Seattle Trademark Lawyer

Fellow Seattle law blogger Sarah Bird, general counsel of Seattle search engine optimizer SEOmoz, Inc., tipped me off in her post this week about her company’s efforts to oppose a California resident’s application to register “SEO” as a trademark with the Patent and Trademark Office.

According to PTO records, in May 2007, Jason Gambert filed a use-based application for the mark in International Class 35 for “marketing services in the field of computers in the nature of providing marketing services for the benefit of others by compiling advertising campaigns, promotional services, and consulting for customers.”

SEOmoz and two other companies then filed notices opposing the application. SEOmoz’s notice of opposition summarizes the examining history as follows:

“In August 2007, the reviewing attorney correctly refused the application on the grounds that ‘SEO’ is (1) generic and (2) merely descriptive of the Applicant’s services. The reviewing attorney cited multiple examples of ‘SEO’ being used in relation to computers and Search Engine Optimization.

“Between September 2007 and January 2008, Gambert used select, unreliable internet sources to persuade the reviewing attorney that ‘SEO’ is commonly used to describe the ‘process’ of search engine optimization and not marketing services. He also amended his application to remove all traces of search engine optimization services. Gambert also greatly generalized the description of his goods and services….

“The reviewing attorney approved the application for publication in January 2008. Publication began on March 25, 2008.” 

Mr. Gambert did not file an answer, leading SEOmoz to move for a default judgment. Mr. Gambert did, however, file what he characterized as a “motion to strike” (not available online), which led the TTAB this week to grant him until July 15 “to file an answer herein which complies with Fed. R. Civ. P. 8.” 

Mr. Gambert states his position in an open post to the “Search Engine Marketing Community” here. In short, he hopes to “establish an approved SEO process, which can be sold as an ‘SEO service,’” which he likens to the Generally Accepted Accounting Principles to which accountants subscribe.

He says: “My goal in owning the trademark for the word SEO is not to try to force people to change their SEO process, but rather, prevent companies from selling ‘SEO’ as a service under false pretenses.”

Additional coverage of the dispute from the SEO community here, here and here.

The case cite is SEOmoz, Inc. v. Gambert, Opposition No. 91183449 (TTAB). The related oppositions are styled as JE Hochman & Associates, Inc. v. Gambert, No. 91184116 (TTAB), and Drysdale v. Gambert, Opposition No. 91183740 (TTAB).