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I'm pretty sure the lawyer would have known about letsencrypt.org and their Let's Encrypt project before filing this. So that being said, reading the fine prin

by natch 10y ago

I'm pretty sure the lawyer would have known about letsencrypt.org and their Let's Encrypt project before filing this. So that being said, reading the fine print of what the lawyer had to sign in order to submit the application, shouldn't the lawyer be vulnerable to perjury charges? Excerpt from http://tsdr.uspto.gov/documentviewer?caseId=sn86790719&docId=RFA20151020074647#docIndex=3&page=1 http://tsdr.uspto.gov/documentviewer?caseId=sn86790719&docId... : The signatory believes that: if the applicant is filing the application under 15 U.S.C. § 1051(a), the applicant is the owner of the trademark/service mark sought to be registered; the applicant is using the mark in commerce on or in connection with the goods/services in the application; the specimen(s) shows the mark as used on or in connection with the goods/services in the application; and/or if the applicant filed an application under 15 U.S.C. § 1051(b), § 1126(d), and/or § 1126(e), the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the goods/services in the application. The signatory believes that to the best of the signatory's knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive. The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

rhizome 10y ago
shouldn't the lawyer be vulnerable to perjury charges? 18 U.S.C. § 1001 isn't perjury, it's false statements, the same charge as lying to the FBI (Scooter Libby, Rod Blagojevich, Bernie Madoff, etc.). It can still result in prison, though!
brian_cloutier 10y ago
You would have to prove the lawyer knew. It sounds difficult to prove short of an email exchange and I have no idea how the courts work but hopefully you can't get access to a company's emails just by filing a suit based on "I'm pretty sure"
- pbhjpbhj 10y ago
  You might argue "due diligence", that as Lets Encrypt appear on a simply internet search the lawyer's claimed ignorance [if they do claim ignorance] shows a wilful act to hide from knowing that it was already an established trademark. There is no way - on balance of probabilities - that any company enlists a trademark lawyer to register a mark without that lawyer first doing an internet search (eg for associations with nefarious businesses [or one's powerful enough to sue you], or negative associations with crime, etc.). Google could probably provide the information about such a search being made from the lawyer's offices!
  - josho 10y ago
    I've received legal advice to take care not to discover patents. Because if we knew of the existence of a patent then it could be shown that we were knowingly infringing on the patent. I wonder if trademark law has similar incentives to behave irrationally.
    - DannyBee 10y ago
      " Because if we knew of the existence of a patent then it could be shown that we were knowingly infringing on the patent." This legal advice was been valid at one point. However, nowadays, willful infringement requires more than just knowledge. It has for a few years, but the most recent supreme court decision also strongly supports this. See Halo Electronics v. Pulse electronics (http://www.supremecourt.gov/opinions/15pdf/14-1513_db8e.pdf http://www.supremecourt.gov/opinions/15pdf/14-1513_db8e.pdf) in the concurrence: First, the Court’s references to “willful misconduct” do not mean that a court may award enhanced damages simply because the evidence shows that the infringer knew about the patent and nothing more. Second, also note: “failure of an infringer to obtain the advice of counsel . . . may not be used to prove that the accused infringer wilfully infringed.”
- combatentropy 10y ago
  If not perjury, then negligence. I ran into Let's Encrypt without looking for it. It kept popping up in the tech news section over the past year. Maybe lawyers don't peruse the tech news, not even tech lawyers. Well, the lawyer's client most likely does. And really, the lawyer is just filing the request on the client's behalf. Besides it doesn't matter. A simple web search would have turned up Let's Encrypt. Not doing a simple web search before filing a trademark request is negligence.
mhw 10y ago
I'm also puzzled that Let's Encrypt's Trademark policy [1] strongly suggests that 'Let's Encrypt' is a trademark (word mark?) that they have registered, and yet according to the most recent letter sent by the USPTO [2] "The Office records have been searched and there are no similar registered or pending marks that would bar registration [...]" [1] https://letsencrypt.org/trademarks/ https://letsencrypt.org/trademarks/ [2] http://tsdr.uspto.gov/documentviewer?caseId=sn86790719&docId=OOA20160208224028#docIndex=1&page=1 http://tsdr.uspto.gov/documentviewer?caseId=sn86790719&docId...
- jayrhynas 10y ago
  I don't see anything in their trademark policy that implies they have registered any of their marks yet. In fact, all the marks in the "included, but not limited to" list use ™ instead of ®, the later which can only be used with registered trademarks. Searching the USPTO database[1] for "let's encrypt" only reveals Comodo's 1B registrations. All that being said, under US law you still have trademark rights even before you register the mark, and ISRG definitely has first use on the Let's Encrypt mark. [1] http://tmsearch.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk http://tmsearch.uspto.gov/bin/gate.exe?f=login&p_lang=englis...
  - gnoway 10y ago
    This seems like a good example of why you should go through the registration though. Because now they are going to have to use the courts to resolve the situation; presumably (I hope?), if they'd registered, a new registration application for the exact same mark would not even be accepted.
    - slavik81 10y ago
      There's a challenge period during trademark registration when they can voice their objections. They may be able block it if they're not too late. > You may challenge an application for trademark registration at the USPTO by filing an opposition with the TTAB within 30 days after it is published in the Official Gazette. http://www.uspto.gov/page/about-trademarks http://www.uspto.gov/page/about-trademarks

by natch 10y ago

rhizome 10y ago

shouldn't the lawyer be vulnerable to perjury charges? 18 U.S.C. § 1001 isn't perjury, it's false statements, the same charge as lying to the FBI (Scooter Libby, Rod Blagojevich, Bernie Madoff, etc.). It can still result in prison, though!

brian_cloutier 10y ago

You would have to prove the lawyer knew. It sounds difficult to prove short of an email exchange and I have no idea how the courts work but hopefully you can't get access to a company's emails just by filing a suit based on "I'm pretty sure"

pbhjpbhj 10y ago
You might argue "due diligence", that as Lets Encrypt appear on a simply internet search the lawyer's claimed ignorance [if they do claim ignorance] shows a wilful act to hide from knowing that it was already an established trademark. There is no way - on balance of probabilities - that any company enlists a trademark lawyer to register a mark without that lawyer first doing an internet search (eg for associations with nefarious businesses [or one's powerful enough to sue you], or negative associations with crime, etc.). Google could probably provide the information about such a search being made from the lawyer's offices!
- josho 10y ago
  I've received legal advice to take care not to discover patents. Because if we knew of the existence of a patent then it could be shown that we were knowingly infringing on the patent. I wonder if trademark law has similar incentives to behave irrationally.
  - DannyBee 10y ago
    " Because if we knew of the existence of a patent then it could be shown that we were knowingly infringing on the patent." This legal advice was been valid at one point. However, nowadays, willful infringement requires more than just knowledge. It has for a few years, but the most recent supreme court decision also strongly supports this. See Halo Electronics v. Pulse electronics (http://www.supremecourt.gov/opinions/15pdf/14-1513_db8e.pdf http://www.supremecourt.gov/opinions/15pdf/14-1513_db8e.pdf) in the concurrence: First, the Court’s references to “willful misconduct” do not mean that a court may award enhanced damages simply because the evidence shows that the infringer knew about the patent and nothing more. Second, also note: “failure of an infringer to obtain the advice of counsel . . . may not be used to prove that the accused infringer wilfully infringed.”
combatentropy 10y ago
If not perjury, then negligence. I ran into Let's Encrypt without looking for it. It kept popping up in the tech news section over the past year. Maybe lawyers don't peruse the tech news, not even tech lawyers. Well, the lawyer's client most likely does. And really, the lawyer is just filing the request on the client's behalf. Besides it doesn't matter. A simple web search would have turned up Let's Encrypt. Not doing a simple web search before filing a trademark request is negligence.

mhw 10y ago

I'm also puzzled that Let's Encrypt's Trademark policy [1] strongly suggests that 'Let's Encrypt' is a trademark (word mark?) that they have registered, and yet according to the most recent letter sent by the USPTO [2] "The Office records have been searched and there are no similar registered or pending marks that would bar registration [...]" [1] https://letsencrypt.org/trademarks/ https://letsencrypt.org/trademarks/ [2] http://tsdr.uspto.gov/documentviewer?caseId=sn86790719&docId=OOA20160208224028#docIndex=1&page=1 http://tsdr.uspto.gov/documentviewer?caseId=sn86790719&docId...

jayrhynas 10y ago
I don't see anything in their trademark policy that implies they have registered any of their marks yet. In fact, all the marks in the "included, but not limited to" list use ™ instead of ®, the later which can only be used with registered trademarks. Searching the USPTO database[1] for "let's encrypt" only reveals Comodo's 1B registrations. All that being said, under US law you still have trademark rights even before you register the mark, and ISRG definitely has first use on the Let's Encrypt mark. [1] http://tmsearch.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk http://tmsearch.uspto.gov/bin/gate.exe?f=login&p_lang=englis...
- gnoway 10y ago
  This seems like a good example of why you should go through the registration though. Because now they are going to have to use the courts to resolve the situation; presumably (I hope?), if they'd registered, a new registration application for the exact same mark would not even be accepted.
  - slavik81 10y ago
    There's a challenge period during trademark registration when they can voice their objections. They may be able block it if they're not too late. > You may challenge an application for trademark registration at the USPTO by filing an opposition with the TTAB within 30 days after it is published in the Official Gazette. http://www.uspto.gov/page/about-trademarks http://www.uspto.gov/page/about-trademarks