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:

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.

Removing all references to the term “Lasso” from the Website.

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.