Around four 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.
Matt has just announced that he has finally transferred the WordPress trademark to the WordPress Foundation which is to be applauded.
Automattic was indeed 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 two 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 four years.
No mention of trademark usage 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 usage 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 consistency.
2. WordPress Trademark Scope
WordPress has 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 has 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 noncommercial 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 e-book? Same situation.
- Have a WordPress plugin – don’t use WordPress in the name if you have any plans ever to 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.
While they haven’t done so yet, I would expect them to police the trademark over all possible use scenarios eventually – 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 the 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 creeps 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 a product of the new interpretation, no matter where it is being used.
Thus if 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 Trademark 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 clamp down on other usages.
Many more sites and products don’t comply with the new policy than the previous domain policy, and there were still many 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: a Downloadable software program for use in design and managing content on a website. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328IC 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: a Downloadable software program for use in design and managing content on a website. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328IC 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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