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

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

It is actually quite a sterile look on the practice, and doesn’t mention one important concept.

Community

Rand asks

Has anyone ever actively pursued this technique? Any success? I know it’s worked on us – I’ll link back to someone who linked to SEOmoz with a good idea or suggestion or topic; when it’s done right, it doesn’t seem like spam or marketing at all – just good inter-site dialogue.

My answer:-

I think every notable blogger peruses this technique, unless they are running a sterile corporate blog.

As an example supporting the Z-list meme meant I gave a lot of blogs some link love, but at the same time, many of the bloggers I linked to have visited my blog, and maybe a couple subscribed.

Another example was my support of WordPress Tutorials when they were having trademark problems.

When I took Robert Scoble to task on his promotion of Google Reader, I experienced a significant surge in traffic from his post, but very little of it stayed around as subscribers, or even read my first post on the subject.

Insular vs Community

I have written about my community aims for this blog in the past. This blog is an experiment in running a community based blog on internet and niche marketing. Most such blogs are very insular, with the aim to retain customers rather than be part of the blogging community.

In many ways it is an interesting experiment, because the views of an internet marketer in many ways are the opposite of bloggers, who don’t like being sold to.
My opinions are often quite the opposite of many A-list bloggers, as my commentary on subjects like PayPerPost have proven. I haven’t been dragged over the coals by anyone, but such views don’t attract link love.

The same can be true of my Disclosure Policy Plugin. Because it provides a solution to the controversy of disclosure on blogs, hardly anyone is giving the plugin any link love.

Trackback or Comment

Unfortunately in my experience, trackbacks in general bring in less traffic than a well timed comment, unless a blog is setup to emphasise trackbacks and you get in very early.

This blog is setup to encourage trackbacks. Trackbacks gain a followable link as do comments.

This time around it is really good news

It looks like Sherman and the guys at Automattic have come to a level of understanding, and I am sure the newly designed sales letter I mentioned in my previous post helped somewhat.

One additional important factor may well have been the free videos now also available on the site.
Sherman has provided currently 15 “introduction to blogging” videos free of charge, and they are well worth watching for anyone new to the Worpdress blogging platform.

I would like to thank the following sites for their coverage (pinging them where possible so there is some closure)

First of all sites that picked up the initial situation

Andy Wibbles, Kenneth Stein, Blogging Pro, The Blog Herald, Lorelle on WordPress, Denis @ Semiologic, and of course That Girl Again @ WordPress Wank who went through this multiple times.

Sherman’s friends and customers who gave their support

Michael Campbell Michel Fortin, Trish Jones, Saumil Patel, Brian Clark, Troy Pentico, Laura Childs, Marc Quarles

I am sure there are many more posts out there, but not every one of them linked directly through to me, or I didn’t discover them during my initial research. If I missed your post, or simply forgot, I am happy to add you to the list.

I would like to stress that there wasn’t a “good guy” and a “bad guy” in this situation. It was more like 2 good guys realising that they weren’t the only good guys in town.

Ownership of the WordPress Trademark has been transferred to the WordPress foundation, and there is evidence that this also will increase the scope of what is covered.

It is not just domains but also products.

Update: 15th November 2006

WordPress Tutorials I believe have come to a level of understanding with the guys at Automattic. For full details please read about it @ WordPress Tutorials (business as usual)
I have also changed the tagging of this post such that it doesn’t appear as a related post to other WordPress posts on this blog

Original Post

First of all a general overview of the current WordPress Trademark discussion, and then my own theory as to why Automattic have selectively approached 2 legitimate services to stop using the WordPress Trademark.

Current Discussion on WordPress Trademark

A month ago I voluntarily changed the domain name due to the WordPress Trademark for my WordPress Plugins site, so that the domain being used did not include the word “WordPress”.

I believe they have a right to defend their trademark, and that it was good for the longterm nature of my business to support their wishes.
Over the last few days there have been many reports about Toni, a representitive of WordPress / Automattic writing an email to website owners using WordPress in their domain name.

Here are a whole list of sites discussing this problem:-

Andy Wibbels first posted about the trademark emails

Blogging Pro made some mistakes assuming WordPress was a registered trademark, a mistake not made by Toni the Automattic representitive.

Kenneth Stein goes into some of the issues and questions Lorelle on WordPress involvement (Matt quickly cleared up any misconception in the Automattic relationship with Lorelle)
Matt has been portraying a “squeeky clean” image of WordPress and Automattic since the small incident last year.

Denis has a post on this subject at Semiologic

The biggest problem is that WordPress for at least the last year have been very slow in providing official information and “terms of service” for their products.

When WordPress.com was in beta, and even after launch, there were no terms of service available.

I had a WordPress.com blog I was testing with BlogAutoPublisher, especially some errors in xml-rpc (not the fault of BlogAutoPublisher). I had made 4 original posts, and had grabbed 4 WordPress related articles from one of my niche sites that happened to also have some text link advertising inserted in the middle of the articles.

My blog was shut down with no notice, reason, or notification

Now there is the domain name issue. I think Andy Wibbels summed up my thoughts on this extremely well.

“Spammy Sites” using the WordPress Trademark?

Here is one quote from Matt (from the Blogging Pro post)

The only folks we’ve sent any notes to is products I consider spammy that we don’t want associated or using the name, whether we had a trademark or not. If someone asks me before starting something, I point them to the page on WP.org, and I’ve even offered to pay for a new domain if they’ve already registered one.

This isn’t a new problem, as this long thread on the issue back in March proves

But here is a quote from Toni (from Andi Wibbels’ post)

And then there are few out there that are making money from reselling WordPress or selling SEO packages. We’ve contacted those to stop using WordPress as part of their domain because they are commercial ventures that are in no way connected to WordPress or Automattic.

And following on

BTW, here’s an example of the type of site that I’ve contacted: wordpressvideos.com

WordPress Wank also have a new post on the subject

There we get another great quote from Matt in the comments

There is no campaign, and only TWO sites have been sent notes like the above since this entire policy started months ago – wordpresstutorials.com and wordpressvideos.com.

So the current targets are Brandon Hongs WordPressVideos.com which has been online for well over one year. Brandon provides over 100 training Videos for WordPress.

Sherman Hu’s WordPresstutorials.com is a similar site, but in this case is a subscription service constantly adding new content, with what I have heard is a vibrant members community.

Sure these sites are making a living from providing a service to WordPress users, but they are not “spammy sites” – they are commercial sites providing a service that Automattic don’t offer… yet

The WordPress support forums are actually quite an intimidating place for a newbie, as are many online forums. The Wiki is very imformative, but still quite disconcerting for a newbie.

Thus there is a need for sites such as these that provide a relatively cheap service, often to people running online businesses.

I am sure the cost is far cheaper than purchasing corporate consulting services from companies that specialise in providing such services for WordPress.

That is actually the way many Open Source projets such as WordPress are funded. Provide the free software, and monetise it with corporate services. That is how the core development of WordPress is funded, both by Automattic and some of the other core developers.

A Question of Competition

Note these are my personal views, not based on any fact, but this is what I would do personally if it (“WordPress”) was my business. This will probably be looked on by many as some kind of WordPress conspiracy theory heavily denied, but it makes in my opinion serious business sense, and the founders of Automattic are highly intelligent, and have commercial and legal advisors.

There are over 100 domain names registered with the word “WordPress”. Many of those domains might be for more “spammy” services or tools. (though note a tool is a tool, and can be used in many cases in a none spammy way, just like WordPress)

Thus why these 2 sites?

I think it might be, at least partially because they offer a service that competes with services that WordPress or Automattic might want to offer in the future. It would be very easy to add a paid support area to one of the WordPress sites, that included video versions of lots of tutorial information.

Obviously it also reduces the market for higher end professional services.

These two sites have proven that there is a viable market for such a service, and obviously a service like this officially endorsed by WordPress would generate significantly more income than the very good 3rd party efforts.

The information provided would most likely be different, unless WordPress hired an affiliate marketing expert, and a few SEO experts to go along with the WordPress core training and support.

Conservatively there is a significant 6 or possibly 7 figure (projecting growth) monthly income possible from such a service on the official site.

It should be noted that Matt specifically stated “spammy products” and not “spammy use of domain name”. Those 2 sites are not “spammy products”. I don’t want to get into the legalities of this, but Matt might have just created a loophole.
I am not affiliated with either of the sites so far approached to change their domain name, but I do respect their services and believe them to be legitimate.
It is also important to note that I will soon be launching my own WordPress based membership service. There might be some cross-over in content, but my own service is primarily based on Custom WordPress plugins, possibly some unique themes, etc.

Update 1st November 2006

(for my fellow Internet/Niche Marketers/Bloggers)

I don’t normally return to posts and add content a few days after the original post, especially a post that has received so many comments. Obviously I make factual corrections when pointed out.As of now, this post has 29 comments, many of them from respected experts within the internet marketing community.

Not only have members of the internet marketing community (rather than blogging community) been singled out, but the whole ethics of internet marketing has been called into question.

Do you believe you are a “snake oil salesman” simply by trying to improve your sales of a product?

You could just read this post, read all the comments from people you respect, and decide you have nothing else to add, so you won’t comment, and noone will know you cared.

If you do care there is however something you can do.

• Write about this situation and link to this page. You won’t be alone in writing about this. As an example Michael Campbell wrote about it on his Internet Marketing Secrets Blog just yesterday. I am actually in shock – Michael even used a link without “no follow” :)
• Mention in your emails – many marketers mention their blog posts in their email letters. Michael Campbell has just mentioned this at the bottom of his weekly mailing.
• Social Networking, Bookmarking, Forums (I think you all know the drill)

Last time I looked John Reese had about 300 comments on his secret blog with a green blob on it. I believe that was mainly from his own list.

I am sure we can do much better than that here

So make your voice heard!

• if you post on your blog, and use trackback, it will give you a real backlink
• if you don’t have access to trackback, make sure you leave a comment with a link to your blog, or the post you made
  
• if you use a bookmarking service, leave a comment on the service as well. A site that gets 500 Diggs and no comments doesn’t show how much you really care about this

Whatever you do, do not use any form of spam

But only if you care… ?