Sarah Bird, Esquire, of SEOmoz, Inc., happened upon the applicant’s request as she was working on some trademarks for SEOmoz. Not only is the applicant actually trying to obtain a trademark for the mark “SEO,” but he is also already on the way to the publication process.
Obtaining a trademark is a very detailed process that can be tedious. Sarah Bird says: “…in order to qualify as a trademark, it must be distinctive and you must be the first to use it in your industry/area. The TMO [Trademark Office] often rejects marks that are merely descriptive.”
A man named Jason Gambert of Modern Consulting Solutions applied for registration of the mark “SEO” on May 2, 2007. From all indication, it seems as though he is attempting to own “SEO.”
The Trademark Office rejected his application on August 15th and two additional times before granting approval. Gambert’s request was being rejected for several reasons, but primarily because the TMO thought (1) his definition of Goods and Services was too broad and (2) dispute over the proposed mark of “SEO” being descriptive.
According to the Trademark Applications and Registrations Retrieval (TARR), goods are defined as products and a service mark must have the following qualifications:
- Must be a real activity
- Must be performed to the order of, or for the benefit of, someone other than the applicant
- The activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.
On his first request, Gambert defined his Goods and Services as:
“Search Engine Optimization, Hosting, Webdesign, Software, Hosting, Domain Name, Software Development, All Computer Related Development and Marketing plus what is listed; Computer Software, Computer Hardware, “SEO” Letters to be trademarked in “All” Computer related areas.”
He also argues that “SEO” is a “process not a service” and that his “SEO” is different from the generic acronym of search engine optimization.
After four attempts and much tweaking of his application, Jason Gambert received approval of his service mark on the condition of amending his Goods and Services again.
Gambert’s final Goods and Services read:
“Marketing services in the field of computers in the nature of providing marketing servcies for the benefit of others by compiling advertising campaigns, promotional services, and consulting for its customers.”
The reviewing attorney at the Trademark Office removed her objections and on January 17, 2008, permitted the application to continue to publication.
Once the news became public, the online community has not been quiet. While Gambert does have some supporters, the majority of responses have been against Gambert’s actions.
Gambert issued a special response to the online community on April 9th stating that he is “happy” about the success of the proceedings up to this point. He says he is “helping the search engine marketing community establish an approved SEO process…”
The publication process was scheduled to begin March 25, 2008. Once the publication process begins any opponents have up to 30 days to file a Notice of Opposition or ask for an extension in time. (For more information on how to start your filing process, click here.)
To find out more about Jason Gambert and his “SEO” trademark and how to file a Notice of Opposition, check out the full report in the murdok video.
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