LASER FOLKS - Speak Now or Forever Hold Your Peace

by Pam

Dear Laser sailors, ILCA, and Performance Sailcraft Australia: 

You have until June 2, 2017 to file an opposition with the U.S. Trademark Office to stop Velum Ltd. from being granted the exclusive right to use the Laser starburst mark in connection with the services below: 

Organization of sports competitions; Organizing and conducting sporting events for the purpose of helping high school seniors earn a college scholarship in their respective sport; Organizing and conducting college sport competitions and athletic events; Organizing, arranging, and conducting sailing events; Organizing, conducting and operating sailing tournaments; Instruction in the nature of sailing clinics; Instruction in the nature of sailing lessons; Organizing and conducting college sport competitions and athletic events; Organizing and conducting sporting events for the purpose of helping high school seniors earn a college scholarship in their respective sport; Organizing and conducting sporting events for the purpose of helping high school seniors earn a college scholarship in their respective sport; Providing information relating to organizing community sporting and cultural activities, contests and games; Providing information relating to the organizing of educational, cultural, sporting, or entertainment exhibitions; Providing news and information via an Internet web site in the field of competitive sailing 

 

On December 28, 2016, Velum, Ltd. applied for registration of the US service mark on the Laser starburst design. It has been approved and was published for opposition on May 2, 2017. 

Publication for purposes of Opposition

According to the US Trademark Office, "Any party who believes it will be damaged by the registration of the mark may file a notice of opposition (or extension of time therefor) with the Trademark Trial and Appeal Board. If no party files an opposition or extension request within thirty (30) days after the publication date, then eleven (11) weeks after the publication date a certificate of registration should issue."

Background

Karaya (Jersey) Limited and Velum, Ltd. are the most recent owners of the trademarks for the word LASER as well as the Laser starburst design. That right has historically been limited to the use of the mark in connection with goods, like sailboats, etc. They never acquired the right to use the mark in connection with the provision of services, like running regattas. Or more specifically, the exclusive right to use the mark in connection with organizing, conducting and operating sailing tournamements. As we all know, that right has historically been assumed to be owned by the ILCA and, by extension, the members of the ILCA. 

So what happens if Mr. Farzad Rastegar (the man behind the shell companies) successfully obtains the exclusive right to use the Laser mark in connection with running regattas? We can only speculate. He is a businessman after all and not a sailor. I would assume he is obtaining the mark for the purpose of making money. He already uses the offshore companies to license the use of the mark to Laser Performance, then shifts that income stream offshore for tax purposes. Being able to collect licensing fees from the ILCA, or its members, every time they have a Laser regatta seems like an income stream to me and would seem a logical conclusion to draw as to his intent. Of course, he might be of a more benevolent mind and he might just be trying to secure the mark to make sure no one can come along and hold the ILCA hostage while demanding they change fundamental rules to suit one side over another, or that they relinquish their patents on the Mark II sail, or that all big events be run in one builder's territory and and not another, or some other such mischief. 

So, what can you, the ILCA, members of the ILCA, or PSA do about this?  If ever there was a time to pay an attorney to protect your rights, it is now. 

Where should they look? Well, for starters, I would certainly ask for a qualified legal opinion, on the following:

1. Look at the specimen they filed as proof of their use of the mark.

2. Look up the term Collective Trademark because the ILCA and, by extension, its members, would appear to possibly have a priority claim of use of the mark in connection with regattas. A win of a collective trademark for the ILCA might also lead to being able to unravel some of the other LASER trademark registrations in the US.

3. Look at the ownership chain of title for the existing LASER trademarks. There are some breaks and the true owner may not be Velum at all. There may even be a possibility to claim that the LASER mark has effectively been abandoned for years.  An opposition filed by the ILCA to this latest registration attempt might turn out to uncover a bigger problem and ultimately shift ownership of all the LASER marks in the US to the ILCA. 

4. Look at Velum's previous attempts to register the service mark in the US and at Bruce Kirby's oppositions to the registrations. One of the oppositions is still pending which I assume prompted them to refile this recent application using a different specimen, trying a slightly different spin.  Velum argues that it has already licensed the trademark to the ILCA and then extensively detailed the ILCA's control over the entire Laser game.  Is there such a license?

5. Oh, and PSA, when you look at the Kirby oppositions you will find that the US Trademark Trial and Appeal Board has already ruled that the agreement signed previously, which prevented Kirby from ever contesting the marks, does not apply to this newly claimed use of the mark for services. It's fair game.  If the ILCA won't defend their right to the mark under a collective trademark or otherwise, then there may be angles PSA can exploit to claim a right in the service mark in the US.

Lastly, those of you in the EU.  Might already be time to bend over.  The service mark in the EU was filed at the same time, has already gone through the opposition period, and a registration certificate was issued on April 12, 2017. I wonder if the ILCA has already received a cease and desist letter asking them to pay a licensing fee to run Laser regattas in the EU.  Does any of this have a connection in why the charter fee is so steep for the Master Worlds in Croatia this year?  Surely not.