The newly-rebranded Moz, an online marketing software provider, has filed a
petition to cancel a trademark of the similarly named online marketing company known as Doz. Moz filed the petition against Doz on April 9, 2013. According to the petition, Moz believes there is a likelihood of confusion between Moz and Doz because of the similarity of names in conjunction with the similarity of each company’s respective services.
While Moz’s petition was filed nearly two months ago, news of the trademark battle has come to light just days after Moz announced its rebranding efforts, changing its name from SEOmoz to simply Moz.
The Case
Owned by Capseo, the Doz platform provides search, social media and online marketing solutions. This USPTO registration certificate states that the Doz trademark was filed on December 25, 2012, but in the comments thread of an article published by Doz CEO Anji Ismail titled “Why trademarks are important for startups OR How SEOMoz sent us a takedown notice,” Ismail responds to a comment from Moz COO Sarah Bird, claiming the Doz trademark was filed with the USPTO on March 12, 2012. Most likely, Ismail is referencing Doz’s TEAS (Trademark Electronic Application System) Plus application filed on March 12, 2012. (Moz’s original USPTO trademark application was filed on August 16, 2011.)
Claims From Both Sides Of The Argument
Bird responded to Ismail’s article, providing a specific statement on why Moz filed the petition for cancellation against Doz:
“We think it’s a confusingly similar product. Yes, he [Ismail] has a services component to his product, but he also pitched analytics to understand how those services are performing. He wanted to use the Moz API to help build those analytics. Software that helps you manage your inbound marketing is exactly what we do. Doz was just too close.”
In his article, Ismail states that his company Capseo bought Doz.com in April 2011, and has been selling online marketing since September 2009. In response to the confusion that may erupt from Moz and Doz offering similar services, Anji clarifies that Doz is not an inbound marketing software.
What Happens Next
There has been much online chatter on Moz’s decision to file the petition against Doz, with a number of people arguing whether or not Moz is bullying a smaller, competing organization, or simply protecting its brand. USPTO records show that Doz provided an answer to the petition for cancellation within the required 40-days of the petition’s mailing date, stating:
Capseo denies, both legally and factually, each purported ground for cancellation. Specifically, Capseo denies that DOZ was fraudulently registered, denies that DOZ has been abandoned, and denies that either SEOMOZ or the yet to be used MOZ is famous and even if either were famous, DOZ would not dilute them.
USPTO Trademark Trial and Appeal Board documents dated April 10, 2013 were addressed to Capseo outlining the next steps in the case. Now that Doz’s answer has been filed, a Discovery Conference must be scheduled where both parties are required to discuss:
The nature of and basis for their respective claims and defenses,
The possibility of settling the case or at least narrowing the scope of claims or defenses,
Arrangements relating to disclosures, discovery and introduction of evidence at trial, should the parties not agree to settle the case.
The USPTO letter to Capseo states specifically that the Discovery conference discussions must include, “…whether the parties wish to seek mediation, arbitration or some other means for resolving their dispute.” The deadline for the Discovery Conference is June 19, 2013 which is when the case Discovery process is scheduled to begin.
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