Nick Haskins Receives Cease and Desist Letter for Violating LassoSoft Trademarks

Nick Haskins, the founder and lead developer of Lasso, is rebranding the product after being served a cease and desist letter.

A few days ago, Haskins was served a cease and desist letter from LassoSoft. According to LassoSoft, “Lasso is a development platform and is the easiest, quickest and most secure method of supporting custom, data-driven web sites on the market today.”

Before launching a product, Haskins searches Google to see if similar products exist with the same name, “Apparently we didn’t look hard enough when naming Lasso,” he said.

Three Requirements That Must Be Met

Haskins shared the letter to educate others in the business of WordPress. In the letter, attorney’s for LassoSoft point out the company’s registered trademarks and says it commenced using the mark in the US in 1998 and in Canada in 1997.

LassoSoft claims to have documented at least one case of confusion between the two brands and says the continued use of Lasso will cause even more confusion.

Attorney’s for LassoSoft provided three requirements that must be met for an amicable end to the dispute:

  1. Permanently ceasing all use of the term “Lasso” and any trademark which includes or incorporates the term “Lasso”, in connection with any software or related goods and services.
  2. Removing all references to the term “Lasso” from the Website.
  3. Removing all references to the term “Lasso” from any marketing materials including flyers, catalogs, etc.

Haskins has until July 29th to satisfy the requirements and provide LassoSoft with written confirmation that he has permanently ceased all use of the term “Lasso” in association with software.

Transitioning Momentum

Rebranding a product that has momentum can be a crushing blow to a business that doesn’t manage the transition correctly. I asked Haskins how he plans to shift momentum from Lasso to the new brand name.

“The first idea I had, was to let the community rename it, possibly even have a $500 prize to the winning name. By incentivizing a rebranding campaign, together with a concentrated effort on re-educating, along with URL redirects and custom messages, I feel pretty strongly that we’ll be able to move right along without skipping a beat,” he said.

When it comes to naming a WordPress product and launching it into the WordPress ecosystem, Haskins offers the following advice:

“Use Google to see if it already exists either in the WordPress ecosystem or in a related field. This may seem like a no-brainer and it’s really common sense, but for some reason, I either never searched or that company never popped up. At any rate, I think you’ll be in good shape by sticking to something with wp prefixed or appended to the name.”

“Avoid generic terms and verbs because apparently, you can trademark a verb. I’d also run the search again in six months and if it’s a product that you plan on working on for a while, go through the process of getting the term trademarked.”

In addition to Haskins’ advice, I recommend using a search and discovery process provided by legal counsel familiar with trademark law.

Help Haskins Rebrand Lasso

In light of the battle between Chris Pearson and Matt Mullenweg involving patents, GPL, and trademarks, Haskins decided to rebrand Lasso, “There are a lot more important things in life than the name of a plugin for WordPress,” he said.

Haskins is giving the community an opportunity to rebrand his product. So far, he’s ruled out WP Front End Editor as it’s too similar to the name of a feature plugin that may one day be merged into WordPress core.

If you have an idea on what to call Lasso, please leave a comment on this post. Sometime next week, Haskins will gather the suggestions and publish a poll where the community can vote on which one is best.

48 Comments

48 responses to “Nick Haskins Receives Cease and Desist Letter for Violating LassoSoft Trademarks”

  1. I must say, when comparing the two websites and branding that you’re clearing on top there. Fight it if you’re willing… otherwise rebrand and move on.

  2. Interesting case study.

    Hopefully this rebranding episode will get Nick some nice publicity which will make up for the brand change. It’s certainly made me take another look.

    It’s a pity as Lasso is a good name for what Nick is doing. I think his pricing is a bit high for the first three sites (under $100 for three sites with a single site taster’s license at $49 might do better). Five sites and unlimited look fine. Perhaps just leave the single site taster’s license and then the jump to five licenses. That’s what the developers of a certain WordPress video player have done. Those developers have found most WordPress publishers fit in either the single or the about five category.

    • But we’re not “developers of a certain WordPress video,” and we’re not going to just do what everyone else has done. This is why themes are only $30, because they started like that, and everyone just followed right along.

      We’ve published our transparency report and there seems to be no issue with a base cost of $129, especially considering the amount of time it saves you from having to constantly preview your post. That adds up. http://lasso.is/time-saving

      • Hi Nick,

        I don’t doubt the value of your technology. But many people publish a single site. Your current pricing is heavily skewed to developers and agencies.

        Let’s take the agency case now. As an agency, we’d be inclined to buy a single license and then upgrade to a developer’s license if both we and our test client like using Lasso.

        With the minimum bar set at three licenses, you make it harder for ordinary site owners to adopt Lasso and less tempting for agencies.

        PS. Be careful about putting too high a price on a single feature. Ben and Mina Trott’s misjudgement on Moveable Type 3 pricing in 2004 created WordPress as we know it.

      • Somebody once said if nobody is complaining about your price, it’s too low. I think it was Mr. Lema, actually. So, perhaps your pricing is just right.

        Sometimes I ponder doubling or tripling a price because it will make my own life easier (e.g. less support to manage) for the same profit even if I am helping less people. I don’t know if you price your products with that in mind but I find “high” priced WordPress products refreshing. It’s interesting to think of business as something that supports your family first, then helps willing customers second.

        Maybe just show “1 site” scratched off with “3 sites” beside it so people know they’re actually getting a bonus rather than losing a “1 site” option. A matter of perspective!

    • Alec, I agree with you but it is up to the seller to figure this out. The seller is free to set any price, the buyers are also free to not buy.

      Pricing is a very tough thing and most get it wrong. But the important thing is that you can always change your price later, once you get some real world feedback.

      It isn’t pricing too high or low that can kill a product but being inflexible and tenaciously holding onto a price point when evidence tells you to take another.

      • Hi Robin,

        Our agency supports a lot of other developers’ pro plugins. Danny Brown below also feels the base price of entry is pretty high. I don’t think there’s anything wrong in the developer/agency pricing. But there’s no easy entry point. For the moment, we are not buyers. At $49 if we don’t like it or Lasso causes compatibility issues, who cares, but I’m not often going to take a chance on new optional technology at almost $150. Lasso is not essential to managing a WordPress site. To be honest if front end editing really works the basics will probably end up in core in a year.

        What Nick does with his pricing is up to him of course.

        • Hi Alec,

          On one side you post about something like “BusinessPress” for entrepreneurs and then something about 150$ is expensive … How this can be expensive for any business owner? Sure maybe for student who is blogger it can, for agency or any business?

          Not everything has to be free or almost free for few $.
          Personally I don’t like to buy cheap product,I know what I can expect from developer for that low price. I see problem totally in opposite as you mentioned. Prices for WP products are too low and results is that even quality developers use that price range what finalize to lower quality of their job what is logical.

          If something is expensive for you, it just probably means, that you don’t need that.

          If you are developer and you build sites for your clients, not sure if this comment can attract you clients who look for quality job instead of cheap job.

          • Peter, as I mentioned, I don’t have an issue with the pricing on the developer edition. Unfortunately there is not a good trial version. This functionality is about 1/50th of what makes a useful WordPress client site. Therefore at even $49/site, we are talking about $2450/site of licenses. That’s before we start work. I think you need a bit of perspective.

            Business/commercial doesn’t mean exploitative pricing.

            Before we bring Lasso into our workflow we’d like to trial it in earnest for at least one client or ourselves. That doesn’t mean Lasso will pass muster.

            As an example of good code which doesn’t work for us anymore, we used Soliloquy for awhile. At this point, we don’t consider Soliloquy flexible enough for most client sites or SEO friendly enough. We still own the developer license. S2 Member Pro is no longer our membership recommendation. We still own the developer license. I could go on.

          • Peter, I’m a “semi-pro” blogger, inasmuch I create content that helps me attract queries about consulting. It’s not my full-time business – heck, it’s not even my part-time one. It’s more akin to a hobby where I offer more than 15 years of blogging experience, tied with my marketing and business background, to help bloggers of all creeds meet their goals.

            Even taking that aside, I’m a blogger who doesn’t mind paying for services and premium plug-ins that I like. I have the Business version of WP Rocket; I pay premium for my sharing solution, Social Warfare (it’s an annual license); I pay monthly for VaultPress; I paid for Magic Action Box Pro, and Bookly, amongst others.

            The point being, I have no qualms in paying for something – but making Lasso without a single site license will put many bloggers like myself off. The dev guys from Lasso have mentioned elsewhere that the $129 was the price for the single site license, and they upgraded that to three sites. So, that offers more value.

            But, if like many bloggers, you only have one site, and you produce the type of content that Lasso would really help with (long-form, story-driven media), it seems a missed opportunity to not offer a single site alternative.

          • It should be noted, however, that the guys at Aesop were kind enough to allow access to the full version of Lasso on Github, allowing all kinds of testing/integration. That was a very nice thing from their part, quite rare.

    • I have many premium plugins that require annual renewals. An annual renewal of $129 minus 30% is just unaffordable for my single site. I even hesitate at the $79 price point these days because I really like many of the premium plugins that I use. $39 is more my price point especially for a single site license.

  3. For whom it may concern, a search on wipo.int will give info on what’s already taken – worldwide -, in textual and/or graphic form. Some people only register a text brand, so a particular graphic with the same text in it, on the same field, may pass ok. Also, one should take into consideration only the awarded trademarks, not the pending, since many pending requests don’t result in a permanent tm for various reasons, or they are abandoned altogether.

    • Thanks for that tip Bogdan! Very helpful. Just ran my search for BusinessPress (stable WordPress for businesses) and the way is clear. I’d just been using the American one but the international one is even better. Very fast searches. Here’s the exact URL for trademark searches: http://www.wipo.int/branddb/en/

      • You are welcome. Yes, registering a trademark is now quite self-service, all online. We use the above link for naming, auditing brands etc. OT, Google just applied two day ago for “Android Pay”, interesting.

  4. With due respect to the property owner, this is so silly somewhere. Why not just make into “Lasso by company a” and “Lasso by company b”. There aren’t that many words in the English language.
    In some countries there can be restaurants with the same name in different towns, no? I don’t know seem to recall something like that.

    Software is a crazy business. It’s just a gold rush and everybody is staking their claim. At least give some sensible laws.

    What’s next freedom of speech? Gotta pay to leave a comment, or leave out certain words because they are trademarked?

    Get real.

    Notably nothing against LassoSoft. They are stuck in the process as much as everyone else.
    One of the reasons I left software development, just getting sick of these stupid issues. Everybody staking their claim, for what? Oh, right money. Well, that explains all, doesn’t it?

  5. I’ve been interested in Lasso since viewing the demo a while back. As @foliopress mentions, the base license seems a bit expensive, but I see where the Lasso team is coming from with their reply.

    The thing is, I’m wondering about support. I left a question on the Aesop support tab over on WordPress, since my theme supports Aesop natively and I wanted to try that out first to see what the extra features bring to the storytelling feel on my blog, before moving up to Lasso.

    Seven days later, no reply – which makes me concerned about the level of support from the team when any issues arise with Lasso.

    I get that one plugin is free while the other is premium, but answering concerns regarding formatting issues would assay the hefty jump to the base license.

  6. There are only two hard problems in computing. Cache invalidation, naming things, and off-by-one errors. :-)

    Sorry for your name troubles. I would encourage you to take some time to come up with a name/brand and not to simply choose something descriptive and call it a day. Names matter in the long run. Okay, the very long run, I grant you, but choosing a bad name will eventually bite you.

    In a way, you’re fortunate to have found this out relatively quickly. Do some thinking about your brand and your future plans, then pick a name. Don’t settle for cool-factor.

  7. To err is human. I really appreciate what Nick has done with Laso. I am pretty confident that changing its name won’t hurt it.

  8. I wouldn’t change the name. Lasso is too generic and certainly not even close to LassoSoft. How can you trademark a common name like lasso? I don’t think so. So what LassoSoft is saying is NO ONE can use the term Lasso in their business name – bull. I think LassoHard is the way to go!

    • While it’s true that it’s difficult to trademark a generic term, if used in a specific context that doesn’t relate to the actual term or use of the term (for example, you could trademark Lasso for an actual lasso product), it’s allowed. LassoSoft has indeed trademarked the term Lasso in reference to “Computer software for use in cross-platform software application, software component and website development; computer software for use in developing, analyzing, coding, checking and controlling other computer software; and computer software that implements a procedural and object-oriented programing language”. I’m not a lawyer, but that filing description unfortunately looks like it covers anything related to software and website development, which means he would be in violation of the trademark.

      That’s not to say he couldn’t trademark Lass-o, Lassos, or Laso, but it could still cause legal issues since it’s still similar to their trademark. I’d agree the best path is to just rebrand since it’s a relatively new product.

      For brand name suggestions, I like Mike Rawson’s suggestion for Lariat – another version of lasso in Mongolian was called Uurga. Keeping the lasso concept, I’d also suggest Bolas or Corral. Otherwise, here are some others – Drago (since it’s drag and drop), or Storm (website theme kind of looks like a storm rolling in).

  9. WP-SPEU – Same Page Editor and Updating
    SSPEU – Speedy Same Page Editing and Updates
    – spew your words twice as fast with wp-speu

    okay – I’ve been up too late, it’s 7am here and way past bed time –

    Sorry to hear these legal things becoming a thins this year – although I admit I would not have found the cool lasso thing, not ever seen wp’s themeshaper info if not been for the legal drama posts –

  10. wp edit ninja
    wp pig edit
    wp quick edit
    wp fast edit
    wp edit me
    wp edit mania
    wp edits
    wp editor
    wp writer
    wp copy magic
    wp quick copy
    wp key copy
    wp hot key
    wp lasso me
    wp lasso u
    wp lasoo you
    wp fast start
    wp fast edit
    wp lucy-mehahaha
    wp speed edit
    wp quick key
    wp key
    wp taski
    wp cat
    wp kitty
    wp tweet
    wptext magic
    wp text mad
    wp mad text
    wp runoutof ideas atm hahahahaha

  11. A few possibilities:

    Laslo
    Reflow
    Stitcher
    Shine

    Not sure if any/all are already in use, but perhaps they can help point you in a new direction.

  12. Call it Glove or WPGlove / GloveWP
    As an interface to give more precision and comfort than bare hands.
    Bonus – has ‘love’ in it.

  13. WP Bloggery – It’s a domain I got stuck with a while back that I don’t have a use for, and it could work. Throwing it against the wall, anyway.

  14. I would rebrand it to –

    wp easy editor / wp easy edit

    Simple, descriptive and memorable…

    :)

  15. Not sure if any of these are copyrighted already – or any good for that matter!

    PulpyBits
    LazyIntern
    Presstadigitator
    PostNuclear

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