It seems the world we live in has recently been relocated to the ‘Twilight Zone’. The reason being, that recently a man named Jason Gambert is trying to register ‘SEO’ as a trademark. The most shocking point in this bizarre event is that he has managed to get all the way to the publication stage of the registration process.
Recently, the Trademark Office sent a letter to Mr. Gambert stating that, “The mark of the application identified appears to be entitled to registration. The mark will, in accordance with Section 12(a) of the Trademark Act of 1946, as amended, be published in the Official Gazette on the date indicated above for the purpose of opposition by any person who believes he will be damaged by the registration of the mark. If no opposition is filed within the time specified by Section 13(a) of the Statute or by rules 2.101 or 2.102 of the Trademark Rules, the Commissioner of Patents and Trademarks may issue a certificate of registration.”
When Jason applied for the trademark, he described SEO as, “Search Engine Optimization, Hosting, Web designing, 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.â€
A trademark can only be obtained if an individual or a company is the first to either develop or use a product or a service. :
The Trademark Office rejects his application on 15th August 2007:
The Trademark Office rejects Jason Gambert’s giving these reasons:
According to the TMO, there were already two other trademark applications that were filed before Jason’s that could have barred his registration. These applications were for ‘Titan SEO’ and ‘Reno SEO’.
The reviewing attorney presented sample SERPs listing “SEO†in connection with computers and search engine optimization. She stated that, “The applicant’s proposed mark, SEO, is merely descriptive of its computer related services. The acronym SEO stands for “Search Engine Optimization.” See attached evidence. The applicant’s proposed mark is for “search engine optimization” services, among other computer related services. See application….In addition to being merely descriptive, the proposed mark appears to be generic in connection with the identified services and, therefore, incapable of functioning as a source-identifier for applicant’s services.â€
Gambert’s amended application on September 19th 2007.
After the previous rejection from TMO, Jason Gambert revised his application and stated that, “I have now removed any and all acronym qualities for the term “SEO” for search engine optimization.” He also writes in his application, “ SEO appearing in the mark means or signifies System Efficient Optimization in the relevant trade or industry or as applied to the goods/services listed in the application.”
On September 22nd 2007, Gambert sent a pdf file of dictionary.com which defined the word “SEO†to the TMO. It stated that SEO is a noun and it meant, “the process of choosing targeted keywords and keyword phrases related to a Web site so the site will rank high when those terms are part of a Web search.” and concludes by saying that, “ The proposed mark, SEO, is for a service not a process.”
The process keeps repeating itself for a long time. TMO kept rejecting Jason’s application, but Jason kept on revising it and submitting it again and again. For a full coverage of the tug of war between Jason and the TMO, visit.
Still, there is a solution for this problem. A opposition can be filed against Jason Gambert’s claims and most of the formalities can be fulfilled online. All that is needed, is a plain and simple statement explaining the reasons towards the opposition for the claim. In the end a $300 filing fee is required to file a Notice of Opposition.
Let us hope that some big guns of the SEO business notice this looming doom on our heads, and initiate some sort of an opposition. If not, then it’s time for us to look for new words and phrases and to stay in the business.
