Earlier this year, the WordPress Foundation sued Jeff Yablon for trademark infringement. The Foundation wanted Yablon to stop using its trademarks, dismiss the opposition proceeding, pay the foundation for any profits related to use of the WordPress trademarks, pay up to $100,000 per infringing domain name, transfer the domains and pay other fees and damages.
Timeline of Events
On June 22nd, Yablon filed a request for default judgement. On June 29th, the Foundation responded to Yablon by asking the Trademark Trial and Appeal Board to deny Yablon’s request for default judgement.
On September 9th, David Mermelstein, Administrative Trademark Judge, filed a response that not only denied Yablon’s motion for default judgment, but also suspended proceedings until the civil case was complete.
With proceedings suspended, Yablon could no longer file motions or requests with the TTAB. The only option left was to proceed through court.
The Settlement Between Yablon and The Foundation
On September 21st, Yablon and the WordPress Foundation settled out of court (PDF).
According to the settlement, by no later than October 15th, Yablon agrees to cease any and all use of the WordPress name, logos, trademarks, and any other name or mark confusingly similar to the term WordPress or its logo.
He also has to cease any and all use of the WordPress Marks, standing alone or in combination with other words or designs, including but not limited to:
- Use in any company name
- Domain names
- Personalized URLs
- Keyword Advertising on Yablon’s websites
- Social media handles or account names
- Indoor outdoor store signage
- Business cards
Yablon must also comply with the terms of the WordPress trademark and domain name policies.
No later than five days after the effective date (Oct 15th), Yablon has to transfer all of the domains he owns that incorporate the WordPress Mark to the Foundation.
Last but not least, Yablon acknowledges that the Foundation owns and has the exclusive rights in and to the WordPress marks in connection with the goods and services identified in each of WordPress’ registrations.
Yablon can no longer do anything inconsistent with the Foundation’s ownership of its WordPress Marks and registrations thereof, including but not limited to, contesting the Foundation’s title to or the validity of the WordPress marks or the trademark registrations thereof.
WordPress Foundation’s Obligations
Once Yablon transfers the domains to the Foundation and does not breach the terms of the agreement, the Foundation will redirect the domains to a domain of Yablon’s choosing for 6 months from the effective date or April 1, 2016, whichever comes later.
Within 10 days of the domains being transferred, the Foundation will file a stipulated request to withdrawal its U.S. Opposition Proceeding No. 91221895 without prejudice and Case 3:15-cv02745 in the United States District Court for the Northern District of California, without prejudice.
As long as Yablon does not breach the agreement, the Foundation agrees not to sue for violating its trademarks prior to the effective date.
The Foundation will not object to Yablon’s use of the WordPress Marks as part of any subdomains or subdirectories associated with any second level domain name registered to and controlled exclusively by Yablon.
Examples include but are not limited to, wordpress.answerguy.com or answerguy.com/wordpress in connection with services that involve use of the WordPress platform, support the WordPress brand services, and that do not otherwise violate the rights of the Foundation.
Both parties agree to bear their own attorney’s fees and costs, if any were incurred through the effective date.
When I spoke to Yablon on the phone in June shortly after the lawsuit was filed, he sounded like he knew what he was getting into and the complexities involved with U.S. Trademarks. Yablon strongly believed he had enough evidence to pursue the matter and to see it through the court system.
Instead of seeing the court case all the way through, he chose to give up which in the court system, is not the same thing as losing, as losing or winning sets a precedent.
While Yablon didn’t lose the case, the WordPress Foundation didn’t win either. It’s a reminder that the Foundation will aggressively defend its trademarks in the court system if other means prove unsuccessful.
Do you think Yablon’s mission to defend his use of WordPress in a top-level domain name and potentially open the door for others to do the same, was in the best interest of the WordPress community as a whole?