When Automattic acquired WooThemes in 2015, it gained employees, plugins, themes, and the company’s trademarks. These trademarks include, standard character marks, logos, and specific graphics such as the Verified WooExpert badges. One of the responsibilities of a trademark owner is to protect it from infringement.
WooGPL is a service that provides customers with commercial themes, plugins, and extensions for WooCommerce at a discounted rate. In March, Automattic sent Billy Ablett, owner of WooGPL, the following notice that informs him that his domain infringes the Woo and WooCommerce trademarks.
I’m writing to you on behalf of Automattic Inc. regarding your use of the Woo and WooCommerce trademarks.
As you may know, Automattic owns the Woo, WooCommerce, and WooThemes brands, as well as the associated trademarks. We recently learned of https://woogpl.com, which actively makes use of our registered trademarks in both its name and promotion. We are very concerned that your use of Woo and WooCommerce will create confusion by communicating that your WooCommerce products are endorsed by or associated with Automattic, when in fact it is not.
While Automattic appreciates that you are providing products that build on WooCommerce open source software, that fact does not authorize you to use Woo, WooThemes or WooCommerce trademarks.
To minimize user confusion and to protect our own intellectual property, we unfortunately must insist that you take prompt steps to change your domain name to something that doesn’t include ‘Woo’ in the prefix, and change your product descriptions to avoid confusion and potentially misleading consumers to believe they are purchasing our products. An example of this would be: WooCommerce Email Customiser Pro would need to be changed to Email Customiser Pro for WooCommerce.
For more information, please see our Trademark Guidelines.
While we are appreciative that you have included a disclaimer on your site, unfortunately this would not be sufficient and we would still insist that the domain name and product names be changed.
While it’s not the sole reason WooGPL is shutting down, the notice provides a convenient opportunity to rebrand to GPL Kit, something the company was already planning to do.
“We would have eventually closed down WooGPL due to GPL Kit however, it would have been great to close it down on our terms when the time was right,” Daniel, who is part of the GPL Kit team told the Tavern.
Daniel says that when he started WooGPL there wasn’t a trademark registered with the Woo character mark until October of 2015.
A search of the United States Patent and Trademark Office for Woo contains over 1K results. However, this is the only character mark for Woo that I found. The filing date is October 22nd, 2015 and is in the approval process.
When You Should Ask For Permission
WooThemes has a style guide on its site that explains how the brand is used and has details on when Woo™, WooCommerce®, and WooThemes® names, logos, and related icons collectively known as Woo Marks can be used without permission. The following chart provides some examples.
If you’re in doubt, you can email Automattic’s trademark team trademarks @ automattic.com to receive clarification.
Woo’s at Risk?
There are quite a few businesses in the WordPress ecosystem that use Woo in their name and domain. WooRockets is a WooCommerce theme shop while WooAssist provides support and maintenance for store owners.
I reached out to both companies to determine if Automattic sent them the same notice it sent to WooGPL. While I didn’t receive a response from WooRockets, John Gamour of WooAssist provided the Tavern with the following statement:
No, we haven’t been contacted by Automattic about that. It would be dissapointing if we were asked to change our name as our founder Nicholas Jones reached out to WooThemes before starting Wooassist and they gave the OK. We have also worked with Matt Cohen and James Koster on a project and nothing was ever mentioned about our name.
I tried to get in touch with Paul Sieminski, legal counsel for Automattic, to learn what the criteria is for violating the trademarks, who’s at risk, and how long they have enforced the marks but he could not be reached for comment.
Better to be Safe Than Sorry
As WooGPL discovered, adding a disclaimer to the bottom of your sites may not be enough. Considering the cost and potential impacts of re branding a company or product, it’s important to know as soon as possible if you’re infringing a company’s trademarks.
Business owners in the WooCommerce and WooThemes ecosystem should double-check the style guide to make sure you’re not violating any guidelines. Owners can also take a proactive step and contact Automattic’s trademark team to determine if your business meets the requirements.
Somehow, this does not encourage me building anything that is in any way related to any piece of software Automattic is related to. I am starting to wonder when I am going to get a copyright infringement notice for my Measure Jetpack blog posts…