If WordPress is granted trademarks for “Managed WordPress” and “Hosted WordPress,” web hosting and plugins may be affected.
For software and hosting services, the WordPress Foundation filed trademark applications for “Managed WordPress” and “Hosted WordPress.” If accepted, this will restrict web hosts’ and even plugins’ unrestricted commercial usage of these terms.
Applications for Trademarks Submitted by WordPress
The WordPress Foundation is listed as the applicant of the trademarks on the phrases “Managed WordPress” and “Hosted WordPress” in the trademark applications for the two hosting-related terms, which are dated July 12, 2024.
The non-profit organization that created the open-source WordPress content management system is called the WordPress Foundation.
The applications address the following topics: web hosting terminology; web hosting servers; downloadable software platforms; cloud hosting services; software as a service (SaaS); web development software; software for managing website content (including downloadable software); and plugin software.
Why Trademarks Were Filed by WordPress
The trademark application is submitted under the heading “Intent to Use,” indicating that the applicant intends to use the trademark.
Both of the trademark applications provide the same information:
“The applicant intends to use the mark in commerce on or in connection with the identified goods/services, and is authorized to do so.”
Who Desires To Be The Trademark Owner?
The WordPress Foundation, a non-profit organization distinct from the for-profit Automattic, submitted the trademark application. However, Automattic was the one requesting payment in return for permission to use a certain word connected to WordPress.
How may Automattic assert rights to trademarks that the WordPress Foundation, an independent legal body, has asserted? It’s possible that the WordPress Foundation and Automattic have a contract for commercial use and trademark enforcement.
The stop and desist letter that Automattic received from WP Engine states:
“For example, Automattic CFO Mark Davies threatened to “go to war” with a board member of WP Engine if the company did not agree to pay its rival Automattic a sizable portion of its gross revenues—tens of millions of dollars, to be exact—on a regular basis during calls on September 17 and 19.
Although WP Engine does not require a “license” to use specific trademarks, such as WordPress, Mr. Davies hinted that the payment would be for one.
Like all businesses in this industry, WP Engine utilizes those marks to describe its services, and doing so is both compliant with WordPress policy and a fair use of the marks under established trademark law.
This small element is left out of the correspondence between WordPress, Matt Mullenweg, and WP Engine, but it implies that Automattic has permission to enforce trademarks on behalf of the WordPress Foundation.
Significance Of Filing A Trademark
Because the WordPress Foundation would be able to assert their ownership of the phrase or demand licensing payments, site providers that use the terms “Managed WordPress” and “Hosted WordPress” may be impacted by the trademark application.
In order to regulate which entities are permitted to use the terms “Managed WordPress” and “Hosted WordPress,” the WordPress Foundation is claiming legal authority over those phrases in this trademark application.
There should be a window of opportunity for other parties to submit objections to the trademark application if it passes scrutiny.
