44 Comments

  1. Arūnas

    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…

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  2. Ben D

    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.

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  3. Brian

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

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  4. Tada Burke

    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?

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  5. Carl Hancock

    @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.

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    • Tomas M.

      Can they enforce their trademark when they do not have the approval yet?

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    • Scott Hartley

      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.

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      • Carl Hancock

        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.

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    • Andrew

      In fact you have to enforce your trademarks in order to keep your trademarks. That’s how the law works.

      That’s a common misperception addressed by the EFF: https://www.eff.org/deeplinks/2013/11/trademark-law-does-not-require-companies-tirelessly-censor-internet

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      • Carl Hancock

        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.

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    • Arūnas

      @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.

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      • Ben D

        @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.

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  6. Miroslav Glavic

    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?

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    • Carl Hancock

      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.

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      • Miroslav Glavic

        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.

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      • Carl Hancock

        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.

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  7. Gerd Neumann

    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…

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    • Carl Hancock

      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.

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  8. Mark Harris
  9. Tony

    @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

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  10. Victor

    What about other services that have nothing to do with “Woocommerce”?

    Like http://woosports.com/ will they only go after related services or should they be under obligation to pursue all using Woo?

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  11. Ron

    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.

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    • Daniel

      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

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      • Mark

        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.

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  12. Musilda

    How about plugins name? Is forbidden WooCommerce or Woo in plugin name?

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  13. Digamber Pradhan

    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?

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  14. Andrew Thomas

    Will they go after a site such as this too? http://www.woosprint.com/

    How can you trademark a common word? I can understand if a company used WooCommerce in their URL, but just having the name woo in the URL is a trademark infringement?

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    • Andreas Nurbo

      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.

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  15. gplsaver

    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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  16. Ulrich

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