Introduction

If you’re a budding WordPress developer, designer or entrepreneur, you may be whipping up a creative storm and readying it for release. It might be a theme shop, a Gravity Forms-quality plugin, a WordPress-tailored hosting environment, a WordPress support agency or an app-making platform. The product or service is nearing release and you’re amping to “get it out there”. You love WordPress and you want to sing its praises from the rooftops, including in some way in the naming, description or marketing of your product or service. What better way to access your target audience than by using “WordPress” and its associated marks left, right and centre. Right?

Well, before you go using the WordPress name and logo in your naming and marketing, you might want to note that Automattic Inc and (more significantly now) the WordPress Foundation have a bunch of trademarks. Make sure you stay on the right side of the line of what’s permitted and what’s not. To help you understand all this, I’ll explain what a trademark is, Automattic’s and the WordPress Foundation’s WordPress trademarks, the enforcement of trademark rights, Automattic’s transfer of certain trademarks to the WordPress Foundation and key aspects of the Foundation’s Trademark Policy.

What is a trademark?

A trademark is, in essence, a brand or logo. Trademarks enable businesses to distinguish their products and services and to create a distinctive and hopefully memorable brand that customers associate with those products and services.

Trademarks can include, for example, words, logos, colours and shapes or a combination of these things. Although registration is not mandatory, it has several advantages. As the United States Patent and Trademark Office explains, these advantages include “notice to the public of the registrant’s claim of ownership of the mark, legal presumption of ownership nationwide, and exclusive right to use the mark on or in connection with the goods/services listed in the registration”. In many countries, having a registered trademark for your product or service usually provides you with greater or more readily enforceable rights than you might otherwise have for your product or service. Trademarks can be valuable business assets.

Automattic Inc’s WordPress trademarks

Automattic Inc was formed in 2005 (you can find the Delaware corporation’s details by searching on “Automattic” at https://delecorp.delaware.gov/tin/GINameSearch.jsp). Over the years, Automattic has registered (or sought registration for) at least the following WordPress-related trademarks (it has also applied to register trademarks for the likes of JETPACK and CODE POET but I don’t list them here):

• WORDPRESS, as a word, in relation to “[d]ownloadable software program for use in design and managing content on a website” (serial number 78826938, filed on 1 March 2006 and registered on 23 January 2007);
• WORDPRESS, as a standard character mark, in relation to “[d]ownloadable software program for use in design and managing content on a website” (serial number 78826734, filed on 1 March 2006 and registered on 23 January 2007);
• W WORDPRESS, the current word mark/logo consisting of the stylised W and WordPress, in relation to “[d]ownloadable software program for use in design and managing content on a website” (serial number 78826938, filed on 1 March 2006 and registered on 23 January 2007); and
• W, the stylised W word mark/logo, in relation to “computer software for use in design and managing content on a website and enabling internet publishing” (serial number 85023661, filed on 26 April 2010 and registered on 5 July 2011);
• JETPACK WORDPRESS.COM (serial number 86233988, filed for registration on 27 March 2014; according to TESS (see below), this one was abandoned in October 2014).

(You can find the United States Patent and Trademark Office’s records of the trademark filings at the United States Patent and Trademark Office’s Trademark Electronic Search System (TESS).)

Enforcement of rights

In the early days of WordPress, it was fairly common for WordPress advocates and budding WordPress entrepreneurs to use the name “WordPress” in their domain names, site names and even business names, regardless of this being inconsistent with Automattic’s rights in the name.

Automattic sought to put a stop to that fairly early on, as it was perfectly entitled to do. For example, a blog post by Andy Wibbels in October 2006 records the text of an email that an employee of Automattic Inc is said to have sent to a site owner that was using “WordPress” in its domain name and product without permission. Automattic is said to have asked the recipient to stop using its trademark to market the recipient’s services and to have asked how long it would take the recipient to change the name of its site and product (see WordPress is a Registered Trademark of Automattic, Inc).

More recently WPTavern’s Jeff Chandler has also explained, in a helpful post on the subject in which he reproduces an email exchange with someone who unwittingly used “WordPress” in its domain name, that he “usually send[s] out a friendly email to anyone violating the trademark as it’s best to deal with it early versus having that domain be established” (see Friendly Reminder About The WordPress Domain Trademark, 20 July 2013).

Transfer of WordPress trademarks to the WordPress Foundation

On 9 September 2010, Matt Mullenweg announced that Automattic had transferred the WordPress trademark to the WordPress Foundation, “the non-profit dedicated to promoting and ensuring access to WordPress and related open source projects in perpetuity”.  As Matt noted on his blog, this meant that the most central piece of WordPress’s identity had become fully independent from any company.

This was, as Matt noted, a pretty dig deal, as Automattic – a commercial organisation – had donated one of its most valuable assets and ceded control of it to a non-profit organisation.

Why did Automattic do this? This wasn’t, after all, the approach that most commercial enterprises would take to a valuable business asset. The answer to why Automattic did it is this: it was in the best interests of the wider WordPress community. This is how Matt put it:

“Automattic might not always be under my influence, so from the beginning I envisioned a structure where for-profit, non-profit, and not-just-for-profit could coexist and balance each other out. It’s important for me to know that WordPress will be protected and that the brand will continue to be a beacon of open source freedom regardless of whether any company is as benevolent as Automattic has been thus far.”

(For earlier encouragement for Automattic to do this, see F Branckaute’s Automattic, Inc: The Time To Return WordPress To The Community Has Come, 13 July 2007) . I don’t know whether that encouragement was relevant to Automattic’s decision.)

Cool, so I can use the WordPress trademark right?

Steady on… not so fast. If you want to use a WordPress trademark you’ll need to make sure you comply with the WordPress Foundation’s Trademark Policy. The key points to note are these:

• You need to obtain permission from the WordPress Foundation to use the WordPress or WordCamp name or logo as part of any project, product, service, domain or company name (the Policy explains the circumstances in which the Foundation will grant permission).
• Do not use WordPress or WordCamp as part of a top-level domain name. (If you look at the separate Domains policy, you’ll see that the primary concern is with top-level domains. That page states that “‘WordPress’ in subdomains is fine, like wordpress.example.com”. It should follow, I would have thought, that using “wordpress” in a subfolder, e.g., example.com/wordpress, is equally fine.)
• The Policy allows you to use the WordCamp name and logo in the following situations: you are using the logo on the official site for a WordCamp that has been approved by WordCamp Central or you are using a graphic provided by a WordCamp to promote the event or the fact that you are attending, speaking, volunteering, or sponsoring the event.
• 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. This is an important distinction to grasp. The WordPress Foundation is saying that, whilst you cannot use WordPress as part of a business / product / service name, you can use it to describe the business / product / service. The Policy provides these helpful examples:

“For example, a consulting company can describe its business as ‘123 Web Services, offering WordPress consulting for small businesses,’ but cannot call its business ‘The WordPress Consulting Company.’ Similarly, a business related to WordPress themes can describe itself as ‘XYZ Themes, the world’s best WordPress themes,’ but cannot call itself ‘The WordPress Theme Portal.'”

• Similarly, it’s OK to use the WordPress or WordCamp logo as part of a page that describes your products or services, but it is not OK to use it as part of your company or product logo or branding itself.
• The abbreviation “WP” is not covered by the WordPress trademarks, meaning people may use as they see fit. (This is why you’ll see WP being used in so many different ways across the WordPress ecosystem, e.g., WPTavern, WPMU DEV, WP Engine, WP Elevation, Wpshower, WP Valet, WP and Legal Stuff, and so forth. The same can be said for the word “Press”, e.g., StudioPress, WerkPress, TablePress, Marketing Press, AppPresser and so on.)
• When in doubt, contact the WordPress Foundation (or a trademark lawyer) for clarification (something which, perhaps, some of the companies listed on Open Corporates with “WordPress” in their name should have done or may wish to do).

Just one other thing. When you are allowed to and wish to use a WordPress logo, make sure you use the right one. You can find them at wordpress.org.