MarineBusiness-World.com
 
 
News Home FishingBoating Photo Gallery Australian Cruising Sail-World Australia
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.marinebusiness-world.com/index.cfm?nid=109236

11:34 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






Marine Business News















































Great Barrier Reef plan released for comment by Queensland Minister for Environment,
















Brisbane Boat Show begins *Feature by Jeni Bone,




PSP Southampton Boat Show - Opening day images
Collinson FX Market Commentary: September 12, 2014 - NZD loses ground
P&O and Princess Cruise Ships to continue operating into Abell Point
Abbott Government delivers on marine conservation promise
Garmin ClearVü™ with CHIRP sonar-chartplotter series
Multihull Central: Record sales, Outremer blog, Regattas and much more
Collinson FX Market Commentary: September 11, 2014 - Dollar rallies
Victorian Marina Industry hit with above average taxes and charges
4th Multihull Solutions Whitsunday Rendezvous an outstanding success
Lowrance signs exclusive partnership with Skeeter Boats
Get your entry in to win a Suzuki Powered Rigiflex Safety Boat
Collinson FX Market Commentary: September 10, 2014 - Apple inspires
Stefan Boating World launches new models at Brisbane Boat Show
Record numbers expected at 2014 Ocean Marina Pattaya Boat Show
British Sailing Team join forces with Zhik for new clothing range
Command Thrust outboards with Counter-Rotation find eager market
Collinson FX Market Commentary: September 9, 2014 - UK Breakup
Record sales driven by new interest in catamarans
Southport Yacht Club celebrates opening of 68th season *Feature
Brisbane Boat Show starts Friday - biggest in 10 years! *Feature
Marine Auctions adds new recruits *Feature   
Ministerial advisory group launched by united marine industry sector   
2014 Auckland on Water Boat Show: Coming up at the end of September   
Australian research sheds light on ocean garbage gyres *Feature   
Sevenstar Yacht Transport names Kris Caren West Coast Representative   
New Masts for an historic Australian boat - the Young Endeavour   
Round the World racer joins Southern Pacific Inflatables   
Dinghy foiling takes off around the world   
2014 Gold Coast Int'l Marine Expo - Quintrex factory opens its doors   
New exhibition explores role of Royal Australian Navy in WWI   
18 anti-piracy weapons for ships to fight pirates   
Hamilton Island Audi Race Week 2015 - Accommodation options   
Sydney Sailboat Expo 2015 site confirmed   
Skysol Frame Large: A new shading solution for sunroofs   
Collinson FX Market Commentary: September 6, 2014 - Russian control   
Collinson FX Market Commentary: September 5, 2014 - Nervous Election   
Collinson FX Market Commentary: September 4, 2014 - 'Rock-star' fades   
Enerdrive, national distributor for Fischer Panda Generators   
New earlier date for ICA’s Cruising Prep Seminar proving popular   
Southern Spars One Design complete 500th J/70 rig   


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 MBW
LocalAds   DE  ES  FR  IT