They do have viable common law rights, and it's too bad you have to do things defensively to protect against abuse of the system. But these days particularly, with every business on the internet, it makes sense to spend the $1000 or so to get the registration. If Comodo hadn't dropped this, Let's Encrypt would spend a lot more than that having to oppose these marks or deal with a Comodo registration.
The problem here, apart from Comodo's bad behavior, is that the trademark examiner didn't conduct a proper search. If he had, the Let's Encrypt common law mark would have turned up.
They do have the ability to search that. I have received rejections based on non-registered uses that the examiner found on the internet. But often it seems like the trademark examiners just rely on their application/registration database (like patent examiners rely on the pending/issued patent database) and don't look beyond that.
You can still get a registration even if a non-registered entity is already using the name, but you can't go in and stop them. Traditionally this is limited by geographic location. For example, if I own a chain of restaurants in Los Angeles, and you're in New York and we have the same name...if I was there first but didn't register it and you did, you have presumptive nationwide rights to the name EXCEPT in Los Angeles, where I priority over you. You can't come into L.A. and stop me using the name.
This was relatively easy to figure out in the pre-internet days, but of course now everyone is online so the boundaries become a bit more fuzzy.
Zarvus - with respect to the mark you linked, it looks like the USPTO is about to let that one go through to publication. The Examiner has send there are no confusingly similar registered or pending marks. Just some formalities, and they're going to let it through I predict.
The trademark examiner might well let it go through to publication, though he shouldn't. But that's what the opposition proceeding is for - to make sure that marks the USPTO has let go through wrongfully to publication can still be opposed by a third party before they actually get registered.
The problem is, maintaining an opposition proceeding isn't exactly cheap.
Let's Encrypt can oppose if/when the Comodo applications are published.
Let's Encrypt should have filed for registration previously, and they wouldn't be in this situation. Even if Comodo get the registration, however, they can't stop Let's Encrypt from using the mark in places where Let's Encrypt has priority (and when you're talking about the internet, that's potentially anywhere, though I guess it would be limited to places where they can show "sales").
Asinine decision. There's no new "authorship" happening here. No new creative aspect to the photocopied work. You can see how a photo of, say, a sculpture might have independent copyright based on photographer decisions about angles, lighting, photo settings, and so forth. Running pages through a scanner has none of that.
You're better off not looking, in one sense, not because a bad search result can't be dealt with, but because they're a pain to deal with (requiring putting in place formal opinions of non-infringement, for example). I generally discourage a search unless there is a compelling reason to have one done.
I don't think checking with a patent lawyer and nevertheless missing a patent is going to hurt you. That's not going to be a sufficient basis for willful infringement.
If a patent is found that might be a problem, but your counsel concludes that it is not a problem and also writes you a competent opinion that it is not a problem, you'll also be protected from willful infringement.
Purchased the deal and created an account on 1337 Institute of Technology. I received the email confirming my account creation, but I can't log into the site. Numerous attempts made. The site continues to show that I need to Sign Up or Login.
Maybe he has a problem with Google due to some of his other clientele:
"As part of his tech and media practice, Jonathan represents some of the world’s most notable industry participants, including: Microsoft, News Corp, Yelp, Getty Images, Roku, Spotify, Time Inc., AppNexus, and others. In addition, Jonathan advises companies regarding the use of technology and data in traditional industries including healthcare, energy, commodities, retail, and financial services."
This isn't really a role for the courts, who are supposed to be with "cases and controversies." Doesn't seem like there's even a basis for a Declaratory Judgment at this point. Why doesn't Murphy research (or have researched) the copyright registration and renewal data to get an idea of whether the underlying work is still protected. If that comes back favorably, then you take the risk of proceeding and having to deal with the trust.
The trademark suit is far-fetched, no doubt. This quote from the article misses the mark, though:
"Here's a fun thought experiment: precisely how many times would the average person have to hit themselves in the head with a hammer before they found themselves standing before a Land O Lakes spinner bait lure trying to decide if it was actually a stick of butter?"
They wouldn't have to think the lure was butter, they'd just have to be confused about whether the dairy products and the fishing tackle have the same source of origin (i.e. ultimately stem from the same company). That's also a stretch, and I doubt there are many dairy companies that dabble in fishing tackle or vice-versa. But it's the source of the products, not confusion about the identity of the products themselves, that is the issue. The court was right in its assessment of this.
Yeah, could be geographically dependent. I haven't heard it used a lot in the States as a generic term, even growing up with the books and RPGs, and then later with the popularity of the movies. It could be that elsewhere in the world it is used more commonly.
"This is nearly the definition of when a term either becomes generic in nature or too broad to deserve wide trademark protection. In naming their company, the Whittakers weren't thinking about Tolkien. Hobbit meant "short person" to them, not "race of people from the The Lord of the Rings universe."
To the extent you're saying that their subjective view of what the word means is what's important with respect to genericism, that's wrong (I don't think that's what you're saying, but maybe that's what this other guy is talking about). If a person's subjective understanding of a term, or their intention in using it, was the key with respect to genericism, that would be problematic. The question is whether the term has actually become generic in common usage. I think it would be pretty hard to make the case that "hobbit" is so widely used as a name for short people that it has become a word that is generic for "short people."