"SEARCH ENGINE OPTIMIZATION" Merely Descriptive of Marketing Services, Says TTAB

Modern Consulting Solutions, a sole proprietorship composed of Jason Gambert, hit into a triple play in its attempt to register the mark SEARCH ENGINE OPTIMIZATION for "providing advertising, marketing and promotional services, namely development of advertising campaigns for use on computers and related consulting." The Board affirmed refusals to register under Sections 2(e)(1) [mere descriptiveness], 2(d) [likelihood of confusion], and 1,2, and 45 [unacceptable specimen of use]. In re Modern Consulting Solutions, Serial No. 77509514 (April 30, 2010) [not precedential].

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Mere descriptiveness: Based on a dictionary definition of the term "search engine optimization," the use of the phrase in the third-party websites, and Applicant’s own descriptive use of that phrase, the Board found SEARCH ENGINE OPTIMIZATION to be "at a minimum, descriptive of a significant feature of applicant’s services, namely, that applicant offers advertising services that include the provision of or consulting on search engine optimization."

Applicant argued that it was the first to use the term (in 1997), but the Board pointed out once again that "the mere fact that someone is the first to use a term or combination of words does not mean that the term or phrase is not descriptive. Here, eleven years later, SEARCH ENGINE OPTIMIZATION "is widely used by third parties and defined, since at least 2001, as a method of drawing more traffic to a website."

Likelihood of confusion: The Board found the applied-for mark likely to cause confusion with the registered (Supplemental) mark SEARCH ENGINE OPTIMIZATION ENGINE (SEARCH ENGINE disclaimed) for "providing on-line non-downloadable computer search engine software."

The Board found the goods and services to be related because both "involve a means of providing a search engine marketing that seeks to promote websites by increasing their visibility and effectiveness."

Although the cited registration is on the Supplemental Register, even weak marks are entitled to protection against the same or a similar mark for the same or closely related goods and services. Applicant's claim of priority was irrelevant absent a petition for cancellation.

Unacceptable specimen of use: The Board agreed with Examining Attorney Midge Butler that, in Applicant's specimen of use [depicted above], "the term SEARCH ENGINE OPTIMIZATION is "buried in the text of the email to such a degree that the impression made by the term on the purchasing public is simply that of an informational or descriptive statement about the function or purpose of applicant's services and thus, it would not be perceived as an indicator of source."

And so the Board affirmed all three refusals to register.

TTABlog comment: Mr. Gambert is also seeking to register the mark SEO for his marketing services (Application S.N. 77171330), and he has been the subject of numerous outraged comments on the Internet. Nonetheless his application appears to remain pending, although its PTO status is a bit cloudy.

Text Copyright John L. Welch 2010.