Automattic, WP Engine

The ‘WordPress’ trademarks and the classes of activity they cover

The WordPress trademarks

With all this talk of Automattic, WP Engine, and trademarks, I thought it might help to share a table I’ve created that lists the WordPress trademarks, when they were registered, the goods and services or classes of activity they cover, the original owner, the current owner, and whether there have been any ‘assignments’ (transfers and the like). All information comes from the United States Patent and Trademark Office. Here it is (the text of the exclusive licence to Automattic is set out after the table):

* The licence was (get ready for some legal verbiage):

“an exclusive, fully-paid, royalty-free, perpetual, irrevocable, worldwide, sublicensable right and licence to use and otherwise exploit the trademarks identified in Exhibit A [attached to the transfer], and any and all related or similar names, marks, designs, domain names, and other rights (excluding www.wordpress.org, www.wordcamp.org and www.wordpressfoundation.org), along with all associated applications, registration and goodwill (the “Trademarks”), in connection with the hosting of blogs and websites that utilise any version or component of the WordPress open source publishing platform product or open source successor of any of the foregoing on or in connection with www.wordpress.com and www.wordpress.tv (each and collectively, together with any subdomains of any of the foregoing, “Automatic Sites”), providing support for the Automatic Sites, and/or substantially similar uses in connection with the Automatic Sites. This licence is subject in all respects to that Trademark Donation, License and Security Agreement, by and between Licensor and Licensee, effective as of June 7, 2010.”

That legal verbiage can be shortened to: an exclusive, sublicensable right and licence to use and otherwise exploit the trademarks identified in Exhibit A in connection with the hosting of blogs and websites that utilise any version or component of WordPress or in connection with www.wordpress.com and www.wordpress.tv (each and collectively, together with any subdomains of any of the foregoing, “Automatic Sites”), providing support for the Automatic Sites, and/or substantially similar uses in connection with the Automatic Sites.

Exhibit A (headed ‘Schedule A’), was as follows:

Other trademarks owned by the WordPress Foundation

The WordPress Foundation also owns trademarks for ‘OPENVERSE’, ‘BUDDYPRESS’, ‘WP-CLI’, ‘WORDCAMP’, and has applications pending for ‘bbPRESS’, ‘MANAGED WORDPRESS’, and ‘HOSTED WORDPRESS’. The applications for ‘MANAGED WORDPRESS’, and ‘HOSTED WORDPRESS’ were filed in July 2024.

WooCommerce trademarks

WooCommerce Inc owns trademarks for ‘WOO EXPRESS’, ‘WOOEXPERT’, ‘WOOCOMMERCE’ (word mark and logo mark), ‘WOOCOMMERCE PAYMENTS’, ‘WOO’ (word mark and logo mark), ‘and WOOCOMMERCE STOREFRONT’. It also has applications pending for ‘HOSTED WOO’, ‘WOOPAY’, ‘WOO PARTNER’, ‘MANAGED WOO’, ‘WOOPAYMENTS’, and ‘WOO’ (additional classes of activity). The pending applications were filed in May 2022 (‘WOOPAY’), June 2023 (‘WOOPAYMENTS’), November 2023 (‘WOO PARTNER’), January 2024 (‘WOO’), and March 2024 (‘HOSTED WOO’ and ‘MANAGED WOO’). Until checking, I hadn’t appreciated the number of trademarks owned or applied for by WooCommerce Inc.

WP Engine’s trademarks

Note also that WP Engine owns a range of trademarks: ‘WPENGINE’ (logo mark), ‘WP ENGINE’ (word mark), ‘PRESS AHEAD’, ‘EVERCACHE’, ‘GENESIS’, ‘TORQUE’, ‘ATLAS’, ‘VELOCITIZE’, ‘FROST’, ‘FAUST.JS’, ‘WP Migrate DB’, ‘WP Offload’, ‘FLYWHEEL’, and ‘STUDIOPRESS’. It has applications pending for ‘ACF’ and ‘ADVANCED CUSTOM FIELDS’, and for a couple of variants of its logo. Note that, with WP Engine owning ‘WP ENGINE’ trademarks, any argument that the name ‘WP ENGINE’ infringes ‘WORDPRESS’ trademarks seems bound to fail.

Hope this helps people’s understanding.