I just had a potential client bow out of a project due to a lot of confusion between WordPress and WordPress.com. They asked for a WordPress plug-in, we went through the standard process for bidding on custom development, then they said "wait, but it has to work on this WordPress.com website ... will it work there?"

And that was the end of that job.

As most of you know, you can't install custom plug-ins on a WordPress.com site. Even though the site itself is powered by WordPress, it's still part of a for-profit enterprise that uses a closed system to manage and make money from member accounts. Unfortunately, most people coming in from the outside don't realize that WordPress(.org) and WordPress.com are two different things.

This brings up an interesting issue from a trademark standpoint. Since the WordPress Foundation now owns the trademark ... and they say we (as in the community) can't use "WordPress" in business names, domain names, or "in any way that suggests an affiliation with or endorsement by the WordPress Foundation or the WordPress open source project."

Further, "under no circumstances is it permitted to use WordPress as part of a top-level domain name.""

I realize that Automattic had been using WordPress.com for a long time before any of this happened ... but does that mean WordPress.com will be grandfathered in to this new rule as an exception? What does that mean for the rest of us running for-profit WP hosting sites? Since WordPress Answers was around before the announcement and explicit trademarking rule, are we exempt as well? How significant is the name confusion problem (WordPress versus WordPress[.org] versus WordPress[.com])?

Related ...


Update

From a comment on Matt's blog we can gather that, yes, Automattic is being grandfathered in to the new trademark stipulations. WordPress.com will remain even though it's a for-profit project.

The question about the defensibility of the trademark, though, remains. You can't really have strong "under no circumstances" statements alongside exceptions like this.

I'm also still wondering how we can use the trademark to easily distinguish between WordPress[.org] and WordPress.com for new users who haven't been around long enough to know about the trademark's journey.

So, knowing the trademark rules and the clear distinction between open-source WordPress and Automattic's WordPress.com, how can we best and most easily convey this information to end users? Should we even try?

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3 Answers 3

up vote 2 down vote accepted

Granting an exception doesn't in any way jeopardize a trademark. Essentially, WordPress.org has licenses the mark to WordPress.com. That's completely legal, and it's done all the time - and it doesn't mean someone without a license can infringe.

This is similar to "Windows IT Pro Magazine," which has a license to use Microsoft's trademark on "Windows." Their doing so doesn't dilute Microsoft's mark.

The argument on whether this is a good idea is completely different, of course. It probably isn't, because of the exact confusion you state - but on the other hand, the logistics involved in changing WordPress.com (and the inconvenience to the butt-ton of people who host blogs there) may be insurmountable.

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I don't really think the Windows-magazine comparison fits. No one can confuse an IT magazine with an operating system ... but it's very easy to confuse WordPress.com for an open-source blogging platform. Particularly with the depth of the relationship between Automattic and the "core contributor" group at WordPress.org. –  EAMann Sep 18 '10 at 5:35
    
Notwithstanding, the magazine does in fact license the name from Microsoft. I agree that the WordPress situation offers ample opportunity for confusion, and they could be handling it better, but what they're doing is entirely legal. –  Don Jones Oct 4 '10 at 15:39

I don't think granting an exception to one or more entities creates problems enforcing your trademark. It would be a problem if allowed it to become "genericized": you can't let everyone use your trademark, and then suddenly go after a few guys only (which is why Google doesn't want you to use "Googling" as a verb for general web search).

In this case, the WordPress Foundation says "no" to all commercial entities, and then gives some exceptions. Of course, I got most of my legal education from Slashdot, but I assume that is a regular business practice and poses no problem.

That still leaves the issue of the difference between WordPress.org and WordPress.com. Maybe we could also revisit the related meta-discussion.

Correction: My original post used the term trademark "dilution" instead of a "genericized" trademark. I hope the text is now less incorrect.

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The issue here is that those one or two entities using the trademark are using it in exactly they way that would cause trademark genericization. By failing to distinguish between WordPress and wordpress.com, Automattic is leveraging the power of the WP trademark for its own benefit. My concern isn't so much that they can use it in this way, it's the fact that no one else can and it eliminates any sense of separation between the .org open source project and the .com for-profit corporation. –  EAMann Sep 17 '10 at 14:32

Automattic still owns all trademarks related to WordPress. They first need to pass it over to Wordpress Foundation and then the Wordpress Foundation need make the deals with them.

And only then a new Policy might come into play. And a new player that is trading the rules. Until then, it's all still the same, there was just an announcement made that's all.

And: the trademark has not been enforced constantly about the domain names. Doing so now would look like exactly what Jan Fabry entitled as "Genericized" it: "you can't let everyone use your trademark, and then suddenly go after a few guys only".

So it's still suspenseful what's happening next :)

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As said, I'm not an expert, but is it possible that the trademark has already been passed over, but that it takes a while before the USTPO publishes this in their database? In your overview, you can see that the original trademark on "WordPress" was filed on March 01, 2006, but that it wasn't registered until January 23, 2007. So maybe we see a delayed view of the actual status. –  Jan Fabry Sep 17 '10 at 8:51
    
Also, my usage of the term "diluted" is not correct, it should be "genericized". I'll update my answer. –  Jan Fabry Sep 17 '10 at 8:52
    
@Jan Fabry - I think there is a time-span as well. But for registration this is something else because prior to first registration of a new trademark needs to be researched if it's not conflicting. That is the time-span you see between filing-date and registration date. And there is a period where others can raise their voice against a new trademark. That's prior to registration IIRC. IANAL as well :) –  hakre Sep 18 '10 at 9:07
    
@Jan Fabry - Thanks for linking the terms and the clarification. –  hakre Sep 18 '10 at 9:09

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