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





































UK superyacht industry on the rise by British Marine Federation,


















Predictwind helps you pick the best time to depart by Richard Gladwell Sail-World.com/nz,












Sailtime founder to share role of 'Skipper' with team Vicsail
Clipper Motor Yachts expands with Boat Equity
Check out the Fountaine Pajot Saba 50 at Autumn boat shows
Collinson FX Market Commentary: July 22, 2014 - Europe watched
Brisbane's biggest outdoors expo to celebrate ten years
Vietnam Marina Development: ONE°15 Vung Ro Bay Marina Resort
Sydney Harbour welcomes premium boat storage
Sunseeker boss Stewart McIntyre abruptly leaves luxury yacht builder
One week to go until the 2014 Sydney International Boat Show
Costa Concordia - the $2.25 billion salvage operation ready to begin
Launching at Sydney Boat Show - the all new Falcon 300HT-360 HT range
Volvo Penta reveals keel cooling option for diesel engines
Carla Demaria named keynote speaker for METS 2014
Learn about life beneath water at Gold Coast International Marine Expo
FIXMYBOAT.com.au – Browse, compare and decide
Boat Shows - the engine powering the boating industry
'Honey, Let's Go Boating!' next best-seller for Finkelstein *Feature
2014 Brisbane Boat Show - Set to add new features
Collinson FX Market Commentary: July 19, 2014 - Step into Wonderland
European Commission to take UK to court over red diesel
Understanding the Ocean's role in Greenland Glacier melt   
America's Cup: Updates on Team Australia withdraw   
2016-2017 America's Cup - Team Australia withdraws   
Collinson FX Market Commentary: July 18, 2014 - AUD moves up   
Collinson FX Market Commentary: July 17, 2014 - KIWI takes hammering   
Revealing report on Search for American yacht Nina released *Feature   
ECOfishers and AMA to establish NSW Fisheries Taskforce   
PredictWind's Weather Routing opens your navigation options - try it!   
Collinson FX Market Commentary: July 16, 2014 - Oz confirms low rates   
Cameron Appleton joins North Sails   
National 4x4 Outdoors Show - Unprecedented exhibitors expected   
New-to-New Zealand products at the Auckland On Water Boat Show   
Auckland on the Water Boat Show: Two new Bavaria yachts on display   
AYSS PacificNet/Tahiti voted a success!   
Collinson FX Market Commentary: July 15, 2014 - Rising interest hits   
July 2014 edition of Finnfare has been published   
Taiwan's first marina a Superior effort *Feature   
Vaavud launches generation 2 wind meter   
Research highlights marinas economic, social and environmental benefit   
Solar 1 Monte Carlo Cup 2014 - Monaco sunshine new fuel for motorboats   


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