WordPress Foundation’s Trademark Setback

The WordPress Foundation recently faced a setback in its bid to trademark the terms ‘Managed WordPress’ and ‘Hosted WordPress.’ While their application has been denied, they still have the opportunity to appeal the decision.

If successful, these trademarks could have allowed the foundation to regulate and potentially charge licensing fees for their usage. However, an organisation called Unprotected.org challenged the application, arguing against the exclusivity of these terms.

According to documents shared by Unprotected.org, the U.S. Patent and Trademark Office (USPTO) ruled in their favour, rejecting the trademark applications. The organisation publicly announced their victory, stating that they had successfully petitioned against both trademarks.

Unprotected.org expressed concerns that allowing these trademarks would restrict fair use within the industry. By opposing the application, they aim to ensure that hosting companies and developers can continue using these widely recognised terms without facing legal barriers.

Despite this decision, the WordPress Foundation may still pursue an appeal, which could prolong the debate over the ownership and regulation of these industry-standard phrases.

Here’s a more expanded version with additional details and improved readability:

The United States Patent and Trademark Office (USPTO) recently rejected the WordPress Foundation’s attempt to trademark the term “Managed WordPress.” This decision represents a significant setback for the foundation, which had sought to secure exclusive rights over the phrase. Had the trademark been approved, it would have allowed the organisation to regulate its usage across the industry, potentially requiring other companies to obtain a licence to use the term.

In its ruling, the USPTO explained that “Managed” is a descriptive term rather than a distinctive brand identifier, which means it cannot be trademarked by a single entity. The decision states that the word merely describes a characteristic or function of the applicant’s services—specifically, software that helps users manage content on their websites. Because the phrase “Managed WordPress” simply refers to a type of hosting service that provides enhanced support and automation, the USPTO determined that it does not qualify for exclusive trademark protection.

The ruling further emphasised that terms commonly used within an industry must remain accessible to all businesses operating in that space. The term “Managed” is widely used by web hosting providers and content management platforms to describe services that assist users in maintaining and optimising their websites. Granting the WordPress Foundation exclusive rights to the phrase could have limited competition and prevented other providers from accurately describing their services.

As a result of this decision, the WordPress Foundation must now include a disclaimer in its trademark application, explicitly stating that it does not have exclusive rights over the word “Managed.” This means the foundation cannot legally challenge or take action against companies that use “Managed WordPress” in their marketing or service offerings. While this ruling limits the foundation’s control over the term, it preserves fair competition within the web hosting industry by ensuring that all businesses can continue to use the phrase without legal restrictions.

Although this ruling is a setback for the foundation, it is not necessarily the end of the road. The organisation still has the option to appeal the USPTO’s decision, providing additional arguments in favour of its trademark application. However, given the clear stance taken by the USPTO on descriptive terms, the foundation may face significant challenges in securing exclusive rights over “Managed WordPress.” Whether it chooses to pursue further legal action or accept the ruling remains to be seen, but for now, businesses offering managed WordPress services can continue using the term without concern over potential legal disputes.

 

Next Steps

The WordPress Foundation now has a three-month window to respond to the ruling, as outlined in the official documentation from the United States Patent and Trademark Office (USPTO). The notice states:

“Response deadline. File a response to this nonfinal Office action within three months of the ‘Issue date’ below to avoid abandonment of the application.”

This means that while the foundation has faced a setback, it still has an opportunity to challenge the decision or make adjustments to its application in an attempt to secure trademark rights over the term.

In response to the ruling, the owner of Unprotected.org, the organisation that successfully petitioned against the trademark applications, celebrated the decision. The Register quoted them as saying:

“This represents a great victory for the WordPress ecosystem, and we will continue to fight until there is accountability and a change in leadership…”

Their statement suggests that opposition to the WordPress Foundation’s trademark claims goes beyond legal concerns, hinting at broader frustrations regarding governance within the WordPress community. The issue of leadership within the open-source project has been a topic of discussion for some time, with calls for a more decentralised structure and greater transparency in decision-making.

As part of this ongoing debate, Unprotected.org also endorsed Joost de Valk as a potential new leader for the project. De Valk, a well-known figure in the WordPress community and the founder of the popular SEO plugin Yoast, has previously advocated for changes to the governance structure of WordPress. He has expressed the view that while current leadership, including WordPress co-founder Matt Mullenweg, should continue to have a role, there should be a shift in how decisions are made and how the project is managed.

The outcome of the trademark dispute, as well as the discussions surrounding leadership, could have lasting implications for the future of WordPress. If the foundation decides to appeal, it may need to provide stronger justifications for why it should have exclusive rights to terms like “Managed WordPress.” However, given the strong opposition from members of the community, securing such a trademark may prove to be an uphill battle.