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Jeff Chandler

Friendly Reminder About The WordPress Domain Trademark

While reading press releases about new WordPress services or plugins, I’ll occasionally discover that their website uses the full term of WordPress in their domain name. According to the domain policy, this is a violation of the WordPress trademark unless they have explicit permission. A couple days ago, I came across one such site which was brand new and the press release talked about their recent launch. I sent the owner of the site a message letting them know that they were violating the trademark and that they should think about a WP variant. While some responses are vulgar, the one from this person showed that they had made a mistake as they had no idea about the policy. Below is a short conversation over email. I’ve removed the person’s name as well as their website as it’s not needed to illustrate the point.

Jeff – I read a press release today about the launch of (Name Of Service) and I just wanted to let you know that by using the full term of WordPress in the domain name, you are violating the WordPress trademark. http://wordpressfoundation.org/trademark-policy/ I suggest switching your domain name to WP****** if possible or try obtaining permission to use the trademark in your domain name.

Response – Oh damn it, thanks for letting me know! I had no idea. I’ll see what I can do about changing the name. Kind regards,

Jeff – You’re welcome. Tons of people make the same mistake. Sorry you have to go about changing the domain.

Response – I looked into it yesterday and yeah, I really (bad word) up here. I bought the domain wp***** and migrated the whole site there, I’ll be 301 redirecting the whole site today. I’m sorry if I caused any bad feelings about my venture, just trying to make a living helping others with the CMS I love. I’ll be changing my email too in the next couple of days. Thanks for reaching out and letting me know so I could change the domain. I really appreciate it.

Jeff – Nope, no bad feelings caused. I usually send out a friendly email to anyone violating the trademark as it’s best to deal with it early versus having that domain be established. You should be all set to go now. Good luck with your service. Oh, as a sidenote. I would look for any where you wrote Word(lowercase p)ress on the site and change it to WordPress as that’s the correct way to write it. It’s one of those weird prickly points the community has.

Response – Hi, Yeah, I found the discussion on Twitter, it seemed to cause a big stir among some. Saw some guy called me a douche for missing the capital P so I’ve changed it already. Thanks

A couple of reasons why I published our email exchange. The first is to show that sometimes, people have good intentions but make an honest mistake. They didn’t know about the domain policy and rushed to change things to make it right. The established people in the WordPress community know about these guidelines and instead of chastising those site owners, we should first reach out to them via email or some other method to at least give them an opportunity to make things right. I started the Twitter dialogue by mentioning how disappointed I was to see brand new WordPress services launch that violated the WordPress trademark. On Twitter, it’s too easy to fire off text that would be better off never being published. I’ve said a few things in the past I regret as have others. Let’s try to give everyone the benefit of the doubt before performing regretful actions.

If you see anyone violating the WordPress trademark via by domain or other means, please try reaching that person via email or getting in touch with them any way possible to let them know. It could just be an honest mistake.

I almost feel like these two articles need to be appended to every post ever written about WordPress. Give them a read if you haven’t already. The WordPress Community Needs an Attitude Adjustment and Bad Attitudes Are Not Welcome.

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27 responses to “Friendly Reminder About The WordPress Domain Trademark”

  1. I’m aware of this domain policy and I always use or recommend the short variant of WordPress i.e. WP. Glad you wrote an article to share this piece of information. I’ll provide this link as reference if someone argue with me. Cheers Jeff!

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  2. I love stories with a happy ending!

    I understand the domain-name policy, and it’s great when people are willing to abide by it, especially when they find about it after the fact. Win-win for everyone involved, and I wish the business owner in this case well in his new venture.

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  3. Of course you should not be misleading the public into thinking that use of the term wordpress is not allowed. Anyone can use the term wordpress in their domain name (with pre or post lettering) – What you do have control over is whether they use the term wordpress in their domain – and use the domain for WordPress services online.

    You don’t mention this.
    Example: I can by the domain name: blakeswordpress.com – that is perfectly legal! – But if I wanted to use this domain within WordPress services – that is against your policy unless I ask for, and receive, permission from the company.

    Cheers,
    Blake

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  4. Great story to share. Yeah, I have also reached out to a quite a few, some of them even conferences, and like you, nicely explained the situation. A few did come back and say the same thing, and made the effort to change.

    Unfortunately, as many as I have, a very small amount has responded or made the move to change thing. I believe they know exactly what they are doing and are looking for a little extra SEO juice, which is really too bad.

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  5. Is the trademark thing really enforcable? It is registered in the US, correct? I am in Canada, my domains are hosted and their registrars are in Canada, servers in Canada. US law doesn’t really apply here.

    Imagine what I said but instead of Canada, Zimbabwe, Egypt, Iran, China, Mongolia, Russia, etc…

    wordpress.ca
    wordpress.zw
    wordpress.eg
    wordpress.ir
    wordpress.cn
    wordpress.mn

    what about if someone registers http://www.wordpre.ss ? .ss being the country code for South Sudan

    Would wordpre.ss violate the trademark? it doesn’t have WORDPRESS on it’s domain name, technically it is WORDPRE dot SS.

    anyways, I personally think people should register WPwhatever because wordpresswhatever has 7 letter more to type.

    Miroslav

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  6. Similar rules apply for the use of the WordPress logo, especially if it’s used as part of another logo. In the case I found for a prominent plugin, by a prominent community member, I contacted them privately with a link to the logo rules. They checked it, confirmed it, then updated their plugin logo within a day or two. I contacted them a few weeks later to remind them about the plugin .org repo cover image, but they quickly updated that as well.

    Apparently one or two plugin users noticed the logo change, but otherwise no big drama was made about it, which was the best way forward in this case.

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  8. @Blake Escudier –

    No, protection of the trademarked WordPress name is not limited to the WordPress services. It’s protected under law, across the Web.

    Just like the Microsoft trademark name. Protection of their name is not limited to domains on their services.

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  9. @Miroslav Glavic

    Is the trademark thing really enforcable?

    Sure it is. Canada knows about the rest of world, and it knows about Canada. Eh?

    See at Wikipedia: Trademark > (12) International Law > (12.1) Territorial application

    The inherent limitations of the territorial application of trademark laws have been mitigated by various intellectual property treaties, foremost amongst which is the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights. TRIPS establishes legal compatibility between member jurisdictions by requiring the harmonization of applicable laws. …

    Several links embedded there, for the gory bits in the quote.

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  10. @Chip Bennett – I just noticed how the domain policy says that those with WordPress in the top-level domain name should consider donating it to the Foundation. That wasn’t there before but it makes sense.

    @Blake Escudier – As a matter of fact, blakeswordpress.com would be a violation of the trademark because the trademarked term is in the top-level domain name. You can’t use WordPress anywhere within the domain, sub-domains are ok.

    @Miroslav Glavic – The WordPre.ss is an interesting question. I don’t know the answer but I’d guess that it wouldn’t be a violation of the trademark because technically, it is not WordPress. That dot prevents it from using the trademarked term. But in the grand scheme of things, WP whatever is much easier to type and remember than the alternative.

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  11. Hey I did the same thing, and when it was pointed out to me I was a little bummed out, but thankful that my domain name was available with the wp instead of WordPress. CrazyWordPressGeek.com sounded real good, but now I’m running on CrazyWPGeek.com which doesn’t sound as good, but works.

    The domain with WordPress in it expires later this year, and I’m probably going to let it expire at that time. RIght now I think it still forwards traffic to my site (maybe a few hits a month at most).

    I won’t make this mistake again. It was another WP user who sorted me out on this to, so keep doing this and letting people know, since not a lot of people check on that stuff.

    Kevin

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  14. @Gary Jones, Gamajo Tech -That is not the way trademarks work. The reason for the existence of trademarks is to prevent a copycut manufacture to pretend or imply that his product is the same as the leading brand he copies in a way that might confuse costumers. I don’t think your domain name will confuse anyone therefor shouldn’t be an issue with it.

    The real problems happen when there are two companies which own a trademark in different locations like apple the iphone maker (US) and apple the recording company (UK) .

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  16. Yesterday i just created a wordpress blog site and the sub directory storing the application was called wordpress. The blog is designated as the home site and comes up by just specifying the url without /wordpress. It did however display the full url when redirected (petruskaworld.org/wordpress). I’m glad I saw the article sooner than later and was able to quickly build another sub site using a different name.

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  20. A few months ago, I purchased the domain, BuddyPressThemes.com.

    And after reading your post, I am now wondering if BuddyPress.com is in the same category as WordPress.

    As far as you know, is it okay to use BuddyPress in a domain name?

    And great site. I am very happy that Matt has decided to start it up again and to put you, Jeffro, in charge.

    – Steve

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  21. @Stephen Britton –

    BuddyPress do have a Terms of Service page. Unfortunately, all it says is:

    Terms

    Apologies while we rebuild some bits and bobs. Something compelling will be here shortly.

    Ahem. Elsewhere I see others who are using slight modifications of the BuddyPress name making careful note/disclaimer that it is a Registered Trademark of Automattic.

    Lesser names can often benefit from ‘unauthorized’ uses, and may be notably if not studiously lax in notifying trespassers. Trademark language typically uses a ‘lynch-pin’ phrase such as “no blah-blah, etc, without permission“. They can grant case-by-case permission, without compromising their Rights. Worst they can do is say no.

    Normally, before seeking such permission, you should have the website available for them to look at (but not public), or at least a detailed & thorough treatment of what you intend, and how you will make sure they will be happy about everything you might do . Or both.

    Often, the real concern in cases like these, is not that you might somehow make a dollar off their name, but rather the context or manner in which the protected name will be used (misused, abused, dragged through the dirt, defamed, held up to ridicule, and so on, pretty much endlessly). ‘The money’ etc is typically not ‘the main deal’.

    WordPress, BuddyPress etc are mainly worried that bad people will do ugly things, or that otherwise good & intelligent people will do inexplicably brain-dead things, with their trademark name.

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  24. I am mystified by much of what I have read here.

    The WordPress Foundation publishes a Trademark Policy as if it had rights to determine what will or will not infringe its trademark. I don’t think it does. As I understand the situation, the law determines that, and it is not up to a trademark owner to adopt rules going beyond the law.

    What’s more, trademarks are meant to prevent illegitimate exploitation of a given name (or other mark) in a specific area of trade. If I want to sell printing presses using the brand WordPress, I don’t believe the WordPress Foundation can interfere in that. (And note: to enjoy trademark protection in a given market, you have to be active in that market – you cannot simply decide that you would like to prevent others entering that market if you are not active in it.)

    My take on the situation is that the only area of trade in which the WordPress Foundation is active is certain forms of WordPress site hosting. If Company X wants to offer other services related to WordPress, I can’t see that use of the WordPress name would be an infringement because the services of Company X could not be confused with those of the WordPress Foundation or its licencees.

    I’m not sure of the status of this site, or of those who are using it to “clarify” what people may or may not do. But I’d be interested to hear reactions to my view.

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  25. @Colin Mackenzie

    It’s true that Trademark can have various kinds of limits & complicating considerations. A key factor in judging cases, is whether “confusion” might result from an unauthorized use. If JQ Public sees your printing press product, which you have named WordPress, and the well-known website software product comes to mind, that’s “confusion”.

    “Relatedness” of market context is important. Your printing press sounds like the Judge would see it as quite closely related to the website-software, functionally, since both are about “publishing”. Being in related markets, and using a protected name, adds to the confusion.

    Then too, sheer & simple public familiarity with the protected name widens the purview & scope of protection. It’s pretty tough to call your printing press “Microsoft”, because everyone will immediately think of the famous company built by Bill Gates. It’s highly doubtful you would be able to market even, say, hand-made horse-harness, under the name Microsoft … to the Amish in Pennsylvania … because even they know Microsoft.

    WordPress is not yet a Microsoft, in terms of the pervasiveness of their name, but it’s not a farfetched comparison. As such, with a unique name that they made up just for themselves, that has become extremely well-known … yeah, they’re in a very strong position.

    [How well-known? A Google search using ‘wordpress’ reports 5,640,000,000 results. Searching with ‘microsoft’ only gets 890,000,000 hits!]

    Making up your own name, for your product or service, is a good thing. A name that does not otherwise exist at all, is best. Kodak, Microsoft, WordPress. Great, unique names, created just for them. Taken, Trademarked, and rock-solid.

    Your product deserves the same thought & effort.

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  26. @Ted Clayton –

    I’m not sure that having an alternative product come to mind constitutes confusion. You can buy chocolate branded “Mozart”, and Amadeus M comes to mind when you do. There is no confusion.

    In certain markets, businesses have successfully trademarked such things as colours. From memory, BP owns the colour green in the gasoline business. Doesn’t mean I can’t adopt green as my corporate colour.

    But I’m more interested in branding of goods and services that ARE related to the trademark than those that are not. In these circumstances, making up your own brand is not so appealing. I am surprised that the WordPress Foundation has been so successful in preventing those offering related products and services from using “WordPress” in their identities.

    I read on an apparently authoritative site (Chilling Effects) that “fair use” of a trademark includes the following:

    Nominative fair use
    This is when a potential infringer (or defendant) uses the registered trademark to identify the trademark holder’s product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements:

    – the product or service cannot be readily identified without the mark
    – he/she only uses as much of the mark as is necessary to identify the goods or services
    – he/she does nothing with the mark to suggest that the trademark holder has given his approval to the defendant.

    Clearly, if you are setting up a business selling WordPress themes, your potential customers need to know that, and an obvious way to convey it is to adopt an identity that includes the words “WordPress” and “themes”. So potentially, at least, “nominative fair use” might be an effective defence (British spelling) against an allegation of infringement when using such an identity.

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  27. @Colin Mackenzie noted:

    Clearly, if you are setting up a business selling WordPress themes, your potential customers need to know that, and an obvious way to convey it is to adopt an identity that includes the words “WordPress” and “themes”.

    The clear, forthright, effective – and legal – way to identify that your product is meant to be used with WordPress, is to ‘just say so’, without trying to use their name for your own product-name.

    If you like to be a stickler (and look Cool & Professional), then include the Trademark symbol, after the protected name, like this: “We sell themes for WordPress™“, or even, “We offer sophisticated WordPress™ themes for your anti-Intellectual Property website”!

    Once you include the special Trademark symbol after the protected name, you can legally use the protected name, communicating to both your potential customers and to the all-important Internet search-engines.

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