post-page

WordPress Trademark Usage

45
responses
by
 
on
December 2nd, 2009
in
WordPress

In the past few weeks, I’ve come across more and more websites which are in clear violation of the WordPress trademark, namely the domain requirements as outlined here. The simple thing to do when creating a website centered around WordPress is not to have the full name as part of the domain name. For example, fanofwordpress.com. Instead, it should be fanofwp.com. That’s not all that’s trademarked though as the WordPress logo is also registered.

Trademarked WordPress Logo

Trademarked WordPress Logo

The description of the visual trademark according to the United States Patent and Trademark Office is as follows:

  • 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

If you need an official logo to use, this page on the WordPress.org website has quite a few but one thing missing from the page is instructions on the proper usage of these images in a way that does not violate the trademark.

WordPress is one of the most popular publishing systems in use today which spawns a host of websites that offer services related to the software or fan sites dedicated to the project. These sites will continue to be built but what happens if you invest time, money, and a bunch of sweat equity only to find out a year into the project that you’re violating the trademark and either have to redirect the domain to something else or change around the design of the website? This could pose quite a problem.

To avoid situations like these, I think it’s time that a dedicated section of the WordPress.org website be setup to specifically address the WordPress trademarks. Explain proper usage as it relates to domain names, visual identity, etc. Answer as many common questions as possible through the information presented on these pages so that we know ahead of time what is and is not a trademark violation. I also think there needs to be a form where community members such as myself can notify Automattic of trademark abuse.

While the model doesn’t have to be mimicked, I think Mozilla does a great job with presenting their trademark information to the public as well as providing a form to fill out to report trademark abuse.

What do you think?

heading
45
Responses

 

Comments

  1. Andy Beard (25 comments.) says:

    This is a 3 year old problem though Automattic does allow the occasional use of the trademark.
    http://andybeard.eu/112/wordpr.....mmers.html

    As far as I am aware though, the trademark is owned by Automattic, not WordPress.org and the name was suggested by the community.

    The trademark page is buried

    You won’t find the typical “R” or “TM” by any use of the trademarks on the WordPress site

    WordPress have allowed the trademark to be used extensively in printed publications without mention that it is a trademark or registered trademark

    http://wordpress.org/about/books/

    I am not a lawyer, but considering the name came from a member of the community in the first place, and the current dilligence displayed in defending it evenly, I am becoming less and less inclined to believe in its validity.

    Disclosure: I still own wordpressplugins.info but forwarded it to wpplugins.info when the trademark was registered (site currently offline)

  2. kgraeme says:

    As an established brand trademark, it is protected. A trademark doesn’t even have to be registered to be protected, the registration just affords additional weight when adjudicating a case.

    http://www.uspto.gov/trademark.....gister.jsp

    I concur though that a page that clearly describes the appropriate use is needed. The reasons are twofold:

    1. People don’t understand trademark law.
    2. Because the WordPress software is GPL, people assume the branding is not protected.

  3. Nile (18 comments.) says:

    Yes, I do agree, WordPress should go into more detail on how their logos and such can be used. I believe using “wordpress” in the URL was already covered, and it was acceptable to use “wp”. I use it at WP Addict and will happily remove if told it needs to go if they update, but I do have a disclaimer that the site is not WordPress.

    kgraeme, I think it might be that, or just mainly #1. People still have some issues grasping copyright alone.

    • Jeff Chandler (171 comments.) says:

      Using WP in the domain and also including a disclaimer is more than what most people do. You don’t have anything to worry about.

      • Nile (18 comments.) says:

        I meant, more along the line of my fandom type “WP” logo in the Layout of WP Addict as well. Sorry for not clarifying, Jeff.

  4. Viper007Bond (91 comments.) says:

    From what I hear through the grapevine, this is already on a todo list. :)

  5. Theme premium (2 comments.) says:

    Even I have seen many blogs using WordPress as a domain name, initially they dont face any problem but once their website become popular… There website will have an issue…

  6. mkjones (1 comments.) says:

    I’d love a better outline sooner rather than later.

    I can only assume they don’t mind anyone using the logo ‘icon’ as its on a tonne of peoples “Powered By..” footer links (I’ve used it here: http://base6design.com).

    As for the logo text and the specific font it uses this is a grey area which they need to clear up.

    The problem with trademarks like this is you HAVE to, by law, aggressively protect them or they could be overturned. Digg.com had a problem with people using its name (specifically the double ‘gg’s in the name) and their logo on sites which aggregated content or provided services based on the sites features.

    In the end a lot of these sites were closed down or had to be renamed and updated at great cost to the original developers.

    I believe that a similar thing is happening with twitter right now. Their logo and words like “tweet” are appearing everywhere and there are sites, apps and services which take advantage of their apathy around the subject.

    • Jeff Chandler (171 comments.) says:

      As has been mentioned by Toni, Automattic has been going after trademark abusers. However, and this may not ever be known in the public sense is if their tactics are working and the offending parties end up becoming compliant with the trademark.

      The one site that comes to mind which many people took efforts to get rid of was WordPressDirect.com. I still hate the concept behind the site but after checking back with the domain, they have redirected the other one to wpdirect.com so apparently, Automattic is doing their job :)

  7. darila (3 comments.) says:

    So its not allowed to use wordpress in domain name?

  8. darila (3 comments.) says:

    so what should i do with http://www.wordpress-cms.com/ domain name. I didnt do any work on this blog yet, but this is maybe good thing?

    greetings, darila

  9. bubazoo (213 comments.) says:

    All this is crazyness. Its like the other day, some lady tried to yell at me for having someone create an image for me of a toilet paper roll. How on earth can you copyright a toilet paper roll??!!

    I’m sorry, but people are nuttcases with their images and certain letters of their domains being copyrighted. I can understand if say, xxxwordpress.com pointed to a porn website, but to be finiky about the way images are created, and certain letter being included in domain names, is totally off the wall, taking things WAY too far! After all, we are talking about a FREE program here! Besides, are we trying to monopolize the internet world like M$ and the RIAA has been trying to do over the years? I mean, I think all this is taking a simple thing like legal copyright wayyy too far.

    • Jeff Chandler (171 comments.) says:

      I’m not sure what the problem is. I was just outlining what we know about the proper use of the WordPress trademarks thus far but that we need more information with regards to proper usage before a project or investment is created only to find out you have to change plans midstream.

      If someone took WordPress MU, started up a website called FreeWordPress.com and essentially was doing the same thing as WordPress.com, this generates confusion. How do you go after a domain like that without a trademark or having ammunition? I don’t think Automattic is creating any monopoly. I think they have been pretty lenient with certain things that have WordPress in their name which are clearly not associated with the project or hosting service.

    • Chip Bennett (63 comments.) says:

      You appear to be confusing trademark with copyright.

      While the copyright license under which WordPress is released is GPL (which makes WordPress essentially “free” from copyright-related restrictions, other than GPL inheritance of distributions/derivatives), the WordPress trademarks are owned by Automattic, which has every right (and the responsibility) to protect their identity through enforcement of their trademark rights.

      In other words, that WordPress is a “free” program is completely irrelevant to matters of trademark infringement.

      The matter here is not that Automattic have copyrighted the name “WordPress” or the WordPress logos, but rather that those things are trademarks belonging to Automattic.

      Further, no claim of copyright infringement with respect to logo or name use is being made here, but rather a claim of trademark infringement.

    • Nile (18 comments.) says:

      You need to tell the lady unless the toilet paper roll graphic has Charmin on it, or is exactly like another person’s graphic, then that may be an issue of copyright.

      However, in your case (I have not seen the graphic) I would not worry. Just do not try to sell it off like a “Harry Potter” toilet paper…lol. Some lady during Halloween time in the UK got busted by Warner for trying to have a Harry Potter event in her restaurant. Warner had sent her a cease and desist.

  10. harknell (2 comments.) says:

    The unfortunate thing though is it’s not actually against trademark to have a domain with “WordPress” in it’s title and not be associated with Automattic. While many companies might think this is true, it’s been proven in court that URLs like “WordPresssucks.com” (as an example) are perfectly valid and are NOT a trademark violation as long as the site does not present itself as a representative of the trademark owning organization. If you owned “atonofwordpressthemes.com” and clearly stated on your index page that the site was not affiliated with Automattic then you have nothing to worry about legally. Trademark is *only* about customer fraud prevention (i.e. making a customer believe you represent a company you do not is a trademark violation).

    Of course if you like Automattic and WordPress you could follow what they would like you to do.

    • Virro (1 comments.) says:

      Actually, it is not a clear-cut rule that a trademark included in a domain name is allowed as long as the site does not present itself as a representative of the trademark owning organization. Sometimes it is quite hard to estimate by the domain name itself if it authorized or not so you still have to enter the website, which arguably constitutes unauthorized “use” of somebody else’s trademark. There are some doctrines which allow you to use other’s trademarks (parody, 1st amendment, fair use doctrine), but it can get rather technical and complicated.

  11. Toni (5 comments.) says:

    A very timely post. We are close to announcing some news related to the WordPress trademark. Over the years, we’ve been actively notifying and monitoring people who use the WordPress name or logo in ways we consider problematic. The basic goal is to avoid user confusion. When someone sees the WordPress name or logo on a third party site, it should be clear how that site relates to WordPress and that it indeed is a third party site, not an official WordPress one. More to come, hopefully this month!

    • Andy Beard (25 comments.) says:

      Toni I am looking forward to that

      One of the places I often see inconsistant use is Google Adwords as the inability for some WordPress service or product providers to use WordPress within adverts can lead to increased advertising costs compared to competitors.

      Quite often it is not the service providers competing in paid search, but affiliates so when exceptions are made to a rule, whilst you might be helping one specific company, you are penalizing others.

      As an example, should a few hosts currently be able to get cheaper clicks than other WordPress hosts because they can use the brand name?

      I have also considered registering domains such as XYZPress for a WordPress based service as it made sense even without the platform relationship… in fact I haven’t even finalized whether it would be WP or something else used, but with so many Automattic services using XYZPress name construction, that could also be looked on as confusing a user.

      • Toni (5 comments.) says:

        XYZPress is fine. We (Automattic) use it for VideoPress, BuddyPress, and GlotPress. Those are not going to confuse anyone into thinking that they are official WordPress products. In comparison, check out something like http://wpuk.co.uk/ (to pick a random example that someone just sent me). That’s clearly not OK because it uses the WordPress name and logo (and the WordPress.org theme) in ways that make it seem like they are officially part of WordPress. That’s the kind of stuff we want to prevent.

        As far as AdSense, Google used to allow us to block people from using WordPress in their ads. We used that feature because there were a lot of scammy ads for SEO and web hosting that mentioned WordPress. Unfortunately, Google no longer has this feature.

    • Jeff Chandler (171 comments.) says:

      This is great news Toni. Looking forward to seeing whether there will be clear and concise guidelines regarding the use of the trademark.

    • Nile (18 comments.) says:

      Toni, I am eager to hear about that soon. What about materials with the WP logo like for fandom things to give for free like wallpapers and buttons and stuff – would those be allowable? (Would hate to take down the free WP wallpapers I made for people to have. :( )

      • Toni (5 comments.) says:

        We’ve not fully decided, but I expect we’ll want to make it as easy a possible for people to create fan materials that are designed to promote thew WordPress open source community.

    • Jeff Chandler (171 comments.) says:

      Hey Toni, any news on the WordPress Trademark?

  12. Brian Carnell (15 comments.) says:

    I agree with harknell. Clearly WordPress cannot prevent all uses of the letters “wordpress” in a domain name. The fanofwordpress.com hypothetical domain name is exactly the sort of usage which would be very likely to be found as not infringing the trademark, just as harknell’s example of WordPressSucks.com would also almost certainly be fine based on similar trademark disputes involving domain names over the past few years (assuming these sites don’t try to falsely imply they are associated with WordPress).

    • Jeff Chandler (171 comments.) says:

      The discretion of whether a domain is acceptable or not should be left up to the trademark holder. My hope is that when they come out with the news on the trademark, that they will provide a form where people can ask for permission to use the trademark in their domain. Not all domains with WordPress in them are violations in my opinion. This is especially true of fan sites.

      • Chip Bennett (63 comments.) says:

        Actually, I’d say the discretion of whether or not a domain is acceptable is left to trademark law, which applies a specific standard (does the use of the mark cause confusion, or imply an association/identity – paraphrased, of course).

        A site such as wordpresssucks.com clearly does not cause confusion, as it would (presumably) exist to express disagreement with WordPress. The fanofwordpress.com site would probably be determined by the content (does it clearly, implicitly or explicitly, indicate that it is not affiliated with WordPress?)

        But, it would seem that, according to legal precedent, “fan”, parody, and criticism sites have fairly clear leeway with respect to trademark use.

        • Andy Beard (25 comments.) says:

          WordPresssucks.com as a consumer advocacy site similar in nature to all the Godaddysucks type sites are not a problem.

          But what happens if a competitor such as MT/Typepad or even one of their affiliates (there is an aff program) registers WordPresssucks.com and uses to with the sole purpose of marking money promoting a competing product.

  13. Owen says:

    I think you (along with a great many business organizations) are falling under the spell of the lawyers. Trademark protection is meant to protect a trademark against exploitation and negative effects. Lawyers interpret this to mean that any usage of the trademark that isn’t forced down their throats by the parent organization is a bad use. The result is that organizations literally throw away millions of dollars in free publicity and goodwill by enforcing trademarks against ‘friendly’ use.

    Everyone’s time and energy is better spent looking for abusive and malicious abuses of trademarks and ignoring the ones that don’t hurt.

    Just MHO

    • Jeff Chandler (171 comments.) says:

      Great points Owen. However, all questionable trademark infringements had to be emailed to Matt and he told you whether it was ok or not. This is not a good system. Instead, there needs to be a document that can be signed where it authorizes people to use the Trademark in their domain name or anything else using WordPress. I hope that form for legitimate use of the trademark is part of the news that Toni mentions in an upcoming announcement.

      • Trey C. (1 comments.) says:

        “Instead, there needs to be a document that can be signed where it authorizes people to use the Trademark in their domain name or anything else using WordPress.”

        If that were the case, websites like wordpresssucks.com wouldn’t exist if it had to be vetted through a WordPress counsel.

        In my opinion, just to make it plain and simple: if any site uses “WordPress” and does not have a statement on the website somewhere that is easily noticeable, saying that they aren’t affiliated with the official WordPress, then that site should be liable for damages depending on the nature of the site.

        Hell, if they want to take it that far I also think “WP” should be a protected trademark because obviously that’s what WordPress is also ‘doing business as’.

  14. Maria (4 comments.) says:

    This zapped us way back in 2005 when we wrote our WordPress book. We bought the domain wordpressvqs.com (the book was a “Visual QuickStart Guide”) and THEN saw the trademark usage request info on WordPress.org. We promptly bought wpvqs.com (which is still up and running, although the book is now out of print).

    It’s easy enough for folks to do. WordPress is a great, free software product. The least we can do is follow the established rules regarding trademarks.

  15. Sallie Goetsch (rhymes with 'sketch') (1 comments.) says:

    Ooh, ouch, *blush*. Just actually registered a domain with “WordPress” in it a few weeks ago–and I should know better! I used to do trademark research for people. Guess I’d better go snag the “WP” or some other alternate version, or create a subdomain, or something else legitimate. And I’ll definitely need to put up a disclaimer. Prominently.

    But, ah, Jeff…Does that make the title of your podcast, “WordPress Weekly,” an infringement? Do you need to put a disclaimer in your intro or outro?

    Given the confusion in these comments, a clear policy that’s easy to find would be a good step for Automattic to take.

    • Jeff Chandler (171 comments.) says:

      Was wondering when someone would bring this up :)

      When I first named the podcast, I too was worried about the trademark issue even though it had nothing to do with a domain. So in the beginning, I cautiously added a disclaimer to the beginning of the show to let listeners know that I was not in any way affiliated with Automattic or with the WordPress project. After a few episodes, I sent an email to Matt asking if I could use the name and he gave me the go ahead. Later on, he also told me that I didn’t need to add a disclaimer to the show since after awhile, it was pretty obvious that it was a fan based podcast.

      • Shepherd JIm says:

        As a longtime listener to the podcast I was aware that Jeff had “the okay” from “the Matt”.

        But, I continue to worry that down the road the fact that they have casually (read: no agreements were signed and no $$ changed hands) granted “exceptions” will be used against them when defending the trademark gets “messy” (read: courts, lawyers and judges).

  16. Hicham Maged (36 comments.) says:

    Go a head for this step. It is important to have clear guide-lines so that 3rd parties website(s) do not claim being part of WordPress which is something normal users might fell into when visiting them. For that matter, I recall that “Joomla!” is doing the same either with the logos or domains with ‘joomla’ term which courtesy of OpenSourceMatters if I recall right.

  17. John says:

    I’ve recently registered a called-to-action domain “DoWordpress.com” and “IDoWordpress.com as I provide installation and setup of wordpress to people who don’t know how to put one up. I do this for a fee of course but will be putting a disclaimer that we are a “third party” provider and that wordpress is a tm of automattic. Since its a called-to-action name and will be putting the disclaimers up when the site is ready, are we in the clear?



Trackbacks/Pingbacks

  1. [...] reading an article on Weblog Tools Collection in regards to the WordPress trademark, and reviewing the information on [...]

  2. [...] Toni announced in a comment that they have some news that is forthcoming regarding the subject. http://weblogtoolscollection.com/arc…omment-1321154 WPTavern Twitter Account | Personal Blog | WordPress Weekly [...]

  3. [...] for not knowing about it, they certainly do. http://weblogtoolscollection.com/arc…omment-1321160 I'm not sure how far they can take things with regards to getting sites like that taken down. The [...]

  4. [...] Hindi Version of WordPress I came across an interesting discussion about WordPress trademark usage. [...]

Obviously Powered by WordPress. © 2003-2013

page counter
css.php