The challenge began when SEOmoz filed the first opposition to the trademark in 2008. However, the company never pursued this further due to their legal spat with Ripoff Report. Jonathan Hochman of Hochman Consultants’s complaint with the USPTO was sought through the whole way, but it ultimately did not succeed. ArteWorks.biz also filed oppositions, but did not appear to keep at the case.

It was ultimately 25-year Rhea who kept going to the end. Rhea, who has been part of the SEO industry since 2004 and recently helped found Outspoken Media as its Chief Operating Officer, put two years of her life and nearly $20,000 of her own money, to fight this battle for the industry. On March 11, 2010, the USPTO has officially terminated Gambert’s trademark registration in favor for her opposition.

Here is the statement from the USPTO document:

The Board’s order of October 29, 2009 made clear that applicant was to supplement his responses to opposer’s discovery requests within twenty days of the order. The order further stated, in no uncertain terms, that “opposer’s attorney is to be in receipt of applicant’s responses within twenty days.” Applicant was warned that his failure to comply with the Board’s order “in any way” would be grounds for an entry of judgment against him. Applicant’s failure to comply with the twenty day deadline cannot be overlooked. We agree with opposer that applicant cannot rely on Trademark Rule 2.119 or the Federal Rules in this instance. The record is clear that opposer’s attorney was not in receipt of applicant’s supplemental responses within twenty days of the order or November 18, 2009. Moreover, our review of the untimely supplemental responses of applicant submitted in conjunction with opposer’s reply brief reveal that applicant’s responses remain, on the whole, deficient. Our patience with applicant has worn thin.

In view thereof, opposer’s motion for sanctions is granted.

The opposition is sustained, and registration is refused to applicant.

When Rhea noticed that attention from the various industry bloggers, including myself, did not stop Gambert from moving forward with his SEO trademark application, she decided to take matters into her hands. With the initial help from the companies listed above, and Michael VanDeMar and Jim Hedger, she hired lawyer Cheryl Meide from Meide Law with her own money — $17,004.33 in the end — to block the trademark request.

Rhea explains today she learnt a lot from this process. She says she is “much more business-savvy” now and ultimately has this win to show for it. She told us that she’s never asked for money in the battle nor feels like the industry owes her anything. She doesn’t regret this decision, although it was both emotionally and financially taxing for her. But she is happy that she was able to help an industry that is still relatively new and growing.

Is there a way for people to donate after the fact? We’re hoping Rhea will establish some means that people or companies could contribute. But she said she’s not looked into the right way this could happen, nor is she sure that she will:

If it becomes an issue I’ll try to set something up. Otherwise, I liked one tweet about not having to buy drinks at conferences. Maybe a lifetime supply of diet cokes!

I think we all owe Rhea, and all those involved in this process, a deep sense of gratitude for helping fight the attempt to trademark SEO. Rhea, and people like her, they are what makes the SEO industry so special.

Donation Information: Rhea finally allowed us to post her PayPal address so that we, the industry, can help in our own little way. Her PayPal address is rhea_drysdale@yahoo.com.

It is important to note that Jonathan Hochman also spent about $10,000 in court trying to battle this case. His opposition did not succeed, but that was not his fault. I do not have his PayPal address but you can contact him at this page.

Postscript #3: Rhea has posted a thank you to the industry and for all the kind words and donations.

It is a basic search engine, not affiliated with Google in anyway. It does however play on the Google name and Google logo.

This is the second time in about two years that someone with no general stature, reputation or well-known and documented history has tried to claim a trademark on SEO. In 2008, Jason Gambert gained attention in trying to trademark the term. That resulted in plenty of criticism of his move as well as people asking, “Jason who?”

Who actually coined the term and first used it in commerce? To our knowledge, Bob Heyman has the longest-standing claim. He said he invented the term in 1995 and documented his claim in 1997. Our Who coined the term SEO? article from Heyman covers this more. Unlike the other two people, Heyman has never tried to claim a trademark against for the term.

Postscript: Links to the trademark expire after a certain period time. To find this trademark, search for the serial number 77643198 at tess2.uspto.gov.

Postscript #2: It seems like he is trying to trademark the acronym SEO for Strategically Elevating Optimization and not Search Engine Optimization.

In August 2007, Google was sued by American Airlines over a similar issue. And in July 2008, Google & American Airlines settled the suit out of court.

Some are speculating the Yahoo and American Airlines settlement was due to Yahoo paying luggage fees for American Airlines customers over the holidays. Okay, no one is speculating that, but it is a fun point.

Pacific WebWorks, one of the companies in Google’s lawsuit, claimed they reached an “agreement in principle” with Google to settle the legal matter. They also said they would “cooperate with Google’s request for expedited discovery.”

They filed their case on Wednesday, December 16th in Circuit Court of the City of St. Louis. The Simon Law Firm in St. Louis even released a press release on the suit saying, “For nearly 10 years my client has been using the Bing! mark,” explains Anthony Simon. “My client selected this unique mark to distinguish itself in the marketplace and invested substantial time and effort promoting its business using Bing!. Microsoft’s use of the identical mark and its aggressive advertising have gutted all of my client’s efforts to distinguish its business and created confusion that must be remedied.”

Microsoft’s spokesperson told Ars:

We believe this suit to be without merit and we do not believe there is any confusion in the marketplace with regard to the complainant’s offerings and Microsoft’s Bing. We have not been served with a complaint, but are aware of the suit based on media reports. We respect trademarks and other people’s intellectual property, and look forward to the next steps in the judicial process.

What is interesting is not that there is a lawsuit about this, this is nothing new. It is the fact that the defendant cited a post by Google that Google does not use the meta keywords tag as a ranking factor or any factor at all. Because of that post, amongst other reasons, the defendant filed a motion (PDF) to strike the affidavit that Google does use these meta keywords tag and thus, they can sue for trademark infringement.

Even after that, the plaintiff submitted a third affidavit claiming Google does use meta keywords tag. I am not sure why the lawyers keep bring up the meta keywords tag, when Google specifically says they do not use them and when the defendants have clearly showed them a link to the post and quotes from the Google post.

This all seems somewhat comical to me and a big waste of expensive legal dollars. But hey, what do I know, I am not a lawyer.

You can read many the legal documents regarding this case at the Citizen.org web site.

Google has made available the text of its lawsuit (PDF) against a Utah-based company called Pacific WebWorks and dozens of other companies that it only refers to as “Does 1-50″ (as in “John Doe”). It’s a civil suit that accuses the defendants of a number of offenses, including “trademark infringement, dilution, unfair competition, and cyber-piracy.” Google’s suit describes the defendants actions in this way:

The scam victimizes unsuspecting consumers by prominently displaying the famous GOOGLE mark, by suggesting sponsorship by the plaintiff, Google Inc. (”Google”), and by urging consumers to obtain a kit supposedly showing them how to make money working from home with Google. The kit is advertised as free, except for a nominal shipping and handling charge or access fee. However, people who sign up for these offers have their credit cards charged with substantial recurring monthly fees. They also receive little of value, or nothing at all, in return for their payments.

Google’s suit says that consumers who sign up for the defendants’ services “are not enrolled in any program that provides opportunities for generating income” and “are subjected to continuing monthly fees that often exceed $50 and range as high as $79.90.” In return, Google says buyers often get DVDs that contain viruses, or they receive “access to an online portal containing information available free of charge elsewhere on the Internet, including from Google’s own free online help center.”

In addition to the lawsuit, Google says it’s still removing “scammy URLs” from its index and closing AdWords accounts that “provide a poor or harmful user experience.”

Google’s not the only one fighting this battle. Earlier this year, the FTC announced a series of complaints against similar online scams, including some using Google’s name. And even a group of search marketers got involved in September with the launch of a “White Knight SEO” campaign aimed at influencing the natural search results for terms related to the work-at-home scams.

Suit over search-engine keywords tries new angle from the Associated Press reports Habush Habush & Rottier is suing Cannon & Dunphy for buying their name on Google and Bing. Habush Habush & Rottier is taking the privacy angle, where in Wisconsin there is the “right-to-privacy statute” that prohibits the use of any living person’s name for advertising purposes without the person’s consent. Yes, both firms are based in Wisconsin.

Robert Habush, the president of Habush Habush & Rottier said:

We believe this is deceptive, confusing and misleading. If Bill Cannon thinks this is a correct way to do business he needs to have his moral compass taken to the repair shop.

Cannon told the AP:

This is equally available to Habush if he weren’t so cheap to bid on his own name.

I am no legal expert, but this case does seem unique from all the other legal cases on search ads.

Advocate General Luis Miguel Poiares Pessoa Maduro said in a non-binding opinion to the European Court of Justice today in Luxembourg:

It is important not to allow the legitimate purpose of preventing certain trademark infringements to lead all trademark uses to be prohibited. Since the use by Google does not involve identical or similar goods or services, in principle there can be no risk of confusion on the part of the consumers.

In the US, Google recently allowed trademarks to be used in the AdWords copy.