WordPress Trademark Bid Rejected

The WordPress Foundation has hit a stumbling block in its attempt to trademark the terms “Managed WordPress” and “Hosted WordPress”, after the United States Patent and Trademark Office (USPTO) rejected both applications.

Despite the rejection, the organisation has not given up on pursuing protection for these phrases.

In its notice regarding the “Hosted WordPress” application, the USPTO confirmed that a final refusal had been issued, as the applicant had not addressed or resolved earlier concerns.

The decision highlighted several outstanding issues, including the need for a disclaimer, clarification on the identification of goods and services, and confirmation of the applicant’s domicile.

Specifically, the USPTO stated that the word “Managed” must be disclaimed, as it is considered a purely descriptive term. In trademark law, descriptive words cannot usually be monopolised because they simply explain the nature, quality, or purpose of the service rather than serve as a unique identifier.

The notice further explained that the applicant could comply by adding a formal disclaimer, such as:
“No claim is made to the exclusive right to use ‘MANAGED’ apart from the mark as shown.”

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The United States Patent and Trademark Office (USPTO) has also raised concerns about the WordPress Foundation’s description of goods and services, saying it is too vague and overly broad. In particular, the phrase “website development software” needs clarification, as the office has asked them to specify whether it refers to downloadable software (Class 9) or to online services (Class 42). The USPTO even suggested alternative wording that the foundation could adopt, provided it accurately reflects what is being offered.

In addition, the trademark application for “Managed WordPress” was issued with a disclaimer requirement. The office explained that the term “Managed” is considered merely descriptive, as it directly refers to the nature and function of the service rather than distinguishing it as a unique brand.

To address this, the applicant has been asked to submit a formal disclaimer in the following form:
“No claim is made to the exclusive right to use ‘MANAGED’ apart from the mark as shown.”

The Process Is Not Over

The WordPress Foundation is still pushing ahead with its attempts to secure trademarks for “Managed WordPress” and “Hosted WordPress.” Following the rejections, the organisation has now submitted a Request for Reconsideration after Final Action for each application. This filing asks the USPTO to review its earlier decisions in light of the amendments, arguments, or additional evidence provided.

While this stage does not count as a formal appeal, it represents the final step available before an appeal can be lodged.