Trademark Facts

TO:                  OUR FELLOW LYMAN ENTHUSIASTS

FROM:             LYMAN BOATS AND LYMAN LIFE

DATE:              DECEMBER 30, 2019

RE:                  TRADEMARK LITIGATION

Since our last letter dated August 17, 2019, Lyman Boats and Lyman Life have continued cordial and professional negotiations with the Lyman Boat Owners Association’s (LBOA) attorney, Mr. Karl May (who also serves as Rear Commodore).  Unfortunately, as of the date of this letter, the LBOA, under the leadership of Commodore Ryan Nagel, has yet to compromise on the two key issues before us.  Meanwhile, in an earnest attempt to end this dispute and arrive at an amicable solution for the benefit of both LBOA members and the much broader Lyman Community and maintain the overall integrity of the LYMAN trademark, both Lyman Boats and Lyman Life have offered to make several compromises as part of a proposed global settlement with LBOA (even though the factual history and law clearly supports our legal position).  These compromises include:

1)  Withdrawing objections to LBOA’s trademark registration for the mark “Lyman Boat Owners Association” in Class 35 for association services.

This would enable the LBOA to continue to carry out its important mission with the protection of a U.S. Trademark. 

2)  Withdrawing objections to LBOA’s trademark registration for the mark “Lyman” in Class 16 for calendars only.

This would enable the LBOA to continue producing and selling its annual calendar, which is a major source of fund raising for the club, with the protection of a U.S. Trademark. 

3)  Recognizing LBOA as the national Lyman Boat Owners Association and agreeing to work collaboratively to promote the group and its events.

Both Lyman Boats and Lyman Life have access to the broader Lyman Community.  Leveraging this access would certainly strengthen the LBOA and enable the club to recruit new members.  A team can always accomplish much more than three separate entities going down diverging paths.

4)  Permit LBOA to create and sell LBOA branded apparel and merchandise utilizing the Lyman mark subject to a licensing agreement with all royalties waived.

LBOA members have long desired club branded apparel and merchandise to show their pride in these legendary boats.  We have presented an equitable path make these wishes come true.   

The only two items standing in the way of ending this dispute and reaching a much desired solution are:

1)  LBOA must abandon and dismiss its trademark application for the “Lyman” mark in Class 35.

Contrary to their belief, the LBOA does not have rights to the stand alone LYMAN mark in Class 35.  It is actually quite simple:  The club’s name is the “Lyman Boat Owners Association” and those four words combined together is how the club represents itself to the world.  We were willing to withdraw our objection to their “Lyman Boat Owners Association” trademark application in the context of a global settlement. 

2)  LBOA must engage in a licensing agreement with Lyman Boats and Lyman Life if the club wants to produce LBOA branded apparel and merchandise.

LYMAN is a federally registered trademark owned by Lyman Boats and exclusively licensed to Lyman Life.  Lyman Boats and Lyman Life have offered several times to provide the LBOA with a sublicensing agreement and waive all royalties typical of such a licensing agreement.  All proceeds from LBOA apparel and merchandise would go directly to the club. 

It is only due to the LBOA’s leadership and unwillingness to compromise on these two aforementioned issues that we remain deadlocked in this dispute with no agreement in place.  While Lyman Boats and Lyman Life have exhausted all efforts toward a global resolution, it is not practical or tenable to settle one issue without settling all issues at the same time.  We can only hope the LBOA Officers and Trustees make the right decision for the betterment of the club and its members and avoid unnecessary and costly litigation before the United States Trademark Trial and Appeal Board.  Rest assured, Lyman Boats and Lyman Life will certainly continue to seek collaborative resolutions with the LBOA as we are well aware of how this divisiveness is hurting the Lyman Community.  However, we all must remember, it is one’s duty to protect the trademark in which it rightfully owns and utilizes, and we will continue to stand firm on the facts of this case. 

Lastly, in an effort to continue our pledge of transparency to the Lyman Community, please see the Trademark Facts menu on our website homepage should you wish to review the trademark litigation settlement proposal letters sent by our attorney, Joseph T. Burke, to Karl May, attorney for the LBOA.  Links to each letter are also posted below the body of this letter.  For the past four months, all parties jointly agreed to pause the trademark litigation in hopes of settling all issues.  That pause expired on December 28, 2019 and despite offers by Lyman Boats and Lyman Life to extend it an additional 30 days, the LBOA leadership failed to respond and accept our offer.  We share these letters in the interest of transparency so that our position (including any offers, compromises and settlement deterrents) is made clear and not otherwise mischaracterized.  You can see with your own eyes the diligent effort we have put forth in reaching a global settlement. 

Respectfully,

Lyman Boats and Lyman Life

Click the links below to view trademark litigation settlement proposal letters sent to the LBOA:

10/25/2019 Trademark Litigation Settlement Proposal Letter to LBOA

11/07/2019 Trademark Litigation Settlement Proposal Letter to LBOA

11/07/2019 Attachments

11/22/2019 Trademark Litigation Settlement Proposal Letter to LBOA

11/26/2019 Trademark Litigation Settlement Proposal Letter to LBOA

12/06/2019 Trademark Litigation Settlement Proposal Letter to LBOA

12/11/2019 Trademark Litigation Settlement Proposal Letter to LBOA

 

TO:                 OUR FELLOW LYMAN ENTHUSIASTS

FROM:            LYMAN BOATS AND LYMAN LIFE

DATE:             AUGUST 17, 2019

RE:                 TRADEMARK LITIGATION

It was brought to our attention earlier this week that the Lyman Boat Owners Association’s (LBOA) Commodore Ryan Nagel sent a letter to the membership that subsequently became the subject of social media commentary. Lyman Boats LLC (Lyman Boats) and Lyman Life LLC (Lyman Life) were subject to attack based on factually incorrect statements.

We want to set the record straight – with facts.

First and foremost, we started our companies out of a passion for Lyman Boats and the values that embody the brand, including family, quality, and tradition. We are passionate about Lymans and support any person or group that upholds the Lyman legacy. Commodore Nagel’s efforts to create a narrative that Lyman Boats and Lyman Life initiated litigation or that this is a “us vs. them” situation is factually inaccurate and erroneous.

This dispute was created by the leadership team of LBOA, particularly Commodore Nagel. We do not believe Commodore Nagel has operated in the best interests of the organization, its members, and sponsors by initiating pending litigation.

Lyman Life supports the LBOA membership, embraces the club’s mission, and shares the members’ overall enthusiasm for all things Lyman. And we have demonstrated our support by serving as a sponsor, proposing countless times to produce LBOA merchandise at cost, suggesting partnering on joint events, and even offering to place LBOA membership applications in all Lyman Life merchandise shipments as a means to help bolster the club’s membership. We want LBOA to thrive and succeed, but unfortunately, all of these collaborative ideas were rejected out of hand by Commodore Nagel.

Tom Koroknay, the founder of Lyman Boats, has spent the better part of his life preserving the Lyman brand, earning him the moniker and worldwide reputation as “Doc Lyman”. Driven by his passion and enthusiasm for the brand, in 1985 he helped found the organization that is today known as the Lyman Boat Owners Association. In 1988, he purchased the entire inventory of Lyman wood boat patterns, jigs, tooling, and company archives from the Lyman Boat Works in Sandusky, Ohio. Using the original tooling to restore boats and produce factory original parts for his many customers, Tom has literally kept hundreds of these boats on the water and the Lyman tradition alive for future generations. In 2004, Tom published the definitive historical book on Lyman Boats entitled Lyman Boats: Legends of the Lakes. Further cementing his ownership of the LYMAN brand, he also acquired the rights to the trademark for the company’s name and logo.

Now, after 17 years of ownership, Tom Koroknay is being accused of fraudulently obtaining the LYMAN trademark – by the leadership of the very organization he helped found and was a member of for over 20 years. This is a blatant act of subterfuge on Commodore Nagel’s part.

In March 2016, Commodore Nagel attempted to reach a licensing agreement with Lyman Boats to use the LYMAN trademark on clothing and other related items. However, Lyman Boats chose instead to enter into an agreement with Lyman Life based in part on its vision, passion, marketing experience, and executable plan.  Upon gaining the exclusive license from Lyman Boats to produce LYMAN branded clothing and accessories, Lyman Life reached out countless times to the LBOA leadership team in an attempt to partner and produce products. Sadly, those efforts were rejected and the acrimony ensued. 

Commodore Nagel then pivoted and alleged he no longer needed or required permission to use the LYMAN trademark. In October 2016, Mr. Nagel posted on social media his intent to produce products in violation of the trademark owned by Lyman Boats and licensed to Lyman Life. Lyman Life sent Commodore Nagel a cease and desist letter. Since then, Lyman Boats and Lyman Life have sent Commodore Nagel no less than eight written offers in an effort to resolve all differences and to prevent further fracturing of the Lyman community.  Commodore Nagel rejected each one and instead sought trademark counsel and led the LBOA’s efforts in filing three trademark applications, which Lyman Boat and Lyman Life ultimately believe jeopardize the LYMAN trademark.    

In 2018, four separate written offers were sent to Commodore Nagel in good faith as an attempt to resolve all differences and partner with Lyman Boats and Lyman Life. Those offers included a variety of options, such as (1) Lyman Life would provide products with the LBOA logo giving the club 100% of the profits; (2) Lyman Life and Lyman Boats would market for the club via traditional and social media channels to encourage membership to the club; and (3) Lyman Life and Lyman Boats would market all LBOA events via traditional and social media channels.

Despite the lack of an agreement and escalation of the situation surrounding LBOA’s pending trademark applications, Lyman Boats and Lyman Life continued to reach out and sent four additional written proposals in 2019 and filed extensions to allow the parties more time to negotiate. The proposals offered (1) further compromises and acknowledgments concerning the LBOA’s production and sale of Lyman calendars; (2) a sub-licensing agreement from Lyman Life enabling LBOA to produce its own LBOA branded clothing; and (3) even going so far as to work towards an amicable solution to formalize the social media based Regional Lyman Groups hosted by Lyman Boats (which LBOA perceives as a threat). Commodore Nagel rejected each one of these agreements and refused to budge on the trademark applications filed by the LBOA. 

We all must understand that there is one exclusive licensee of the LYMAN trademark pertaining to merchandise – and that licensee is Lyman Life.  Understanding the size/scope of the Lyman community and the necessity to work together as a team is why Lyman Life has offered to work collaboratively with LBOA to produce products for its members. Just as Tom Koroknay’s careful stewardship of the LYMAN trademark kept the brand alive and these classic boats afloat, Lyman Life’s marketing and merchandising efforts have elevated the brand and exposed it to an entire new generation.

It is also important to note that since the very inception of the LBOA, the club has relied upon both written and verbal permission to use the LYMAN trademark to represent its club. Commodore Nagel and even past leadership of the LBOA have all recognized the fact that Tom Koroknay/Lyman Boats is the current owner of the LYMAN trademark. It was not until recently that the LBOA has now decided to reject that fact and Commodore Nagel initiated litigation by filing three competing LYMAN trademark applications. Given the many attempts to reach an agreement with the LBOA and compromising in many areas of concern to all parties, Lyman Boats and Lyman Life were put in the untenable position to protect the trademark and could simply bend no further without compromising the overall integrity of the LYMAN trademark. Pure and simple: As the legal owner of the LYMAN trademark, Lyman Boats must protect the trademark. Essentially, any resolution would have to entail a collaborative approach by all parties.

Although we are certainty saddened by the totality of this situation and the strain it may place on the Lyman community, we will continue to seek collaborative resolutions with the LBOA so that its members and others can simply enjoy the beauty of these legendary boats and continue making memories for generations to come.

Sincerely,

Lyman Boats and Lyman Life

 

FREQUENTLY ASKED QUESTIONS

1.  Does Tom Koroknay/Lyman Boats LLC have registered trademarks with the United States Patent and Trademark Office (USPTO) for the LYMAN trademark?

Yes.  There is one and only one legal owner of the LYMAN trademark and that is Tom Koroknay/Lyman Boats.  The facts and public records are absolutely clear on this point.  Please visit the USPTO website:

https://www.uspto.gov

In 1988, Tom purchased the entire inventory of Lyman Boat Works wood-boat patterns, jigs, and associated tooling.  Three years later he purchased the company’s archives pertaining to its wooden boat production.  Seventeen years ago, Tom acquired his first trademark for the company’s name and logo.

2.  Does the Lyman Boat Owners Association (LBOA) have any registered trademark with the USPTO for the LYMAN trademark?

No.

3.  Who initiated the pending LYMAN trademark litigation?

The LBOA initiated the litigation.  Although the LBOA, led by Commodore Ryan Nagel, has previously recognized Tom Koroknay/Lyman Boats as Lyman’s legal trademark owner, Commodore Nagel filed competing trademark applications in March and May of 2018.

We had no choice but to oppose all three LBOA trademark applications and subsequently filed paperwork with the USPTO opposing those applications.

4.  Has the LBOA previously recognized the LYMAN trademark rights of Tom Koroknay/Lyman Boats?

Yes.  Commodore Nagel and previous LBOA leadership have all previously recognized Tom Koroknay/Lyman Boats as Lyman’s legal trademark owner on numerous occasions – including in writing.

The trademark dispute led by Commodore Nagel could have been resolved quickly and amicably.  Lyman Boats and Lyman Life have repeatedly attempted to settle this dispute with no less than eight written agreements. 

The bottom line is this:  Lyman Boats must protect its trademark rights.  If others are allowed to produce and sell merchandise with the LYMAN brand, the trademark is jeopardized.  

5.  Did the LBOA agree to extending the USPTO’s timeframe for opposition to its trademark applications?

Every trademark application that is approved by the USPTO must be published in the Trademark Gazette for a 30-day opposition period before registration.  Lyman Boats and Lyman Life both applied for and were granted 90-day extensions on all three LBOA trademark applications – in addition to the 30-day period that is required by the USPTO. 

Lyman Boats then requested another 60-day extension, which required consent from the LBOA.  After some back and forth, Commodore Nagel did consent to an additional 60-day extension. However, after much discussion and the fact that all previous agreements were rejected by Commodore Nagel, Lyman Boats and Lyman Life felt there simply was no more room to bend to appease the LBOA’s demands and maintain the integrity of the trademark.  We had no choice but to file paperwork with the USPTO opposing all three LBOA applications.

Nonetheless, Lyman Boats and Lyman Life repeatedly attempted to come to an agreement with Commodore Nagel while protecting the LYMAN trademark.  No fewer than eight separate written settlement proposals were sent by Lyman Boats and Lyman Life to Commodore Nagel. All were rejected.  

6.  If you’ve worked over the years to come to a fair agreement with the LBOA and Commodore Nagel, what is the motivation for his actions?

We are puzzled by Commodore Nagel’s motivation in taking these actions, and we do not believe his actions are representative of the organization he now leads – the same organization Mr. Koroknay helped found.

Lyman Boats and Lyman Life support the LBOA membership, embraces the club’s mission, and shares the members’ overall enthusiasm for all things Lyman. 

It is sad that it has come to this when we have made Commodore Nagel many generous offers to work together to expand awareness of the great Lyman brand – and to expand opportunities for LBOA members with quality LBOA merchandise. 

Nonetheless, we will continue to work towards a collaborative solution and hope you will find these FAQs and associated letter as a means of our efforts to remain positive and transparent. 

Please forward any additional questions to:

questions@lymanboat.com