Cruising Photo Gallery Video Gallery
Sail-World.com : Laser Lawsuit - Challenge to Laser trademark ownership
Laser Lawsuit - Challenge to Laser trademark ownership


'Rolex Miami OCR 2010'    © Rolex/Dan Nerney

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.

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. The situation has become very messy with Performance Sailcraft Australia saying that ISAF and ILCA´s decision to provide new plaques removing Bruce Kirby from the plaques left them unable to supply Lasers across Australia, New Zealand and the South Pacific.

This subject is certain to be a hot topic at this weekend’s ISAF mid-year conference in Copenhagen.

Ahead of this meeting, there has been movement on the Laser trademark front, with a posting today on the Kirby operated website www.kirbytorch.com revealing details of a petition to the United States Patent and Trademark office challenging the Laser trademark ownership.

The Connecticut Intellectual Property Rights law firm St. Onge, Steward, Johnston and Reens acting for Bruce Kirby Inc is claiming that the notional owner of the Laser trademark in the USA, a Swiss owned company Velum Ltd. allegedly controlled by Farzad Rastegar, the owner of LaserPerformance has committed fraud in its recent applications for US trademark renewal.

To hold a United States trademark, the owner is required to show proof of active use of the trademark and the grounds for the petition for cancellation is that publically available renewal applications by Velum states that it organizes Laser sailing events, providing Laser event NOR´s as proof.

Serious doubt is being cast on that statement, with Kirby´s attorney Wes Whitmyer, a former North American Optimist Class President and active Melges 20 owner saying today he can find no one in the North American sailing community who has ever heard of Velum organising any sailing events anywhere in the world.

This legal challenge no doubt explains why Kirby had recently filed for US ownership of the Laser trademark, a move which had puzzled close observers of the unfolding drama.

(the full copies of this material has been published on the Improper Course blog
http://www.impropercourse.com/2013/04/laser-trademark-for-running-regattas.html?showComment=1367974742538c6522235950632464300

Below is the copy of the Petition to cancel the Laser trademark ownership in the U.S.


IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
IN THE MATTER OF U.S. Trademark Registration No. 3459524

LASER

Bruce Kirby, Inc., :
:
Petitioner, :
: Cancellation No.
v. : [not yet assigned]
:
Velum Limited, :
:
Registrant. :

PETITION TO CANCEL

Bruce Kirby, Inc. ('Petitioner') hereby petitions to cancel U.S. Trademark Registration No. 3459524 for the mark LASER 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. 3459524 is Velum Limited, a corporation organized under the laws of Antigua and Barbuda, with an address P.O. Box 1699 17, rue du Cendrier Geneva 1 SWITZERLAND 1211.

USPTO records do not disclose an assignment of the registration. USPTO records indicate that the domestic representative for the service of process is Ilan Nordmann, with an address c/o Dory Ventures, 25 Van Zant Street, Norwalk, CT 06855.

3. 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.

4. On information and belief, Registrant has ceased use of the trademark LASER in connection with the services recited in U.S. Trademark Registration No. 3459524 and intends not to resume such use.

5. On information and belief, Registrant has allowed numerous third parties to use the trademark LASER in connection with the services identified in U.S. Trademark Registration No. 3459524 without authorization or license for a period of greater than three (3) years.

6. Records of the USPTO indicate that the Statement of Use that Registrant filed in order to obtain issuance of U.S. Trademark Registration No. 3459524 consisted of specimens used by a third party without authorization or license of Registrant.

7. Registrant knew at the time that it filed the Statement of Use in the prosecution of U.S. Trademark Registration No. 3459524 that the specimens of use were not being used by Registrant or by an authorized user or licensee. Registrant submitted the unauthorized and unlicensed trademark specimens of use in the prosecution of U.S. Trademark Registration No. 3459524 for the purpose of obtaining issuance of a trademark registration to which it was not entitled under the Lanham Act and USPTO regulations.

The USPTO would not have issued U.S. Trademark Registration No. 3459524 absent the submissions of the unauthorized and unlicensed specimens of use submitted with Registrant’s Statement of Use.

8. As a result of its non-use of the LASER trademark in connection with the services identified in U.S. Trademark Registration 3459524 with an intention not to resume use, Registrant has abandoned the trademark LASER with respect to those services within the meaning of 15 U.S.C. § 1127.

9. As a result of its allowing third parties to use the LASER trademark in connection with the services identified in U.S Trademark Registration No. 3459524, Registrant has abandoned the trademark LASER with respect to those services within the meaning of 15 U.S.C. § 1127.

10. As a result of its knowing submission of a third party use of its trademark as purposed use in support of registration, Registration committed fraud in the prosecution of U.S. Trademark Registration No. 3459524.

WHEREFORE, Petitioner prays that the Trademark Trial and Appeal Board grant its petition and cancel U.S. Trademark Registration No. 3459524.
Respectfully submitted,
May 7, 2013 /s/ Wesley W. Whitmyer, Jr.
Date Wesley W. Whitmyer, Jr.
Andy I. Corea
Brian L. Repper
ST.ONGE STEWARD JOHNSTON & REENS,LLC


by Marine Business-World

  

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

http://www.sail-world.com/index.cfm?nid=109236

10:34 PM Tue 7 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:

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
11 Apr 2013  The Kirby Torch - Latest news after Laser lawsuit
23 Mar 2013  ISAF speaks out about Laser Class dispute






News - USA and the World

With just over a day left to reach the turning mark at Fernando de Nonoha, 220nm off the coast of Brazil, Abu Dhabi Ocean Racing has retained the lead she built in the Doldrums. She is unlikely to be headed, although the second boat on the water, Team Brunel is projected to be less than an hour behind at Fernando ... [more]  

Volvo Ocean Race 2014-15, Onboard Team Alvimedica. I’d hate to come across as being impossible to please but after days of wanting out of the doldrums, days of struggling with routines, with sleep, with a lack of regularity and consistency to our schedules, and of course--predictability to the weather—we’re 'out' and still trying to find it ... [more]  

There was a shakeup at the top on day three of the 2014 RS:X Youth Worlds in Clearwater, Florida! Fully recharged thanks to the lay day yesterday, all competitors were eager to enter the final stretch of the competition in Clearwater, and the planing conditions in the forecast certainly contributed to the excitement on the beach. ... [more]  

Rolex Middle Sea Race - Keeping a good watch by Media Royal Malta Yacht Club
Peter Dimech, Principal Race Officer and Race Chair spoke about the storm that raged through the Rolex Middle Sea Race fleet. “The remaining yachts racing in the Rolex Middle Sea Race are expected to arrive at the Royal Malta Yacht Club by today and tomorrow. Whilst the wind speed has decreased, the sea state is still significant and we are keeping a close watch on the yachts still at sea. ... [more]  

Volvo Ocean Race 2014-15, Day 13 onboard Team SCA. I’m unsure if I should be nervous, excited, stressed, or thrilled today. As today I get to have fish guts smeared over me only to then become officially apart of King Neptune’s kingdom. ... [more]  

The opening day of the 105-boat China Cup International Regatta saw old rivalries renewed in the Beneteau 40.7 class, as Vatti Sailing stole victory from Vanke Longcheer in the opening Simpson Marine Passage Race from Hong Kong to Shenzhen. ... [more]  

Team Alvimedica Navigational Strategist, Anderson Reggio, explains the issues ahead of the crews in the remaining half of leg 1 of the 2014-15 Volvo Ocean Race. After the Equator and Fernando, the weather looks to be shaping up to be pretty standard for the South Atlantic. The St Helena High which typically dominates this body of water is the main driver for breeze in the short term. ... [more]  

The next landmark, or ‘sea mark’ if you will, for Leg 1 is crossing the Equator, as Team Alvimedica continue to make their way south to round Fernando de Noronha off the coast of Brazil. Crossing this latitude is not like crossing any other on their way around the world, but has special significance for sailors who have never crossed the 0° parallel of latitude. ... [more]  

Volvo Ocean Race 2014-15 - Mapfre cruzará el Ecuador hacia las 13:00 aproximadamente. ... [more]  

Argo Group Gold Cup - A front slowly crossing Bermuda brought with it an overcast sky and rain squalls. Nonetheless, despite squelching their way ashore completely soaked, the Group 2 crews enjoyed the morning’s stronger breeze, the wind less shifty having veered into the southwest overnight, blowing down Hamilton Harbour rather than across it. ... [more]  

RenaissanceRe Junior Gold Cup - In second place, Adam Larson of Bermuda has seven points and had a great day on the water today. Larson, whose family is still without electricity after Hurricane Gonzalo, said he has been getting to bed a lot earlier these days and feels that the conditions also favored his performance today. ... [more]  

As predicted in last night's preview in Sail-World, the ORMA 60 TeamVodafone Sailing has set a new course record for the 119nm course in the PIC Coastal Classic. ... [more]  

Taylor Canfield (ISV) US One, top seed in Group 2, is the first skipper to qualify for the Quarter Finals in the 2014 Argo Group Cup. Canfield lost his first match in day one of racing against Chris Poole (USA) Riptide Racing. Since then the number two skipper on the Alpari World Match Racing Tour has sailed to seven straight points. ... [more]  

The forecast for day six at the La Torche PWA Grand Slam offered a slight possibility of producing some racing, but unfortunately the wind never really materialised meaning the sailors spent another day on hold. Throughout the day there were gusts of up to 10 knots, but the wind failed to improve beyond that. ... [more]  

Volvo Ocean Race 2014-15, Day 12 onboard Team SCA. This morning the boat was so quiet you could hear a pin drop, shortly after sun up we were hooning along in 20kts in a torrential downpour, by late afternoon we were sailing backwards, and who knows what tonight will bring. ... [more]  

The push and shove of 12 knots of Atlantic breeze – things are looking up in the Volvo Ocean Race. On board Abu Dhabi Ocean Racing, things are looking up. First in the fleet, and out of the Doldrums, they’re heading fast towards the Equator, trade winds blowing gusts of encouragement around their ears. ... [more]  

Volvo Ocean Race - Day 12 for Team Alvimedica by Amory Ross, Team Alvimedica
Volvo Ocean Race 2014-15, Day 12 onboard Team Alvimedica. There is no question as to the origins of the phrase 'down in the doldrums;' the monotony of these days is painfully apparent. It’s a pattern too familiar: a night of variable conditions—torrential rain and 20 knots of wind one minute, no wind and starry skies the next. Feast or famine. ... [more]  

With only nine days remaining until the close of entries, one of the smallest, most audacious and memorable yachts in the history of the CYCA’s Rolex Sydney Hobart Yacht Race, appropriately became the 100th entry. A mere 10.5 metres, James Cameron’s Hick 35, Luna Sea, will again do duty as one of the pintsized yachts in fleet for the 70th edition of the 628 nautical mile race. ... [more]  

Today was the last day of competition at the Student Yachting World Cup. Even though England’s victory was already for sure, the top-5-ranking could change a lot with two more races: Italy was second with 46 pts, Ireland third with 47 pts, Norway fourth (52 pts) and Switzerland fifth (58.2 pts)… the USA followed with 59 pts! ... [more]  

A varied and international fleet ranging from 40 to 100ft (12.19 to 30.48m) will set off for Grenada on Saturday 29th November from Lanzarote, the most eastern in the Canary Islands chain, in the Royal Ocean Racing Club's Transatlantic Race. ... [more]  

The United States will be the second most heavily represented nation at the Star Sailors League Finals when they take place at Nassau in the Bahamas between December 1st and 7th. Reflecting the consistency, quality and number of sailors involved in the Star class, the United States has the largest representation in the Star Sailors League with 294 skippers and 376 crew. ... [more]  

Airbus and Oracle Team USA have forged a technology partnership. As Official Innovation Partner of Oracle Team USA for the 35th America’s Cup, Airbus will share the know-how of its engineers and experts in fields such as aerodynamics, instrumentation and simulation, composites, structures, hydraulics and data analysis to work with the Oracle Team USA design team. ... [more]  

Thursday has proved another dramatic day in the story of the 2014 Rolex Middle Sea Race. While yesterday (Wednesday) was a day of seamanship and survival as yachts battled storm force winds, it was also a day of arrivals as the same winds pushed competitors to the finish. ... [more]  

The Royal Malta Yacht Club has been a hive of activity both day and night, welcoming back yachts taking part in the Rolex Middle Sea Race. By Midday on Day Six 34 yachts have finished the race and 25 yachts have retired. Each and every sailor that has taken part, including those that are still out there, has a story to tell for years to come. ... [more]  

Ian Williams (GBR) GAC Pindar made a near perfect start to in the Argo Group Gold Cup in Bermuda yesterday. The British skipper who stands top of the the Alpari World Match Racing Tour and is second in the ISAF rankings, goes into today's remaining round robin flights leading group 1. ... [more]  

Volvo Ocean Race 2014-15, Onboard Team Brunel. 'At this rate, it will take a century before we get to Cape Town,' sighs Jens Dolmer, standing on the bow. He is trying in vain to push the flapping foresail outwards. There is hardly a breath of wind. In the distance, the sun is sinking into the ocean. ... [more]  

Over 100 riders from more than 20 different countries have already registered and over the two weeks will compete against each other in the pro, amateur, master, grand master, youth and women's fleets for the honor of becoming the Aloha Classic Champions. ... [more]  

After probably the toughest 24 hours in the 46 year history of the race, Lee Satariano's Maltese J/122, Artie finished the Rolex Middle Sea Race on Thursday 23 October 2014 at 00h 45m 5s in an elapsed time of 4Days 13hours 35mins and 05secs. ... [more]  

Despite the best efforts of Tropical Storm Fay and then Hurricane Gonzalo, the Argo Group Gold Cup, the sixth stage of the 2014 Alpari World Match Racing Tour, set sail on Bermuda’s Hamilton Harbour today, albeit postponed by 24 hours. ... [more]  

Today, Ben Ainslie Racing (BAR) took to the water for the first time from their temporary base in Southampton, sailing their foiling AC45. The boat originally raced under BAR colours during the America’s Cup World Series in 2012-13, and has subsequently been modified to fly on hydrofoils. ... [more]  

The calm weather returned on day five of the La Torche PWA Grand Slam as the wave sailors recovered from yesterday’s punishing, but brilliant, conditions. After a chilly start, with the thermometer reading just five degrees celsius, the temperature soon rose with the appearance of the sun, making for another stunning autumn day. ... [more]  

Day five of the Rolex Middle Sea Race has proved a day of reckoning for the competing fleet. The forecast strong northwesterly wind has arrived and consistently blown over 25 knots with gusts exceeding 40 knots. The effect has been to catapult the previously slow moving yachts towards the finish line in Malta. ... [more]  

A day and a night of uncertainty - later, the Doldrums will come to an end for the Volvo Ocean Race teams. By tomorrow morning, the fleet should be sailing safely in the southeasterly trade winds. So – who won this equatorial lottery? What was the best place to cross this convergence zone, where two hemispheres and two weather systems collide? ... [more]  

Volvo Ocean Race - Dongfeng Race Team takes on the Doldrums
Volvo Ocean Race - Team Alvimedica, somewhere in the windless ITCZ
Rolex Middle Sea Race - Artie gunning for glory
Volvo Ocean Race - Another perspective from Team SCA
Rolex Farr 40 World Championship - Success in San Francisco
RS:X Youth World Windsurfing Championship - Intense racing + Video
Rolex Middle Sea Race - Big breeze and lumpy seas
The first sail that changes lives
Volvo Ocean Race: Blogs from the Boats - Leg 1, Day 10 plus Videos *Feature
Volvo Ocean Race: Leg 1 turns inside out in Doldums *Feature
34th Student Yachting World Cup La Rochelle 2014 - Fifth race day
2014 Argo Group Gold Cup - Match racers defy Gonzalo
Volvo Ocean Race: Big gains for two boats in Doldrums *Feature
Argo Group Gold Cup - Qualifying Groups set
Renaissance Re Junior Gold Cup - Kids breeze past Hurricane Gonzalo
DSS to revolutionise IMOCA 60s, both new and old
ISAF Sailing World Cup Miami: Groupe Beneteau sponsors US Sailing Team
Volvo Ocean Race - The bright side of the Doldrums
Volvo Ocean Race - Team Vestas Wind contemplates the tropics + Video
Volvo Ocean Race - Dull day, crazy night for Dongfeng Race Team
Volvo Ocean Race - Team SCA ready for equator crossing   
Volvo Ocean Race - Tough challenge for Brunel's Pablo Arrarte Elorza   
RS:X Youth Worlds - Hard work on day 1 + Video   
St. Maarten Heineken Regatta - NoR released, entries open for 2015   
Rolex Middle Sea Race - A turning point for the fleet   
Volvo Ocean Race 2014-15 - Leg one – Doldrums for dummies   
Volvo Ocean Race: Blogs from the Boats - Leg 1, Day 9 plus Videos *Feature   
Rolex Middle Sea Race 2014 - Fight to the finish   
Student Yachting World Cup - Fourth race day + Video   
New improved swell forecasting and more locations from PredictWind   
Volvo Ocean Race: Day 9 final report - Lead continually changing   
Renaissance Re Junior Gold Cup - An opportunity for growth   
Volvo Ocean Race: Fleet charges the door of the Doldrums Casino *Feature   
La Torche PWA Grand Slam - Light winds on day 3   
Volvo Ocean Race: Navigators throw away the routing textbook   
Volvo Ocean Race - The Doldrums, a navigational nightmare + Video   
Rolex Middle Sea Race - Maltese yachts top the leader board   
Star Sailors League Finals - Torben Grael and Jorge Zarif join fleet   
Volvo Ocean Race - Team Alvimedica heads for the Doldrums   
Volvo Ocean Race - Team SCA, a crew on a mission   


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