Can Someone “Trademark” the Term SEO?

In the past week, there’s been a lot of hullabaloo about someone attempting to file a U.S. trademark application for registration of the term “SEO.” The applicant in question here has identified a long litany of advertising related services in connection with which the SEO mark has been used.

As surely as the phases of the moon change, I see some post in the blogosphere about a joker who is trying to “trademark”* a common industry term. Fear not, good friends, there is little to worry about in such cases. I’ll attempt to explain why.

First of all, simply applying for a trademark means very little unless the application actually proceed to registration. And, in 99% of the cases where the joker applicant in questions is attempting to usurp some common industry term, there will never be a registration granted.

For the most part, trademarks in the United States (and, indeed, in most other countries) apply only to those goods and services with which they are used. There is an exception to this rule for trademarks like FORD and GOOGLE that have achieve what in trademark law to called “fame,” and owners of those marks may prevent others from using them on goods and services unrelated to their own offerings. But this famousness exception clearly has nothing to do with some fool trying to get a trademark registration for a common industry term.

When a trademark applicant applies for registration of a trademark, they must specify what goods and services are (or will be) used in connection with the mark. If the trademark (or part of it) has some significance in relation to the industry in which the goods or services are offered, or the goods or services themselves, the applicant is typically asked to state that significance. When the trademark (or part of it) has some meaning in relation to the goods or services and the meaning is descriptive in nature, then the trademark cannot be protected under U.S. law.

Seeing how this works in action, someone may very well wish to use the term SEO as a brand name for baked goods. In that case, the term SEO has no relation whatsoever to the goods offered, so the trademark would not be rejected for descriptiveness. Someone applying for registration of the mark SEO in connection with services that are clearly related to advertising generally and search engine optimization in particular, has got some problems on their hands. It doesn’t matter one bit of the applicant claims (whether true or not) that the term SEO as they use it stands for something else—that is completely irrelevant. The only question is whether consumers in the relevant industry would recognize the term in question and, if so, then does the term as recognized describe some aspect of the relevant goods or services identified in the application?

In the case of an application to register the mark SEO for services clearly having everything to do with search engine optimization, there is little to no hope that a registration will be granted. Further, playing games with the US Patent and Trademark Office by arguing that you mean something else when you use the acronym SEO, even though it is obvious that your services are directly related to search engine optimization, is not going to win you any favors.

Lastly, I’ll also add that any discussion over who the first person was to coin the acronym SEO is moot. Trademarks are not like copyrights or patents—being first to “coin” a phrase means nothing. You have to use a trademark in connection with goods or services, in a non-descriptive way, in order to obtain rights in the trademark. When some term becomes a widely known concept in a particular industry, the cat is essentially out of the bag—nobody will ever really be able to hold trademark rights in that term, within the relevant industry, because nobody within that industry would ever see the phrase and think it was a trademark rather than the term having a recognized meaning. There’s still that possibility of SEO brand apple pies, however.

*For those of you who still use “trademark” as a verb, I’ll do my part on behalf of all trademark attorneys and tell you to stop doing so. One does not “trademark” something. One uses a trademark and thereby accrues trademark rights. Often times, when people say that someone is trying to “trademark” something, they tend to mean that someone is trying to prevent everyone else from using that term in any way whatsoever—this is actually not possible under the law. One can try to register a trademark, but that is a very different thing.