

Meet the 25-Year-Old Who Saved "SEO" from Being Trademarked - grellas
http://searchengineland.com/meet-the-25-year-old-who-saved-seo-from-being-trademarked-38066?utm_source=feedburner&utm_medium=feed&utm_campaign=Feed%3A+searchengineland+%28Search+Engine+Land%29

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dangrossman
Why did this even need to be opposed? There are tens of thousands, if not
more, companies that list "SEO" as one of their services. There's no way the
applicant can claim that SEO distinctly identifies the brand under which he
sells this service.

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CapitalistCartr
Not automatically. Someone, in this case Rhea, has to actually do the
opposing.

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rationalbeaver
In fact, it looks like the request was ultimately denied mainly on procedural
grounds rather than on the merit of the request itself. Kinda frightening
really.

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jesselamb
I applaud Drysdale's initiative, and I'm sure the $17K she spent will reap
rewards for her in her industry for a long time. But... it was probably a
wasted effort. At least as far as preserving the generic use of the term
"SEO," and certainly for Drysdale personally, except for the attendant acclaim
she'll gain.

To be clear, registering a mark with the USPTO does give a business tons of
advantages. Most obviously, it gives notice to others that the business
considers the mark part of their identity, and it makes enforcing the their
exclusivity to the mark easier. But registration isn't a slam dunk, and in
this case I would wager a case of nice Scotch that the mark "SEO," even if
registered, would basically be unenforceable. Here's why.

Without getting bogged down in too much detail, above all else, trademarks
must be DISTINCTIVE. There's a whole framework setup the creates four
categories of distinctiveness (from least to most): Generic, Descriptive,
Suggestive, and Arbitrary/Fanciful. The framework comes from this case:
<http://bit.ly/bNw3pp>

Generic marks are never valid as marks because they aren't distinctive enough
to ever serve as part of a business's identity. If they were valid, we'd
eventually cede the exclusive use of our entire language to mark owners.
"Piano" is the textbook example of a generic term.

Descriptive marks are only valid once they've acquired an association with a
particular company in the marketplace. "Red Piano" would be a descriptive term
as applied to red pianos, and if a company came to be known at THE supplier of
red pianos in the marketplace, the mark would probably be valid.

Suggestive marks are immediately valid assuming no one else has already
established a confusingly similar mark. "Lovely Ivory" would be a suggestive
term as applied to Pianos. Suggestive marks require some flight of the
imagination to relate them to the goods they are fixed to.

Arbitrary/Fanciful marks are also immediately valid subject to the same
limitations as suggestive terms. "Crap Sandwich" would be an arbitrary term as
applied to Pianos. There is no connection between the mark and the goods.

[I've laid out a more in depth description of this framework here:
<http://bit.ly/bVxbv1> ]

Applying the framework to the acronym "SEO" and the phrase "SEARCH ENGINE
OPTIMIZATION" as it applies to the SEO services, both are generic terms
because they are the label for an entire genre of services. Without some
modifier that makes the term descriptive, SEO could never carry the
distinctiveness necessary to describe an SEO firm. If the mark holder ever
tried to enforce the mark "SEO", it would be at their own peril because it
would never pass this test.

I will say that the $17K spent now probably saved the SEO industry some
nuisance cease and desist letters and probably saved some cash for the first
person that Jason Gambert opted to sue over use of the mark (it would have
also been the last). In that regard Drysdale kinda fell on her sword for the
greater good, however certain a favorable outcome may have been.

Either way, glad it's settled. :)

