Posted January 26, 2010 2:18 pm by with 10 comments

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That’s right, folks, you’re all once again about to lose your right to use SEO to refer to . . . well, anything. Back in 2008, one “intrepid” “SEO” decided he’d trademark the term and impose standards on the rest of us. That didn’t pan out, so someone else has taken up the case.

Or not. Apparently this person is confused about what, exactly, SEO will stand for once it’s trademarked. In the original filing, Search Engine Partners/Shangri-La Boutique filed as SEO standing for “Search Engine Optimization,” which the application claimed they first used in September 1996, and first used in commerce in September 1999. The filing also includes a pseudo mark (this is supposed to apply to other words that are pronounced the same way) of “Strategically Elevating Optimization,” which a company SEP acquired used as a slogan on its invoices.

Interestingly, the invoices, from January 1997, are for a 30 keyword SEO campaign. (With a money-back guarantee!) However, in the same amendment filing, they claim that “In 1997 the service known as search engine optimization was called web site optimization among several other terms because the process of optimizing websites ‘offsite’ did not yet exist because search engines like Google that look for ranking factors outside of the websites themselves did not exist” (emphasis added). And perhaps most interesting, as a comment on the Search Engine Land points out, the invoiced domain would not be registered until seven months after the invoice date.

I love this. Most people rag on SEO because they think it’s all on-page stuff. No, no, says this person—SEO only refers to off-page efforts! (And if you’d like the history lesson, Google began in 1996 as a Sergey/Brin research project called “BackRub,” which counted backlinks to rank content.) And it’s so effective, we can use it on websites that don’t even exist yet! (I’d check, but it says robots.txt has blocked the Wayback Machine for that domain. Good. Job.)

The filing claims that SEO was in common use, but it didn’t stand for anything until that year, and no one knows where it came from. The evidence includes a full proposal for the prospective client. Other than on the invoice page, the term “SEO” is never used in any form—”web site optimization” is the preferred term.

It’s really tough to choose a favorite part of this case, but if I had to, I’d go with the biography of the filer. Among his credentials listed on his website:

  • one of the first published search engine optimizers (SEOs) and search engine optimization consultants
    • The citation provided as evidence? The URL for the Search Engine Consultants page at Wikipedia. Guess who isn’t listed?
  • He already holds the trademark on this term, and has since 1996! Unfortunately, that’s news to the US Trademark/Patent Office. Despite the fact that holds the trademark, “it seems to be between he and a Jason Gambert.” Sadly, he’s not joking
  • After 10 years away from the industry, he was recognized by Wikipedia as an SEO. Guess who doesn’t even have a page on Wikipedia? And not for lack of trying: the deletion log shows that a page about this guy has been deleted five times for copyright infringement, blatant advertising, and not meeting inclusion guidelines for biographies.
  • He created SEO 2.0 to deal with Universal Search.
  • Nowhere on the page does he use the phrase “strategically enhancing optimization,” but he uses “search engine optimization” many, many times.
  • He “managed to optimize his own name so well that Google now recognizes it as a keyword.” And the evidence is a screen shot of Google Suggest, where he’s entered his first name and the first three letters of his last name, which is seven letters long (and the results estimate? 1350).
  • Of the 53 citations on his biography, 35 are the URLs for articles in Wikipedia which give definitions for a term (including “Active duty” and “Base (chemistry),” which actually isn’t used in the biography). None of the citations are active links.

I’m not sure we need to worry too much. He’s been working on this trademark application for a year, but it doesn’t look like he’s making much progress.

Here’s the problem: In the US, you can’t register something that’s merely descriptive or generic. (Well, you can register a trademark on something that’s descriptive—if it’s become primarily associated with your business by consumers at large. That’s just not going to apply here.)

In June, the USTPO rejected the application as too descriptive/generic, hence the filings to prove the use of the term in commerce, and the addition of the pseudo mark [as mentioned above, the pseudo mark was included in the initial filing]. The most recent word from the USTPO comes from November 30 (emphasis mine):

While applicant’s response includes arguments and evidence against the rejection in the June 22, 2009 office action of the Section 2(f) claim based on insufficient evidence, it is still unconvincing. The rejection is hereby continued and maintained due to the new issues raised by the response below. As stated in the June 22, 2009 office action, applicant’s arguments and evidence against the descriptiveness refusal were not persuasive and will be addressed pending applicant’s response to the new issue below raised by applicant and when the application is not in suspension. Applicant did not respond to the prior pending applications likelihood of confusion advisory (no response was required yet, and 3 of the 5 potentially cited applications have abandoned) and the information requirement (a response was required). The descriptiveness refusal, the information requirement, and prior pending applications likelihood of confusion advisory are hereby continued and maintained.

The only response so far has been to change address.

Feel free to read the 250 pages of the filing. It’s not quite as dumbifying as Gambert’s filings—and hey, there are pictures!

  • I was aware of the first incident, but in a country where “Turtle Air Bags” and other silly contraptions can have a patent put on them, it doesn’t really surprise me.

    I think this guy is pretty smart, though. What better way is there to get a ton of people to talk about you and what you do for a living than to try and claim a trademark on the very thing you do.

    I agree with some of the points you make through your highlighted bullets, but I think you are doing exactly what this guy wants you to do by talking about him and providing him with a link to his website.

    Just my opinion.

    • The link to his site is nofollowed and I never used his name.

      • Yeah, I noticed that you never referenced his name. For everyone reading your post, though, many will most likely visit his site (I did), just out of curiosity. And nofollow doesn’t necessarily prevent search engines from indexing it.

        I don’t think you should remove the link or anything like that, I’m just saying that I think getting people to write about this ridiculous attempt to trademark the term is precisely a large part of his goal. I think he’s well aware of the fact that his trademark will not be approved, but he is using it as a way to get free publicity. I’m sure you’re not going to be the only one that writes about this, and many of the other writers may not be as astute as you have been.

        On a side-note, I came across Marketing Pilgrim a few weeks back and have enjoyed the content – I just subscribed to your feed.

        • I think you’re completely right, it’s sort of a viral well maybe more a virus 😉 I think he’s succeeding in his goal!

  • I wonder if he will try to trademark SEM as well??
    .-= Nicholas Kemp´s last blog ..My First Website =-.

  • I think the list that almost entirely consists of Wikipedia references says it all, especially (as you noted) he is not actually listed on his first reference like the sentence implies.
    I’m not sure if it’s different in the US, but in the UK if you’re writing an academic paper for University or school, you’re not supposed to use Wikipedia as a reference at all, never mind for over half! Granted his biography isn’t an academic piece, but it has enough references to seem like one!
    .-= Luci´s last blog ..Winning the SEO Battle – Let Quality Content Lead the Way =-.

  • Hi Jordan. Thanks for your post. I found it very interesting. I thought you brought up some valid points regarding trademarks and I wanted to add a little clarification. First, you correctly point out that generic or merely descriptive words and phrases do not generally function as trademarks. You also correctly point out that a descriptive mark can be registerable “if it’s become primarily associated with your business by consumers at large.” This is known as “acquired distinctiveness” in legal parlance and it is worth understanding. To put it simply, a mark owner can – through substantially exclusive use of a word or phrase and considerable marketing efforts – enable the mark acquire “secondary meaning.” In other words the mark through use and over time becomes associated with one particular company/business/”source of goods or services.” It is also worth noting that first, such a registration is a tacit admission that the mark truly is merely descriptive in general and second, although one may be able to obtain a registration on a descriptive term, it only applies to the specifically associated goods/services. In other words, it does not remove the word or phrase from the general lexicon in such a way as to bar others from using it in its generic or descriptive sense.
    With respect to a “pseudo mark” this is generally assigned by the Trademark Office (not the applicant) to aid in locating marks with a similar sound, appearance or meaning.
    The point of all this is to say that I firmly believe that everyone, especially those involved in search engine marketing (or optimization) should have a clear understanding of the boundaries of trademark law. I hope my feedback is useful. Please let me know if you’d like to do a follow-up piece. I’d be glad to contribute.

  • It doesn’t surprise me that he is going after it. I’m kind of surprised that a lot of other people haven’t tried the Trademark. After all press increases traffic surges, let’s people know they are there. whether it’s bad or good we’ll only know by how long he holds on. As far as the Trademark on SEO, forget it, I’ll be very surprised if anyone gets that one…….
    .-= David Price´s last blog ..Link Building Strategy – Qaulity Content – Creating Value =-.

  • Brilliant link bait, someone should be tracking his keyword ranking and competeRank positions during the time.

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