In March 2006, Automattic filed to register the WordPress trademark, and the competing interests of WordPress (the open-source project) and WordPress.com (the commercial enterprise) again clashed.
Trademark registrations can be slow processes; a registrant has to demonstrate that they’re proactively protecting that trademark. Toni Schneider spent many of his early years at Automattic doing just that. It was a challenge, he says, to figure out “how can we make this a very open brand that lots of people can participate in but it doesn’t just turn into some mess that doesn’t mean anything in the marketplace because everybody just uses it in different ways.” The large ecosystem around WordPress can make it difficult for users to know who they’re dealing with: the official project? Automattic? A third-party developer or consultant? Avoiding trademark dilution was critical to ensure clarity.
Any trademark can, over time, become generic: the meaning of the name morphs from identifying a specific thing to an entire class. The word “aspirin,” which is used as a general term for a class of medications in the United States, is actually a registered trademark of Bayer in 80 other countries. Office machinery company Xerox once ran an advertising campaign to dissuade people from using “xerox” as a verb. The onus is on the trademark owner to prevent their trademark from becoming generic.
The first meaningful attempt to protect the WordPress trademark sought to establish control over the domain. To successfully register a trademark, the owner has to enforce the trademark consistently. For WordPress this meant a domain policy — a ban on using WordPress in top level domains for any sites other than www.ads-software.com and WordPress.com. Just before filing, www.ads-software.com created a domain policy requesting that community members not use “WordPress” in their domains.
Once the application was submitted, Automattic began enforcing the domain guideline to protect the WordPress trademark. Many websites used WordPress in their domain names — community websites, businesses selling WordPress products and services, WordPress fans, and more. There was confusion about what people could and couldn’t do. Could community members use WordPress in the title of their website? Was it okay in subdomains?
In a comment thread on Lorelle VanFossen’s popular blog, community members wonder whether they can use the label “on WordPress” (as in “Lorelle on WordPress”) on their blogs. After lengthy discussion in the comments, Lorelle updated her post to add:
After many discussions with Matt and the WordPress Community and staff, it is official. It is a violation of trademark to use WordPress in your site’s domain name. You may use it in the title and in blog posts, however, please note that using WP or WordPress in the site title implies the site specializes in WordPress content. Don’t disappoint.
The new policy influenced everything from community sites to businesses. International WordPress groups that had set up their own websites — wordpress.dk, wordpress.fr, wordpress.pt — were particularly affected. These community gathering points often had translated documentation, links for localized versions of the software, and support forums to make WordPress fully available to non-English speakers. To these groups, the domain policy felt like a top-down order rather than a community decision. For others who believed that the WordPress name and logo belonged to the project itself, domain restrictions seemed counter to the WordPress ethos.
Also affected was wordpress-arena.com, a site running a WordPress theme contest. After Alex King’s 2005 CSS competition, theme competitions became popular community events. The contests had clear community benefits, increasing the pool of themes, allowing developers to show off their skills, and pushing the boundaries of theme development. Although he enforced the domain guideline, Matt left the site a message of support, also noting that “Unfortunately for every cool usage (like this competition, potentially) there are a dozen scammers and spammers misusing WordPress, selling spamming scripts or copies of WP itself.”
Six months later, official cease and desist letters went out to sites still using WordPress in their domains. Attention centered on two commercial websites, wordpressvideos.com, run by Brandon Hong, and Sherman Hu’s wordpresstutorials.com. Both were registered prior to WordPress’ trademark policy, and presented a unique trademarking challenge. The main test of trademark violation is “likelihood of confusion.” International community sites could easily be confused for the main WordPress project, as could sites selling plugins, themes, and other CMSs, but tutorials and books present a gray area. Similar sites in the Adobe community (photoshoptutorials.ws and photoshopessentials.com, for example) are not owned by Adobe, but are not seen as trademark violations.
Sherman Hu and Brandon Hong both received letters. As is often the case in the blogging world, a blogger wrote about it: in his post, Andy Beard remarks on Automattic’s tardiness in registering the trademark and preventing others from using it. He also defends the two sites being singled out. Both provided WordPress services and cultivated their own communities; they weren’t, he felt, the “spammy products” that Matt thought they were. Besides, just a year earlier, there had been a link farm on www.ads-software.com.
Others jumped to defend the two sites. Even those who supported Automattic’s trademark position bristled when Matt branded the two sites as “snake oil,” and Hu’s customers and friends flocked to Beard’s post to voice their support. Other prominent internet marketers, including copyblogger’s Brian Clark, took issue with the fact that long sales letters were branded spammy and scammy.
Eventually, the sites came to an agreement with Automattic. Sherman agreed to add a trademark symbol beside every use of the word WordPress, and Hong’s WordPress Tutorials site came out with a redesign. Sherman eventually shut WordPress Videos down in 2008, moving on to focus on his consulting business.
Since then, Automattic has consistently enforced the WordPress trademark. While to many it appears that Automattic is motivated by commercial benefit, its involvement brings advantages as well; as commercial entity, it’s able to put resources into enforcement that the free software project doesn’t have. Still, it would be several more years before all the WordPress trademark issues were resolved.