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Jeff Chandler

Automattic is Protecting its Woo, WooThemes, and WooCommerce Trademarks

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.

Verified WooExpert Service Mark
Verified WooExpert Service Mark

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.

Woo Character Mark
Woo Character Mark

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.

Examples of When You Do and Don't Need Permission
Examples of When You Do and Don’t Need Permission

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.

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44 responses to “Automattic is Protecting its Woo, WooThemes, and WooCommerce Trademarks”

  1. 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…

  2. If I were WooAssist or WooRockets I would be aggressively submitting objections against Woo’s latest filing. Just another reason why the community should be concerned about Automattic.

  3. Hopefully they don’t start down the path of the WordPress and WP prefixes!

  4. Here in the Washington, DC region you get to know PTO pretty well. That’s the nicest takedown/cease/demand I’ve seen lately ;) P.S. What the heck is a “Woo” anyhoo?

  5. @Arunas @Ben D: Why is this a surprise and more importantly why is this underhanded? Automatic has every right to enforce their trademarks. In fact you have to enforce your trademarks in order to keep your trademarks. That’s how the law works.

    Woo has spent years building their brand with both WooThemes and WooCommerce. They have spent a lot of money and even more time establishing it in the WordPress ecosystem and beyond. They have every right to protect it.

    WooAssist and WooRockets use “Woo” in their name precisely because they provide services or products for WooCommerce. If WooCommerce didn’t exist then they wouldn’t have used Woo in their name… which goes to show how valuable the Woo name is. And Automattic owns the name. Therefore they have the right to enforce the trademarks related to it.

    This has absolutely nothing to do with the GPL or open source software. This is entirely separate issue. This is about branding and trademarks which are a very valuable commodity.

    Enforcing the Woo trademark does not prevent anyone from creating products or services targeted to WooCommerce users. It only means you need to do so without infringing on the Woo trademark.

    There is nothing sketchy or underhanded about this. It’s business.

    • Also the entire basis of their email is BS.

      These websites existed before the trademark was filed with no negative impact on the woocommerce brand.

      So it’s not even in a true statement to say they are negatively impacting their brand/image or causing confusion.

      • It doesn’t matter.

        Woo has prior use on its side. They established the Woo brand name through WooThemes and WooCommerce.

        The companies that sprang up to cater to the WooCommerce user base did not occur until after the Woo brand was already established.

        Those brands are also WooCommerce centric which means they clearly chose the Woo part of their names to make it clear they are WooCommerce related.

        So it doesn’t matter that Automattic only recently filed to use the trademarks because they can establish that they were using it first and that is what matters.

        Believe me, using the trademark can cause confusion. We have people who reel Gravity Forms that don’t even use our trademark (yes, it’s trademarked) who cause confusion in the marketplace as people buy it from them and then come to us for support and we say sorry, you didn’t buy it from us… factor in using our trademark in their name and it only causes further confusion.

        People aren’t savvy when it comes to this stuff. They are easily confused even if it’s obvious to you or me.

        Automattic is well within their rights on this one.

      • This is true. However, it has a to do with how it is used. In the Ubuntu case it was being used in a non-commercial manner. He wasn’t selling users software, he was freely giving it away. It wasn’t a business. He wasn’t monetizing it. If he was using it to sell a product or service it would be a different matter.

    • @Carl, I never said it was a surprise. To anyone who’s been following the news the last several years this is completely expected. And it is not underhanded, but it is definitely heavy handed. WooThemes/WooCommerce built their brand on the work of hundreds of people extending their products, building on top of them, but now they are strong enough not to need them anymore, so they are using a freshly filed trademark applications to shoo them away.

      I get it, Automattic is the biggest bully in the sandbox that we call WordPress ecosystem. That does not mean I have to like every single thing they do. I am not concerned that they use the trademark laws to deal with unethical people, who are trying to earn a profit from work of other people. But that also means I am banned from using Woo prefix to any of my own extensions. And I am not thrilled about that.

      • @Arūnas point well made. There is nothing noble about Automattic or their approach. And there is plenty of room for WooAssist and WooRocket to protest given the history of the way WooCommerce was actually built. The fact that Automattic came in an bought WooCommerce only gives it rights if they can successfully perfect them. But, given Automattic’s deep pockets and propensity to run over anyone in the way of their profit, I would say it would be difficult to win. Still, if I were WooAssist and WooRockets, I would try.

  6. WooCommerce was not the first company to use WOO in it’s name. What’s next…WORD is going to be property of Automattic? I don’t think Automattic will win over Microsoft (Microsoft OFfice WORD).

    What about WOOHOO? You know, when you cheer for your team scoring a goal?

    • You should read up on how trademarks work.

      It’s all about the classification of the trademark. Trademarks aren’t granted across every and all industries and categories.

      You could register Woo as a trademark for a line of cat toys if you want. It’s a different category than what Automattic has likely registered the Woo name. So therefore you could register it.

      Trademarks protect you within the industry and category that you are doing business in.

      How do you think Apple was able to trademark a generic word like Apple? Yet there are other companies that use Apple in their name such as Apple Vacations. This is because they aren’t in the same category and are a completely different business.

      If WooAssist provided advice for cat owners. Or WooRocket provided rocket engines for NASA this would be a non-issue. But that isn’t the case. Both of those are using Woo in the connotation of WooCommerce and software. So therefore there is a conflict.

      Woo may not have been the first company to use Woo in their name or product names, but until someone shows prior use in the Internet and software industry categories the trademark was applied for… they’ll likely have no problem having the application approved.

      • I live in Canada, US law (trademark, copyright, anything else) doesn’t apply to me. unless said otherwise, I am assuming the TM registration is in the US only, correct?

        I have been telling people for years not to include, wordpress/drupal/joomla/phpbb/smf/etc… on their website url or business name. WP/Drupral/Joomla/smf/etc… could shut down in the future.

        • You should read up on the Madrid Protocol.

          It’s an agreement between a bunch of countries related to trademark registration. It makes it easy to register a trademark and have it enforceable in every country that is part of the Madrid Protocol without having to register the trademark in each and every individual country.

          Canada is a member. So yes, US trademarks are enforceable when you live in Canada because trademark holders gain trademark rights in every country that is part of the Madrid Protocol.

  7. There’s been gplclub.org (seems dead, last blog entry from 2014), woogang.com (looks not very professional, 64 likes on facebook). Now woogpl.com (Closed down, but why?) and gplkit.com. Has anybody used any of these? Are these all one-person-projects?

    I am a bit hesitating to installing software on my ecommerce site that comes from a site looking kind of a black market…

    • You should always purchase premium plugins from the developer who creates it and not 3rd party sites like gplclub.org, etc. The money you save could come back to bite you in the butt if the 3rd party that is reselling the plugin has manipulated the code in anyway, injected malware, or simply doesn’t provide updates.

      Because things like automatic updates for commercial plugins like Gravity Forms come from the developer itself, if you purchased it from a 3rd party… you wouldn’t get automatic updates. Which means you wouldn’t be receiving patches related to security, etc.

      Definitely be hesitant of installing software from sites like that.

      If you want to buy a plugin, buy it from the developer who created it.

        • What about potentially injected malware or backdoors? Who’s behind GPL Kit and can I trust them?

  9. @Jeff,

    Didn’t receive any emails from you so far or Twitter messages. Can you please mail me at tony at woorockets dot com

    Would be glad to provide you further information.

    Thank You,
    Tony, co – founder WooRockets.com

    • Trademarks are all about classes or categories. They don’t apply in a blanket basis to any and everything. They are specific to a class or classes.

      So WOO Sports does not pose a trademark conflict because they are in a complete different class than WooCommerce. It’s sporting goods/recreational equipment (kiteboarding) and doesn’t conflict with WooCommerce/WooThemes/Woo the software/SaaS/theme provider.

      So no, they wouldn’t go after WOO Sports.

      You can read about class and classification of trademarks here:

      https://www.legalzoom.com/knowledge/trademark/glossary/trademark-class-classification

  11. In the world of domain names at least this is nothing new.

    Just try registering a domain with the word playboy in it and see what happens. Think…a team of 17 lawyers shoving their foot up your ass simultaneously. :)

    Companies have a right and an obligation to their shareholders to protect their shit. Why is Automatic suddenly evil for doing it?

    I’m a little surprised that WooGPL* has the balls to still have their site up to be honest. Automatic could (and probably should at this point) stomp on them like a cockroach.

    * Only mentioned for clarity. Please don’t sue me Automatic.

    • Hey Ron,

      Daniel from WooGPL, just for clarification, I have spoken to Automattic a couple of time regarding the website and it will be shutting down mid June. They were actually quite nice to deal with and at the end of the day they had no problem with the WooGPL serve apart from confusion of people thinking it may have been a WooThemes related company

      • To support Daniel’s story, as the owner of pluginfusion .com (formerly woodiscounts .com) I have been contacted by Automattic who asked us to make it straight forward on our site that we are not affiliated to them. They also asked us to remove Woo trademarks from the site and change product description. The distribution of the codes was not put in question as they are licensed under the GPL.

  13. So i’m assuming this “trademark” would also apply to the plugins at the WordPress repo. If that’s the case, what would you call a plugin you make as an add-on for WooCommerce? Since we can no longer or may no longer use WooCommerce or Woo (hillarious). Plugin Extension for Plugin Who Shall Not Named?

      • Yes WooCommerce was registered and we couldn’t use that i get it. but Woo wasn’t and there’s a lot of plugins in the repo with Woo prefixed to them, now all those authors will slowly receive, please don’t use Woo emails.

        Somehow that doesn’t feel GPL and Open Source to me. Which is sad.

    • +@Musilda This has been the case for a while now, not just for Woo plugins. Try registering a plugin that’s called “Twitter tools”, for instance, and you’ll find it rejected. Call it “Tools for Twitter” and you’re fine. Same for Woo. “Tools for WooCommerce” will be fine. They don’t retrospectively insist on change either.

        • The WordPress.org plugin repository has no control over premium plugins. Any external entity will be something that’s up to Automattic to police in accordance with their own trademarks.

    • The comments are starting to get a bit weird. You have never heard of Apple, Oracle, Nike etc? The criteria is that if you use common words what you do can’t relate to your name, if I recall correctly. So if you sell apples or fruit you can’t trademark Apple. Woosprint is perfectly fine since it has nothing to do with the Woo trademark as it relates to Automattic.

  15. I guess i will have to change the name of my plugin . I thought it was allowed seeing so many wooXXX…oh well..
    I do get the point of protecting brand. I don’t understood how some people resell premium plugins under the SAME name anyway. I thought it was only *code* that was gpl.

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