Improper Course: LASER Trademark Up for Grabs in the USA?

LASER Trademark Up for Grabs in the USA?

by Pam

As noted in my LaserPerformance United Unions?post, Rastegar has quite the maze of confusingly incestuous entities.? It appears that he lost track and the result is that he may very well have lost some of the trademarks for LASER, SUNFISH, VANGUARD, ZUMA, RED DRAGON and NOMAD.? Quarter Moon Inc. d/b/a Vanguard Sailboats sold several trademarks to Karaya Holdings Limited, an Irish entity, which then transferred the trademarks to Karaya (Jersey) Limited, a Jersey Island entity.? Seems fairly straight forward except that some errors in the transfer to the Jersey entity makes it questionable that the last transfer is valid which leaves everything still in the name of the Irish entity which is now dissolved.? Whether or not the errors can be papered behind to salvage ownership of the marks may have to be determined by a court of law. ?
So, to be specific on the errors, check for yourself.? Here is the Vanguard to Karaya Irish assignment?and here is the Karaya Irish to Karaya Jersey assignment.? Look closely at the supporting document of the second assignment.? It?s just a name change from Karaya Jersey?s former name, Dorsal, to its current name.? Did you catch the error?? Who cares what the former name of Karaya Jersey is when it is Karaya Irish that owns the trademarks.? Note that the assignment was trying to go from an Irish company to a Jersey company and submitted a Jersey name change as evidence of assignment.? Even the US Patent and Trademark Office (USPTO) didn?t catch this error and incorrectly lists Karaya Jersey as the current owner. So then, being curious, I pulled the publicly available paperwork for Karaya Irish to see if I could determine if they properly conveyed the trademarks to Karaya Jersey which would mean an easy filing with the USPTO to correct things.? What I found was that the paperwork did indeed list the conveyance to Karaya Jersey but they listed the transfer as of January 1, 2009.? If you go back and look at the name change document they filed with the USPTO, you?ll see that the name change from Dorsal Irish to Karaya Irish didn?t happen until February 23, 2009.? Meaning, it could maybe be argued that the trademarks were conveyed to an entity that wasn?t yet legally in existence. But then the icing on the cake is that the Karaya Irish entity, which, at present, may be the last entity to hold clear title to the trademarks, was dissolved on October 22, 2010.? That might be a problem.? Hard to paper behind something when the conveyance was hosed up and the entity that needs to correct it is dead.? Confused?? Easy to see how they lost track of which door the trademarks were hiding behind.? Doug attempted to draw a diagram to make it simple.? It didn?t help matters that they had two Karaya entities and two Dorsal entities, a pair of each in each country, and in Jersey one became the other but in Ireland they remained separate and then 2 were dissolved, leaving only 1.? That?s just plain jacked up. But don?t get too excited about the prospect of freeing the trademarks.? The LASER marks that are possibly up for grabs are in the classes of goods that include sailboats and sails.? LP has yet another foreign entity, Velum Limited, that still has a firm grasp on the LASER mark that secures the class of goods that includes regattas.? But, I haven?t dissected that file yet ? So, since the International Laser Class Association (ILCA) isn?t telling us anything, I decided to do a little speculating on what?s going on.? Most people have heard about the critically received 8 year deal that LP secured with the Inter-Collegiate Sailing Association to use LP manufactured boats exclusively for all national and semi-final college championships.? After securing such a deal, I have to wonder if the ILCA will be influenced to go in the direction of following through with their equally critically received proposed rule change. ?I mean from a business point of view, LP has the LASER trademarks and the 8 year exclusive deal with ICSA.? That seems like a fairly strong bargaining position. But, let?s think about this.? If LP entities don't have clear title to the trademarks, can that be used to invalidate the 8 year exclusive agreement?? And, if you think about it, LP doesn?t even own the trademarks.? I mean, we all know that some how, some way, Rastegar is the ultimate owner but the ILCA?s fundamental rule change indicates that the manufacturer has to have trademark rights.? Legally, LP doesn?t own the trademarks and the ILCA doesn't elaborate on what 'trademark rights' means. ?Right now, LP can?t build boats because the ILCA rule change is in limbo, LP doesn?t own the LASER trademarks, and even if they satisfy the 'trademark rights' requirement, it?s still possible that the LASER trademark as it pertains to sailboats and sails, is totally up for grabs.? And then I found this very interesting post about why trademark holdings companies are a bad idea.? Skip down to the section titled: Legal Pitfalls of Licensing through Trademark Holding Companies: "One of the defenses mounted ... for invalidity is that the licensor holding company doesn?t exercise sufficient control over its licensees. Rather, they argued, control is exercised by the holding company?s parent corporation and the holding company has therefore made a ?naked license.? The remedy for a naked license is for the court to declare that the trademark in question was abandoned by the trademark owner."

Source: http://www.impropercourse.com/2012/11/laser-trademark-up-for-grabs-in-usa.html

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