The WordPress Foundation applied to trademark ‘Managed WordPress’ and ‘Hosted WordPress’ for software and hosting services. If approved, this would limit commercial use of these terms by web hosts and even plugins without prior permission.
Trademark Applications Filed By WordPress
The trademark applications for the two hosting related phrases are dated July 12, 2024 and lists the WordPress Foundation as the applicant of the trademarks on the phrases “Managed WordPress” and “Hosted WordPress”.
The WordPress Foundation is the non-profit organization that’s behind the open-source WordPress content management system.
The applications cover the use of the phrases in web hosting, servers for web hosting, downloadable software platforms for web hosting, cloud hosting services, SaaS services, software for managing website content (including downloadable software), web development software, downloadable software for design and managing websites, and plugin software.
Why WordPress Filed Trademarks
The trademark application is filed on an “Intent to Use” basis, which means that they say they’re going to use it.
The trademark applications both inform:
“The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified
goods/services.”
Who Wants To Own The Trademarks?
The trademark application was filed by the WordPress Foundation, a non-profit entity that is separate from the for-profit Automattic. Yet it was Automattic that was demanding money in exchange for a license to use certain WordPress related phrase.
How can Automattic make claims for trademarks that are claimed by WordPress Foundation, a separate legal entity? The answer to the question may be that the WordPress Foundation has an agreement with Automattic for commercial use and enforcing their trademarks.
The cease and desist sent by WP Engine to Automattic explains:
“During calls on September 17th and 19th, for instance, Automattic CFO Mark Davies told a WP Engine board member that Automattic would “go to war” if WP Engine did not agree to pay its competitor Automattic a significant percentage of its gross revenues – tens of millions of dollars in fact – on an ongoing basis. Mr. Davies suggested the payment ostensibly would be for a “license” to use certain trademarks like WordPress, even though WP Engine needs no such license.
WP Engine’s uses of those marks to describe its services – as all companies in this space do – are fair uses under settled trademark law and consistent with WordPress’ own guidelines.”
The back and forth between WordPress, Matt Mullenweg and WP Engine omits this little detail but it suggests that Automattic is licensed to enforce trademarks on behalf of the WordPress Foundation.
Implications Of Trademark Filing
The trademark application could have an impact on web hosts that use the phrases “Managed WordPress” and “Hosted WordPress” because the WordPress Foundation would be able to enforce their ownership of the phrase or ask for licensing fees.
The WordPress Foundation’s role in this trademark application is to assert legal control over the terms “Managed WordPress” and “Hosted WordPress” so as to control what entities are able to use those phrases.
If the trademark application passes examination then there is supposed to be a period of time where third parties can file objections to the trademark application.
Read the trademark applications here:
Managed WordPress Trademark Application
Hosted WordPress Trademark Application
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