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

Volvo Ocean Race: Fleet charges the door of the Doldrums Casino *Feature by Richard Gladwell/Sail-World.com/nz
The Volvo Ocean Race has lifted intensity again on Day 9 with the fleet spread across 100nm of ocean and charging in a line for the turning point of Fernando de Noronha, 220nm off the Brazilian coast. ... [more]  

The first eight days of the 2014-15 Volvo Ocean Race have been filled with more excitement and tighter racing than anyone could have anticipated. Up until Saturday morning, Leg One has left the fleet with few tactical options and therefore has kept everyone tightly packed as one unit of seven boats. ... [more]  

As expected the third day of the 2014 La Torche PWA Grand Slam proved to be a quiet affair with very light winds throughout the day. After a chilly and overcast start, the sun eventually broke through to produce another beautiful afternoon in La Torche. ... [more]  

Volvo Ocean Race 2014-15. The sun’s out. It’s warm – not too hot, but warm enough for just a tee shirt. Ian Walker is stood at the helm of his Emirati boat, generous Atlantic trade winds whistling past his ears. 'We’re going straight through,' he claims, confidently. 'What Doldrums? - they’re going to say. Azzam isn’t even going to slow down.' ... [more]  

At 1700 CET in the Rolex Middle Sea Race, 113 yachts had rounded Stromboli, the active volcano that marks the most northerly point of the course. Race leader on the water, Esimit Europa 2, was less than 20 miles from Favignana and preparing to turn south with 289 miles to go and is expected to finish the race in the early hours of Wednesday 22 October, which would be well outside the course record ... [more]  

It is with great pleasure that the Star Sailors League announces that two more top Brazilian sailors will be joining the fleet of 20 super-champions taking part in the Star Sailors League Finals 2014 being held for the second consecutive year at Nassau Yacht Club in the Bahamas between December 1st and 7th. ... [more]  

Volvo Ocean Race 2014-15, Day Nine onboard Team Alvimedica. It’s hard to explain the complexity of the weather in this part of the world. No computer model or forecaster can accurately predict the winds because the air here is dry and warm, 23c now, and the typical barometric pressure gradients that generate them become very weak. ... [more]  

Volvo Ocean Race 2014-15, Day Nine onboard Team SCA. We’re a boat on a mission: catch the fleet. And they’re getting closer by the mile. The first time I sailed past Cape Verde islands was in 2010 when I was helping deliver a catamaran from Gibraltar to Antigua, W.I. ... [more]  

Thailand bids for 2016 IODA ‘Optimist’ World Championships by Jordan Rumsby, Royal Varuna Yacht Club
Pattaya's Royal Varuna Yacht Club has submitted a bid to host the 2016 International Optimist Dinghy Association World Championships, offering the world's most talented junior sailing teams a chance to experience the steady wind, sunshine, smiles, great food, and family-friendly attractions of Thailand's top dinghy sailing destination ... [more]  

Photographer Ellen Hoke was on the water at the Farr 40 Worlds sailed from the St Francis Yacht Club, San Francisco, and provided this second gallery of images from the Final Day - Day 4 Prizegiving ... [more]  

Bill Green - builder and sailor passes on by Malcolm McKeag, Scuttlebutt Europe, Lymington, England:
Bill Green, San Francisco-born sailor, Navy jet jockey (not a lot of people know that); US Coastguard; shrimp-boat hand (not a lot of people know that either); One Ton Cup winner and most latterly proprietor of Green Marine slipped quietly away from this life ... [more]  

Tom Burton (AUS) retained World #1 in the Laser after a tremendous fight back at ISAF Sailing World Cup Qingdao where he picked up bronze. The Australia had a tough opening day, finishing down the pack in both races but as the week progressed he worked his way up and sealed bronze on the final day to keep hold of World #1. ... [more]  

Photographer Ellen Hoke was on the water at the Farr 40 Worlds sailed from the St Francis Yacht Club, San Francisco, and provided this gallery of images from the Final Day - Day 4 ... [more]  

Photographer Ellen Hoke was on the water at the Farr 40 Worlds sailed from the St Francis Yacht Club, San Francisco, and provided this gallery of images from Day 2 ... [more]  

Rolex Middle Sea Race 2014 - A hard day's night by Media Royal Malta Yacht Club
Rolex Middle Sea Race - As high pressure moved in from the north, the area around Stromboli had virtually no gradient wind and for those yachts yet to reach Stromboli, a south flowing current has slowed proceedings even further. For the competitive offshore yacht racer, performing well in light wind is more difficult than blasting through a storm at top speed. ... [more]  

34th Student Yachting World Cup - France knew today its best day since the beginning of the competition. They spent the two races at the very first positions, even rivaling with the ultra-dominant English team. They showed today an astounding panache, and can now hope to improve their ranking before the end of the SYWoC. ... [more]  

The Chinese entry Donfeng Race Team, has lost her lead on Day 9 of the Volvo Ocean Race, with boats on the east and western side of the course threatening. Two hours before the most recent sked at 0640hrs UTC, Dongfeng was still being listed by Volvo Ocean Race as the leader. But Team Brunel is now listed as the leader, but on a time taken projection basis, Team Brunel is fifth. ... [more]  

Flying Dreams is a movie directed by the talented Elsa Blayau is an ode to ocean, water sports and femininity. Based on an original idea from Alex Udin, Elsa Blayau transformed the project to a complete story and brought it to reality with this realization. ... [more]  

The 70th running of the Cruising Yacht Club of Australia’s annual Rolex Sydney Hobart Yacht Race is living up to expectation with 98 high-calibre entries received so far, from Sean Langman’s 1932 built Maluka of Kermandie, the oldest and smallest boat at nine metres, to the super maxis. The most talked about boat though, is the Verdier Yacht Design and Vplp 100 footer, Comanche. ... [more]  

Volvo Ocean Race: Blogs from the Boats - Leg 1, Day 8 plus Videos *Feature by Richard Gladwell/Sail-World.nz/com
Several of the On Board Reporters aboard, provide their unique views of Leg 1, Day 8 of the Volvo Ocean Race - in text, images and video. Catch a birthday at sea on board Team Brunel, and unravel the fishing net with Team SCA Hear and see how the crews coped with the front that came through in the nigh ... [more]  

Shala Youngerman and her team from Southwestern Yacht Club won the 23rd annual Linda Elias Memorial Women’s One-Design Challenge Sunday in this two-day fleet race regatta organized and sponsored by the Long Beach/Los Angeles Women’s Sailing Association and hosted by Long Beach Yacht Club. ... [more]  

After three days of racing in the Valparaíso bay, the Santander team was crowned champion of the Off Valparaíso Race, first stage of the Soto 40 South American Tour that was held in the Yacht Club de Chile with the participation of eight boats. ... [more]  

Day two of the La Torche PWA Grand Slam saw the glorious golden sunshine continue together with the waves, but unfortunately the wind remained absent again. To keep the crowds entertained Jules Denel (JP / NeilPryde) and birthday boy - Antoine Martin (JP / NeilPryde) - attempted a bit of wave tow-in with varying degrees of success, as Antoine Albeau (RRD / NeilPryde) took control of the jet ski. ... [more]  

Volvo Ocean Race: Dongfeng consolidates lead on Day 8 *Feature by Richard Gladwell, Sail-World.com/nz
After cutting between the Cape Verde islands, separating from the rest of the Volvo Ocean Race fleet, Chinese entry, Dongfeng gained an initial significant lead, which they are in the process of consolidating. One routing option for the then race leader Abu Dhabi Ocean Racing, gave the team the option of cutting inside the island group, they are close to the optimum course for Fernando off Brazil ... [more]  

RS:X Youth World Championships - All set for Clearwater action by RS:X Olympic Windsurfing Class Association
Mild, breezy weather, temperate Gulf of Mexico waters and wide bands of sugar white sand - this is the place where 2014 RS:X Youth World Windsurfing Championship racing is about to start. 'Clearwater Beach is the perfect spot to play host to the young windsurfers gathering here from around the world for international competition', says Frank Chivas. ... [more]  

The first 24 hours of the Rolex Middle Sea Race has seen the fleet progress slowly up the eastern seaboard of Sicily towards the Strait of Messina. By 16.00 on day two, a mere ten per cent of the competition had passed through the Strait and started the leg to Stromboli, where they will turn west towards the Egadi Islands. ... [more]  

Volvo Ocean Race 2014-15 - If only it were that easy. Amazingly we did manage to replace the rudder and regain first position amongst the fleet however just hours afterwards, navigator Pascal Bidégorry was faced with an important strategic decision. ... [more]  

Ian Moore, navigator on Cookson 50, Mascalzone Latino, is no stranger to the Rolex Middle Sea Race, this is his fourth and Ian was part of the winning crew on Bryon Ehrhart's TP52, Lucky in 2010. Ian describes the tactical nuances of the first night at sea. ... [more]  

Top videographer and photographer, John Navas, was on the water for the final day of the Farr 40 Worlds being sailed on San Francisco. ... [more]  

The brilliant conditions of last week’s opening race of the season were duplicated today when the Australian 18 Footers League’s Major A. Frizelle Trophy race was sailed in a 20–knot North East wind on Sydney Harbour. Current JJ Giltinan champion Gotta Love It 7 team of Seve Jarvin, Sam Newton and Scott Babbage showed why they are the world’s best team. ... [more]  

Volvo Ocean Race - The fleet has finally left the West African Coast. They are now in the trade winds, making the westerly course across the Atlantic Ocean to FernandoThey will find the Cape Verde Islands in the way and that will cause some issues of navigation. ... [more]  

2014 ISAF Sailing World Cup Qingdao - It was a light wind, big wave finish at ISAF Sailing World Cup Qingdao as the medallists were decided across the six fleets competing on the waters of the Beijing 2008 Olympic Sailing Competition. ... [more]  

2014 Rolex Farr 40 World Championship - In life, timing is everything. And, after seven years in the Farr 40 class, the timing was right for New York financier Alex Roepers to achieve a long-held goal of winning the Rolex Farr 40 World Championship. ... [more]  

Coast Guard rescues two near Wachapreague
2014 Off Valparaíso Race - Day 2
La Torche PWA Grand Slam - Massive swell on day 1
Volvo Ocean Race: Welcome to Al's Ocean Cafe
Argo Group Gold Cup survives Hurricane Gonzalo
Volvo Ocean Race: Dongfeng regains lead after incident packed Day 7 *Feature
Volvo Ocean Race: Dramatic video of Dongfeng rudder replacement
Volvo Ocean Race - Team Alvimedica bounces back
Volvo Ocean Race - Team SCA expecting the expected + Video
Rolex Middle Sea Race - New record for Mediterranean classic
ISAF Sailing World Cup Qingdao - Medallists decided across six fleets
Volvo Ocean Race - Impressive turnaround for Dongfeng Race Team +Video
Volvo Ocean Race: Race closer than leaderboard suggests - Leg 1, Day 6
Volvo Ocean Race: Dongfeng Race Team break rudder after collision
2014 Rolex Farr 40 World Championship - Famous breeze frustrates
2014 Off Valparaíso Race - Day 1
Sunfish World Championship - Victory for Argentina's Francisco Renna
Volvo Ocean Race - Feeling the pressure six days in
Volvo Ocean Race - Alvimedica cautiously cruising down coast of Africa
Volvo Ocean Race - Team Brunel still within striking distance
Volvo Ocean Race - Testing times for Team SCA + Video   
Beijing 2008 Olympic legacy lives on in Qingdao + Video   
La Torche PWA Grand Slam - A return nearly 20 years in the making   
ISAF Sailing World Cup Qingdao - Game on for remaining fleets   
Farr 40 Worlds: Day 2 Image and Video gallery *Feature   
Day 5 of the Chris Benz Lüderitz Speed Challenge: 4 more records!   
Volvo Ocean Race: Coastal racing at its best - Leg 1, Day 5   
Chris Poole new number one Open Match Racer in U.S.   
Rolex Farr 40 World Champs - Plenty leads as Struntje Light impresses   
2014 Soto 40 South American Tour - Back in action   
Volvo Ocean Race - Mail arrival brings excitement for Team SCA + Video   
Volvo Ocean Race - Jens Dolmer getting restless onboard Team Brunel   
Volvo Ocean Race - Too close for comfort as fleet pushes on + Video   
Foils or not? Explanations from IMOCA Class President Jean Kerhoas   
Ben Ainslie's Olympic Finn sails are up for auction   
Volvo Ocean Race - Team Alvimedica goes to school   
Volvo Ocean Race - Intensity level rises for Dongfeng Race Team   
China Cup Regatta - Olympic medallists and offshore legends to race   
St. Barth Cata Cup - Friendly US rivalry on the Island   
ISAF Sailing World Cup Qingdao - Tight and tactical racing + Video   


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