Warning: WordPress Trademark Now Has Teeth

Close to 4 years ago trademark policy with WordPress was confusing.

Automattic registered the WordPress trademark and began sending out letters to domain owners who provided goods and services around the WordPress brand.
They actually started sending out these letters and emails before the trademark was even published for opposition.

WordPress Registered Trademark - artistic representation

WordPress Registered Trademark - artistic representation

Matt has just announced that he has finally transferred the WordPress trademark to the WordPress foundation which is to be applauded.

Automattic were certainly discussing this around a year ago, so it seems to have taken a while. To be honest I have never understood why it was ever registered under Automattic anyway.

There is also a new (draft) policy.

Historically there have been 2 major complaints with the WordPress Trademark policy.

1. ® – Do As I Say, Not As I Do

I don’t know the legal ramification as I am not a lawyer, but the WordPress project as a whole has never used the highly visible ® symbol in everything they have done for the last 4 years.

No mention of trademark useage has ever appeared on the WordPress.org home page before today, though there has for a long time been a little note on the .org site buried in the documentation.

To reduce confusion people using the WordPress trademark in any way were asked to include a statement about their use to avoid confusion.

Automattic does include mention within their WordPress.com terms of service however I wouldn’t class that as visible.

Intellectual Property. This Agreement does not transfer from Automattic to you any Automattic or third party intellectual property, and all right, title and interest in and to such property will remain (as between the parties) solely with Automattic. Automattic, WordPress, WordPress.com, the WordPress.com logo, and all other trademarks, service marks, graphics and logos used in connection with WordPress.com, or the Website are trademarks or registered trademarks of Automattic or Automattic’s licensors. Other trademarks, service marks, graphics and logos used in connection with the Website may be the trademarks of other third parties. Your use of the Website grants you no right or license to reproduce or otherwise use any Automattic or third-party trademarks.

Typical useage by people using the Trademark (probably) with permission might be the WordPress Philippines site

WordPress is a registered trademark of Automattic Inc.. This website is not affiliated with or sponsored by Automattic or WordPress.

Thus up until now, if the Trademark was owned by Automattic, WordPress.org should have had a similar statement. Now the license is transferred to the foundation, Automattic should if all things are being done fairly and crossing all the “t”s, include such a statement on every one of their properties.

That is the way to enforce your brand… which with all due respect to Matt, the WordPress project as a whole, the developers and the people at Automattic, there has been a real lack of consistancy.

2. WordPress Trademark Scope

WordPress have always policed the trademark based upon domains

If you already have a domain with “WordPress” in it, redirecting it to the “wp” equivalent is fine, just as long as the main one users see and you promote doesn’t contain “WordPress.”
“WordPress” in sub-domains is fine, like wordpress.example.com, we’re just concerned about top-level domains.

Up until now that has been the whole official policy and the only page that contained that policy.

So the WordPress foundation have a new draft policy.

Permission from the WordPress Foundation is required to use the WordPress name or logo as part of any project, product, service, domain or company name.

We will grant permission to use the WordPress name and logo for projects that meet the following criteria:

* The primary purpose of your project is to promote the spread and improvement of the WordPress software.
* Your project is non-commercial in nature (it can make money to cover its costs or contribute to non-profit entities, but it cannot be run as a for-profit project or business).
* Your project neither promotes nor is associated with entities that currently fail to comply with the GPL license under which WordPress is distributed.

[…]

All other WordPress-related businesses or projects can use the WordPress name and logo to refer to and explain their services, but they cannot use them as part of a product, project, service, domain, or company name and they cannot use them in any way that suggests an affiliation with or endorsement by the WordPress Foundation or the WordPress open source project.

So all of these use cases might be in violation now

  • You can publish a series of blog posts, say on WordPress SEO but if you ever want to turn it into an ebook for free download that is “for profit” in some way, you need to use WP not WordPress in the title.
  • What happens if you wanted to sell the ebook? Same situation.
  • Have a WordPress plugin – don’t use WordPress in the name if you have any plans to ever have a commercial version.
  • Any conference – you can forget about using the trademark unless it is not for profit such as the WordCamps.
  • Created some great WordPress videos – it is fine to give them away on your website, but don’t sell the DVDs or video downloads… got that YouTube? That would make it a product.
  • Then there are books like WordPress Bible – does that now require special licensing and permission?

All of this creates a sub-brand – WP that WordPress doesn’t currently own and in many ways dilutes the WordPress brand itself. I rarely use WordPress in searches – I am more likely to use just WP as it often gets better results.

You also need to look at the registered trademarks themselves. I have copied them at the end of this post for convenience as the USPTO site isn’t easy to get a permalink for specific documents.

The WordPress trademarks are for software and downloadable software

Whilst they haven’t done so yet, I would expect them to eventually police the trademark over all possible use scenarios – they do for instance have trademark use blocked for Adwords, unless you have specific permission.
However they seem to be relaxing a little on that front – lots more theme publishers using WordPress in their ads – maybe that is because of being 100% GPL.

Scope In Social Media

Matt in his comments when questioned about use of WordPress in social media stated:-

I know it’s harder to switch Twitter and FB and we don’t have an official policy there yet, but I do think it makes sense for them to match the domain.

The suggestion is there might be a policy decision in the future – scope creep rather than feature creep. In the past for instance I have been told that I can use subdomains containing WordPress which is a step beyond just a folder.
I would think the line in the sand on this is whether the use of WordPress is for a product in the new interpretation, no matter where it is being used.
Thus is you have a WPThemes domain selling themes, but a @WordPressThemes twitter account or facebook page, you might be in violation in the future.

Level Playing Field

All I want is a level playing field with every use case publicly acknowledged. I think it could be a good way for the WordPress foundation to promote the use of the trademark “with permission” to even post blog updates on every decision.

WordPress Tradmark Now Has Teeth

With the new wording of the Trademark Policy, and the much clearer ownership that will gain a lot more community support, if WordPress & Automattic clean up their own use of the WordPress Trademark such that they can show explicitly that it is a universal policy, I expect them to also clam down on other useage.

Many more sites and products don’t comply with the new policy than the previous domain policy, and there were still countless offenders of the domain policy, even among people you would expect to be a little smarter.

Don’t be a WordPress community martyr – clean up your own use pronto.

Appendix

WordPress Trademark for the word (no capital P Dangit)

Word Mark WORDPRESS
Goods and Services IC 009. US 021 023 026 036 038. G & S: Downloadable software program for use in design and managing content on a website. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328

IC 042. US 100 101. G & S: Software solutions, namely providing use of on-line non-downloadable software for use in enabling internet publishing. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 78826734
Filing Date March 1, 2006
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition November 7, 2006
Registration Number 3201424
Registration Date January 23, 2007
Owner (REGISTRANT) Automattic Inc. CORPORATION DELAWARE 570 El Camino Real #150-454 Redwood City CALIFORNIA 94063
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record David A.W. Wong
Type of Mark TRADEMARK. SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

WordPress trademark for Logo

Word Mark W WORDPRESS
Goods and Services IC 009. US 021 023 026 036 038. G & S: Downloadable software program for use in design and managing content on a website. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328

IC 042. US 100 101. G & S: Software solutions, namely providing use of on-line non-downloadable software for use in enabling internet publishing. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328
Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code 26.01.17 – Circles, two concentric; Concentric circles, two; Two concentric circles
26.01.21 – Circles that are totally or partially shaded.
26.17.13 – Letters or words underlined and/or overlined by one or more strokes or lines; Overlined words or letters; Underlined words or letters
Serial Number 78826938
Filing Date March 1, 2006
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition November 7, 2006
Registration Number 3201428
Registration Date January 23, 2007
Owner (REGISTRANT) Automattic Inc. CORPORATION DELAWARE 570 El Camino Real #150-454 Redwood City CALIFORNIA 94063
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record David A.W. Wong
Type of Mark TRADEMARK. SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

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Comments

  1. Mark says

    Can I still use the WordPress logo in the post on my blog when I’m reviewing a plugins or some updates for the WordPress?

  2. says

    If I am reading this right, I think they might be going off the deep end with all that. There are 100s and 100s of books written about Adobe products, Microsoft products, AutoCAD products, etc.

    Those are trademarked names, but to say that people can’t name the product that they are writing about without getting licensed for it seems a bit much to me. How about just saying something like “All products and company names mentioned herein are the trademarks of their respective owners.” like I have on my website?

    • says

      This is where the scope creep with WordPress Trademarks comes in.

      As an example 4 years ago they were cracking down on domain use, but the people they were targeting at the time, or at least of the people I knew were people offering WordPress training videos.
      There is a nice quote there on their real intentions:-

      We will approach anyone who actively uses WordPress in their domain, product or company name. Guys like word-press.net, wordpressvideos.com, etc were the first ones brought to our attention.

      Thus the scope creep is in the official (draft) policy – it has taken WordPress 4 years to put into official writing what they stated on my blog in the comments.

    • says

      Those are trademarked names, but to say that people can’t name the product that they are writing about without getting licensed for it seems a bit much to me

      Please do note that it is a draft policy. I agree that a blanket policy against WordPress being mentioned in a product name would be silly. The point of a trademark is to prevent confusion and to prevent people taking for their purposes the name you’ve built up. Names like “WordPress for Dummies,” “WordPress Bible,” “Professional WordPress” are building upon their existing “____ for Dummies,” “____ Bible,” and “Professional ____” brands. If those were a problem, I’m sure the hyper-trademark-litigious Apple would have objected before now.

      Something like “The Official WordPress Guidebook,” or an app called “WordPress” for Windows Phone 7 would be problematic. The trademark policy needs to prevent blatant trademark violations, while allowing for products to reference WordPress where appropriate.

      • says

        Mark I am not sure that really covers the realities, because silly interpretations are what cause disputes between interested parties, and also in the community.

        Here is Stephanie’s book
        http://sillybean.net/books/beginning-wordpress/

        A post by Jane on the WP Tavern suggests that permission was sought by the publisher to use the TradeMark.
        http://www.wptavern.com/forum/licensing/1946-wpf-draft-wordpress-tm-policy-automattic.html#post18895

        Publishers tend to be careful on things like trademarks

        You can’t really apply different rules for domains and products. If you allow products to use the trademark, then you might also need to then allow domains. Hard to allow one without the other… the use either has permission or not otherwise you open up a can of worms for not being consistant.

        There are currently over 500 listsings of products on Amazon
        500+ WordPress Books on Amazon
        (Associates Link)

        Lots of those listings are duplicates, and I am sure some asked for permission to use the trademark, but with publishing becoming easier especially in ebook form, there will be an increase in numbers, and maybe a decrease in quality.

        Under the current wording of the draft, for me to take a popular post such as my WordPress SEO Masterclass, update it, and publish it as an eBook I would need WP permission.

        Maybe I should get the foundation to approve every blog post just in case it becomes popular and has some brand value?

        This is important in a number of ways even for blogs

        WordPress in the title tag on the home page
        WordPress in the Blog title area as the main title

        Hmm – have an idea for a new plugin

  3. says

    Andy,
    As an SEO consultant I appreciate this information a lot. We use blogs to help with exposure online for our customers. It is good to know what to do , and what not to do. Any information of trademarks for commercial use is always helpful. We are all learning in the digital age.

  4. says

    Also not an attorney but… I think that “fair use” laws in the US would make it difficult for you to get into trouble for creating a book, video or whatever that teaches someone how to do something on WordPress and calling it “How to Whatever In WordPress.” If that didn’t fall under “fair use” I suspect we would have seen a lot of lawsuits by other companies by now, including some of the aforementioned companies like Apple and MS.

    More importantly, as long as you are clearly not trying to be deceitful or claim to represent the WordPress trademark and are simply referring to it then the WordPress Foundation and it’s representatives should welcome people creating books, videos, … for profit or otherwise because they do serve to further the WordPress software and community.

    A little more on the Fair Use topic (excerpted from: http://www.publaw.com/fairusetrade.html )

    Nutshell: As long as you don’t confuse people about ownership/sponsorship and are using the trademark in a descriptive manner (again, “How To X In WordPress”) you should be fine.

    **********************************************************************

    The Lanham Act permits a non-owner of a registered trademark to make “fair use” or “nominative use” of a trademark under certain circumstances without obtaining permission from the mark’s owner. The fair use and nominative use defenses are to help ensure that trademark owners do not prohibit the use of their marks when they are used for the purpose of description or identification. Fair use or nominative use may be recognized in those instances where a reader of a given work is clearly able to understand that the use of the trademark does not suggest sponsorship or association with the trademark owner’s product or services and therefore is not being used in a manner to confuse the reader.

    Generally, the use by an author of a trademark in a fictional work to describe or identify particular goods or services, such as “driving in my Ford”, “eating a Hershey bar”, “playing with my Beanie Baby” will not be considered an infringement as long as the use does not confuse the reader with respect to who actually owns the trademark. Trademark law also permits an author of a non-fiction work to include content that is favorable and/or critical of a trademark owner’s products or services. In this type of work the author should only use the trademark to describe or identify the trademark owner’s product or service and should be careful not to confuse the reader as to the actual provider of the trademark owner’s products or services

    • says

      We effectively went through all the fair use arguments 4 years ago but WordPress/Automattic are still at least it seems attempting to interpret the scope of their trademark to cover all use ralated to their product.

      At that time I even pointed out that some people even have domains registered for corporations with large legal teams.

      This comes back to the GPL battle – I argued that it doesn’t matter about the law, the WordPress core developers believed in one interpretation thus the right thing to do is respect their wishes.

Trackbacks

  1. […] Matt l’a annoncé cette semaine, cette fois c’est officiel : la propriété de la marque WordPress a été transférée vers la Fondation WordPress via un don d’Automattic. Ainsi, elle n’est plus la propriété de cette dernière mais de la fondation à but non lucratif. Ce changement entraine quelques modifications dans les conditions d’utilisation de la dite marque. […]