An Unlikely Attempt to Trademark SEO

If you’ve never heard of Jason Gambert before, pay attention, because you’re likely to hear more about him in the future. This person came out of nowhere and tried to trademark the term “SEO” in the United States – and he’s on his way to winning. Fortunately, there are members of the SEO community trying to stop him, or at least slow him down.

I admit to being a latecomer to this story. I didn’t hear about it until late May 2008. It seems to have hit the general radar of the SEO community in early April, thanks to Sarah Bird. This intrepid young lawyer was working on trademarks for SEOmoz, when she discovered that someone was trying to register “SEO” as a service mark.

“I was shocked,” she wrote in a blog entry on SEOmoz. She discovered that he’d passed the preliminary review by the Trademark Office’s reviewing attorney, and made it to the publication stage. This put the registration “in a sort of waiting period during which people who would be harmed by the registration can file an objection with the Trademark Office,” Bird explained.

We’ve passed the filing deadline for that, but Bird and several others did in fact file Notices of Opposition to Gambert’s attempt to trademark the term. Gambert missed a May 19th deadline to file responses to their notices. In response to this lack of response, on May 27 (right after Memorial Day), Bird filed a Motion for Default Judgment – basically a request to be granted a victory because the other party failed to respond.

At this point, Gambert got his act together – sort of. He filed a 41-page response to the Notices of Opposition on the same day that Bird filed her Motion for Default Judgment. Bird takes many of his arguments apart in a blog post she makes on the subject. By the time this article is published, she may have responded  to each and every one of the points he makes (or tries to make) in a more official manner, in a legal document to be filed with the Trademark Office.

Or not. I am definitely not a trademark or any other kind of lawyer, so for all I know that may not be necessary, since Gambert did not actually miss his deadline. In any case, though, this is where we stand right now. How did we get to such a state?

Let’s take a trip down memory lane. The term “search engine optimization” is at least 11 years old, according to Danny Sullivan. He documented its use in a spam message to a Usenet group on July 26, 1997. The term “SEO” made it into Wikipedia in late February of 2003. It’s worth noting that the article describes SEO as both a process and a marketing service; Jason Gambert tried to trademark the latter use of the term.

Gambert didn’t file his first attempt at registration of the “SEO” mark until May 2, 2007. Of the filing, which covers a broad range of relevant goods and services, Bird says that “It’s pretty clear what this  man’s intention was. He was trying to own SEO and he was trying to own it for search engine optimization and other related internet marketing areas.” He could have then scared off a lot of people with Cease and Desist letters.

Fortunately, the Trademark Office rejected the application on August 15, 2007. They must have been underwhelmed by his statement that the first use of the term SEO to occur anywhere was “At least as early as 02/14/2007.” Heck, I was using the term before then, and I just write about it!

Undeterred, Gambert tried again on September 19, 2007. He took the knowledge he gleaned from the Trademark Office’s objection to his earlier application and tried to narrow the scope of the mark to cover “Direct marketing services for others in the field of computers. Search engine marketing. Domain name.” He also tried to turn SEO into something other than a generic acronym for search engine optimization; he claimed that it refers to “System Efficient Optimization in the relevant trade or industry.” He also added to his application between September 22, 2007 and January 2008 by using online dictionaries to prove his argument that SEO is understood to be a “process,” and that he wants to use the mark “for a service not a process.” 

The Trademark Office still didn’t buy it, and rejected the application for the second time on January 2, 2008. Not only did the reviewer point out that SEO is still a descriptive term the way Gambert is using it, but added that Gambert did not even show that he was actually using the mark in commerce!

At this point, Gambert submitted “a bitter and confusing response” to the rejection, according to Bird. I chose not to reproduce it in full here; it’s long, and the editor in me would rebel at having to reproduce that much gibberish. Basically he claims that the words “search engine optimization” have no real linguistic English value beyond being a process; that he’s trying to trademark a service; and that SEO itself is Net lingo and has no “Official English linguistic value.” This stellar performance earned Gambert his third rejection from the Trademark Office, on January 8.

Unfortunately, the way the Trademark Office phrased its rejection opened the door for Gambert to revise his application in a way that it might be accepted. This may be a real-life example of that old saw: if you can’t dazzle them with brilliance, baffle them with BS. It almost looks as if the reviewing attorney was worn down and just wanted to get rid of him, or as Bird put it, “she basically gave up and said, ‘Hey. If he says he’s doing direct marketing and not SEO, then who am I to say otherwise?’” After Gambert provided a specimen, publication was scheduled for March 25, 2008.

This brings us back to Sarah Bird’s discovery, and the start of my article. Throughout the trademark application process, Gambert has been telling the Trademark Office that he has been trying to register SEO as a service mark for a service that is NOT SEO, since SEO is a process. That is not, however, what he has been telling the SEO community.

Yes, as it turns out, Gambert has a blog. It has exactly one entry, titled “The Official Response to the Search Engine Marketing Community.” So what does he have to say for himself? How does he explain what he’s doing? “I am helping the search engine marketing community establish an approved SEO process, which can be sold as an ‘SEO service.’ A good example of a proven process that is delivered as a service is that any CPA working for a public organization must understand the GAAP process to properly provide accounting services. They can still provide accounting practices to anyone they choose, but cannot claim them as GAAP, unless they follow the GAAP guidelines.”

He goes on to explain how the industry is full of con artists because there are no approved SEO standards and no governing body to enforce them. He calls on help from the various SEO communities for the formation of guidelines, and hopes to also form a board of directors. “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.”

This doesn’t sound like what he was trying to tell the Trademark Office at all. If Gambert has the best of intentions, as he seems to be claiming, why is he telling the Trademark Office one thing and the SEO community something completely different? As if that’s not bad enough, Texas-based SEO Matt Foster seems to have some evidence that Jason Gambert has perjured himself at least twice in his 41-page response to Bird’s Notice of Opposition. Gambert claimed to have received an email about search engine optimization on July 27, 1997, at Tosone875.com. He claims that he registered that domain with GoDaddy.

That’s impossible. GoDaddy did not exist under that name back in 1997 – and even if it did, it was certainly not a registrar. Back then I was covering Internet-related news, and ICANN was part of my beat. I can’t tell you the names of the first five independent registrars off the top of my head, but I can tell you that in 1997 there was only one registrar: Network Solutions. So Gambert lied when he said his site was registered with GoDaddy if it was registered in 1997.

The second lie, of course, is about registering the domain in 1997. Gambert did register the domain with GoDaddy – but if you believe the WHOIS service, the domain was created on April 14 of this year. At this point, it really doesn’t look like Gambert has a leg to stand on.

There’s enough material from various analysts for several other articles. I’m going to be sensible about this and let others fry Gambert. That task is in far more capable hands than my own. But however misguided Gambert’s approach – okay, calling it “misguided” is being way overgenerous – it does raise a valid question. Does the SEO industry need some kind of standards?

Gambert isn’t the first one to raise this question. It has been asked, and answered, in various ways, by Danny Sullivan, Jill Whalen, Ian McAnerin, Lisa Barone, Jessica Bowman, and others. It seems to be one of those topics that won’t go away, and for many of the same reasons that Gambert raised: the industry really does have its share of cheats and snake-oil salesman. We’ve all heard stories of small business owners getting hoodwinked by SEO scam artists. Shouldn’t we, as responsible professionals, do something to remove the black eye from our field?

Perhaps we should, but is a body of standards the best way to go about it? SEOHack, writer of the self-proclaimed “worst SEO blog ever,” offered a humorous take on SEO standards and whether we need them. Though the standards themselves were proposed in jest, the point behind them is quite serious. SEOHack thinks standards for SEO are “a horrible idea…if you’re a goddamned liar and thief, it’ll come out…An arbitrary governing body isn’t going to give you that…we have search engines more or less telling us which tactics are kosher as well as a whole heap of laws…you really don’t need more than that.”

Besides, search engine optimization is maybe eleven years old – and it was first practiced, in effect, by snake-oil salesmen (how else would you describe someone distributing spam to a forum?). Who would the community trust as members of a body that certifies a person or company is following SEO standards? Never mind that, who would we trust to create those standards in the first place?

Yes, there are respected SEO professionals, but as a whole the industry is young enough to still be a little rough around the edges. Some might argue that this is exactly why we need standards – but consider what would happen if someone tried to create them and enforce them. You’d more than likely get a mess that’s even worse than what Gambert is trying to pull.

Or, to paraphrase SEOHack from a different post directed at Jason Gambert and others: will a body of standards prevent people who don’t do due diligence from getting scammed? No. Will it prevent those who carry the SEO trademark from scamming others? No. Gambert’s trademark claim should be invalidated; let’s move on to something else.  

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