Trademark Trial and Appeal Board Dismisses Automattic’s Trademark Dispute Against Chris Pearson

In July 2015, Automattic won its Uniform Domain-Name Dispute-Resolution Policy (UDRP) case against Chris Pearson regarding Thesis.com after the panel determined that he failed to establish all three elements required under the ICANN Policy.

A party must satisfy all three of the burdens imposed under the Policy in order for the Panel to order transfer of a domain name from the entity registering it. Here, Complainant failed to establish that Respondent registered and used the disputed domain name in bad faith.

See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)). Therefore, the Panel finds that Complainant failed to support its allegations under Policy ¶ 4(a)(iii) and finds for Respondent.

This allowed Automattic to maintain ownership of Thesis.com. Automattic retaliated by filing a petition for cancellation with the United States Patent and Trademark Office. In the petition, Automattic argued that the three trademarks owned by Pearson, DIYTHEMES, THESIS THEME, and THESIS, should be cancelled.

For the past two years, legal teams for both parties have gone back and forth filing briefs, requests for extensions, and other documents. Earlier this year on April 20th, the Trademark Trial and Appeal Board dismissed the case citing a lack of evidence and testimony from Automattic that establishes real interest and a reasonable belief in damages.

The record is devoid of any evidence concerning the nature of Petitioner’s (Automattic) commercial activities and its interest in Respondent’s (Chris Pearson) registered marks. Proof of standing in a Board proceeding is a low threshold.

For example, Petitioner could have submitted testimony or competent documentary evidence as to its asserted need to use the terms comprising the marks and nature of its business activities to establish its standing.

Petitioner neglected to do so. Thus, on the record before us, Petitioner has failed to establish a ‘real interest’ and ‘reasonable belief in damage.’ Accordingly, the cancellation proceeding is dismissed for Petitioner’s lack of standing.

On May 22nd, Automattic filed a motion for the board to reconsider its decision. On June 1st, the board denied the request making its decision final.

Petitioner has failed to establish any error in the Final Decision. Rather, Petitioner expresses disagreement with the result reached and argues, for the first time on reconsideration, positions it should have alleged in its petition to cancel, supported with testimony and/or competent evidence, and raised in its trial brief.

We will not infer from Petitioner’s scant allegations and evidence, and silence in its brief, proof of its standing to bring this cancellation proceeding. Petitioner’s motion for reconsideration is denied.

The decision allows Pearson to retain ownership of the DIYTHEMES, THESIS THEME, and THESIS trademarks. It’s unclear if this outcome will lead to more legal actions from either party. At the time of publishing, Pearson did not return a request for comment regarding the outcome and what his plans are for the Trademarks.

34 Comments


  1. This article leaves the impression that Automattic is mean-spirited and spiteful. As a WordPress user and Automattic customer, this development is disappointing.

    As a matter of disclosure, I am one step above being a newbie to WordPress. I do, however, use Pearson’s products.

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    1. I encourage you to read the following articles which will provide background into how this situation came to be.

      https://wptavern.com/automattic-wins-cybersquatting-case-against-chris-pearson
      https://wptavern.com/mullenweg-and-pearson-square-off-on-patents-gpl-and-trademarks
      https://wptavern.com/how-and-when-mullenweg-learned-thesis-changed-back-to-a-proprietary-license

      In my personal opinion, Automattic is not a mean-spirited spiteful company. This dispute case highlights that Automattic can’t win every legality there is. There’s still the question as to why Mullenweg/Automattic got a hold of the Thesis domain in the first place. That still has me scratching my head.

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      1. Or why they wanted it and whether that desire was motivated by the GPL disputes. I’m personally becoming more and more disillusioned by Automattic over time.

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      2. I heard the podcast interview where Pearson was super rude towards Matt, Pearson did apologize after the incident.

        I don know if Automatic registered Thesis.com out of revenge or goodwill. It should have ended when Pearson apologized.

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      3. We know why they bought the thesis domain. They wanted to stick it to Pearson. All their actions reeks of vindictiveness. They wanted to destroy Pearson.

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  2. Thank you, Jeff, for responding to my post.

    I began using WordPress in January 2014, so some of the developments predate my exposure to this platform. I did, however, catch the brouhaha that took place in 2015. I recall reading “Chris Pearson Loses Cybersquatting Case Against Automattic” followed by Pearson’s response “The Truth About Thesis.com.” I had hoped, once this issue was out of the public spotlight, that both parties would sit down and work out an amicable agreement that served the interests of the broader WordPress community.

    From the article you’ve just written, my impression is that Automattic is just trying to be difficult. I see no business reasons listed in your article supporting that Automattic needs to have those trademarks canceled. Indeed, even the quotes you provided are damaging against Automattic. Thus, I made the comment about being mean-spirited and spiteful.

    When I purchased my themes from Pearson, I was completely unaware of these issues. Now, I have a vague understanding of differences between the parties prior to 2015. After 2015 I had hoped, however, that cooler heads would prevail and that a reasonable solution would be found to satisfy all parties without resorting to legal wrangling.

    Surely both parties are sufficiently creative that a win-win solution can be found. Thus, I am disappointed by these latest developments.

    I don’t have a dog in this fight. As mentioned, I am a customer of both parties and have probably spent more with Automattic.

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  3. There’s still the question as to why Mullenweg/Automattic got a hold of the Thesis domain in the first place. That still has me scratching my head.

    Occam’s razor

    Matt/Automattic don’t like that DIY Themes violate the GPL, so they purchased Thesis.com as a mild (and expensive) form of revenge.

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    1. hmmm, no one actually made a claim that DIYthemes violates the GPL or any other license. It is matt’s personal vendetta against people that dare to do non gpl things in the wordpress enviroment.

      I am all for the right of each person to act out of his own personal believes no matter how smart or stupid I think they are, but lets not even pretend that it was anything else.

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    2. They didn’t want to risk losing in the court of law. Better to not know and use fear to control things than to risk losing the ability to threaten.

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      1. Honestly, I was really hoping it would go to court and there’d finally be a test, and thus case law, on the GPL. It would start to clarify a LOT around open source licenses, which haven’t been tested much yet. At least, in the United States of America legal system. The last I checked there were just handful of cases related to the GPL and that’s not much to establish significant case law on something as broad as the GPL.

        Either way, both sides of this have been petty, vengeful and small. But, then again, they’re both businesses and that’s pretty much the way of American business these days, especially when lawyers get involved.

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    3. Exactly because GPL is very important for the growth of the WordPress community which effects the livelihoods of people who build their business around it.

      Pearson would make more money and get more support from the community if he went 100% GPL.

      Using GPL code and then changing the license to protect his investment in Thesis didn’t work and was a bad business decision which only benefitted his competition.

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      1. Using GPL code and then changing the license to protect his investment in Thesis didn’t work and was a bad business decision which only benefitted his competition.

        Not only did this never happen, it’s not even close to an accurate characterization of the history of this issue.

        But why bother with simple facts? Much better to burn the witch and let that serve as an example to anyone else who dares to defy the capricious orders of the king, right?

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    4. In response to Christine’s comment:

      “Matt/Automattic don’t like that DIY Themes violate the GPL, so they purchased Thesis.com as a mild (and expensive) form of revenge.”

      This is why I personally will try and avoid giving any business to Automattic, and my boss feels the same way – she was following this little saga from the start, and felt that it was entirely driven by Matt.

      We spend money on Automattic’s services/products because it was our way of supporting WordPress, and we were happy with them, and we liked the Automattic folks we had met at some of the meet ups.

      We can’t justify spending money on Automattic if this is how they are going to use some of it.

      It would be one thing if Matt had funded all of this himself, we could ignore it, he’s free to do what he wants with his money. But it left us with a bad feeling that Automattic was putting money and resources into this.

      We want the money we spend on Automattic to be put towards improving WordPress and its related services, and this legal dispute does not meet either of those requirements.

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  4. I have to say I think this was the only logical outcome. The whole situation really does seem to be based in petty vengeance.

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  5. Since the elephant in the room hasn’t been mentioned, the decision gives Pearson good cause to seek a new UDRP against Automatic.

    Hence, Automattic paid a ton for a domain name, that it may now have to surrender to the trademark owner for Thesis. Well played, Matt. #sarcasm

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  6. Hopefully, Automattic will think twice before bullying another individual/company out of spite.

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    1. I am not sure. I think is the strategy was to make an example which they did. How many people are willing to risk financial ruin and public shaming like this. Not many. Evan Wix was not immune to public shaming by Automattic.

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    2. Expensive lesson. I’m sweating just thinking about all those filing fees and attorney bills. And to end up with that rather scathing response from the Board. Particularly noteworthy is the language they used to describe how they determined Automattic’s “standing.” The question I’m asking myself is… either this was a very inexperienced legal team that reeally screwed the pooch – or Automattic truly had no standing whatsoever and just wanted to annoy people.

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      1. The legal team probably had a good idea of the outcome from the start, and they were going to get paid no matter what, so I doubt they were inexperienced.

        I question the people who run Automattic – why they would spend a lot of money on what looks like a personal vendetta is beyond me. I’ve met some of them, and they seem like responsible folks that wouldn’t dirty their hands with something like this. It’s baffling.

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  7. “Exactly because GPL is very important for the growth of the WordPress community..” blah , blah,blah,…

    No. WordPress grew because it was FREE , as in beer. 99% people could care less or even know about GPL. They want free as in no charge. A fifty cents charge would cause a huge drop in downloads rate. And yet we still have people who confuse free beer with free speech. Cult members please note: outside of your bubble, NO ONE cares about the code. No one cares about the freedom to read or modify the code. They just don’t want to pay.

    Automattic is a hosting company. It is not a software company. They don’t want software behind a paywall. It is not a bad company. It provides value to countless people and it is the main support and contributor to WordPress, the software. But as a hosting company, its interests are different from a software company.

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    1. Truer words were never written. Outside of the WordPress community, no one cares what the license is as long as they can download it for free. No one.

      Of course, I also appreciate the spirit behind the GPL that, in theory, keeps WordPress and it’s essential parts free because I’d prefer not to keep paying for it. That being said, I did, in fact, donate to the WordPress project many years ago, even when Matt basically asked me not to bother because it wasn’t about the money at that point, because I wanted to be able to say that I was willing to pay to support something I believed in. I’m still not sorry that I did, just because of the point it makes.

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      1. Outside of the WordPress community, no one cares what the license is as long as they can download it for free. No one.

        I am sorry to disrupt your stats, but I care. So at least there is the one who care. Please correct your statistics.

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      2. Peter, if you’re reading WPTavern, you’re not “outside the WordPress community”. And, it’s great that you care. I hope you get involved in the Creative Commons project and the work around the GPL, both in and out of the WordPress community.

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    2. It’s true that most WordPress end-users start using WP simply because is it free rather than making some value-aligned choice about a license. But I couldn’t disagree more about the role the having of an OSS license has played to the success of WordPress. There is no way you draw the contributors WordPress has done over the years w/o it. And most hours that have been spent contributing to WP have been unpaid (so here’s people paying with their time). Without contributors WordPress doesn’t grow and attract the amount of people it does.

      You’re taking what motivates for people to start using WordPress with what it takes for WordPress to come about as a community backed project and drive its success. Contributors don’t contribute just because it’s free at the point of download and popular. Thinking that you’ve figured out what has allowed WP to grow comes solely down to it being free as in beer is just a very poor analysis. You account for that on the basis what motivates people to try something initially without accounting for what it takes for someone to get involved and contribute over the course of years.

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  8. As a cheerleader for both (and thus denied the opportunity to speak at WordCamps) I wish both would come to amicable terms.

    Both have won, both have lost but the WordPress community is no better for it. Both have legitimate points, both have been insulting and unpleasant to the other.

    Both are holier than the other. It’s past time for the rift between Chris and Matt be set aside for good.

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  9. This is concerning on many levels.

    First, if Automattic/Matt would pursue a lengthy and expensive court battle just to stick it to someone they disagree with, what else will they do? How many people will they destroy in the process? As was mentioned they played the intimidation game with Wix. Matt’s obsession with the GPL (well, his interpretation of the GPL) is sick and often goes counter to the spirit of the GPL. The GPL actually takes away freedom, despite what it claims.

    Second, if Automattic/Matt would pursue a lengthy and expensive court battle of this magnitude, only to lose so spectacularly, it makes me seriously question their judgement when it comes to things like the React patent clause. Are they really willing to put WordPress users at those risks for the sake of JavaScript? Matt’s obsession with React is also sick.

    Third, it looks like Matt is intentionally trying to kill parts of WordPress and the ecosystem. Here’s this from Weston Ruter on a Gutenberg issue.

    I think it’s the intentional and conscious decision of Matt that the technical debt must be cancelled if WordPress is to evolve in the way that it will remain relevant in the future.

    Essentially, Matt wants to kill it and start from the ground up. This is a dangerous game he’s playing with WordPress. Many people’s lives will be destroyed if this goes wrong. Many people specialize in WordPress and have put a lot of time into learning how it works.

    How can we possibly want automatic updates for major versions of WordPress (the push/wish of many for a long time) if Matt is so willing to axe so much of WordPress in one go?

    I think it’s time for Matt to hand over the reigns of the WordPress Foundation and the open source project. Let him do what he will with Automattic. He is no longer acting in the best interest of WordPress as a whole.

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    1. I think it’s time for Matt to hand over the reigns of the WordPress Foundation and the open source project. Let him do what he will with Automattic. He is no longer acting in the best interest of WordPress as a whole.

      I like this idea a lot. We would like to contribute resources (money or otherwise) to WordPress itself, but we have reached a point where we will not do so through Automattic.

      It’s simply not a good use of Automattic’s financial resources to engage in these kinds of fights. It’s also not a good look for Automattic.

      Which is a shame, because some really good people work there.

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  10. The problem with a lot of the crap being slung in Matt/Automattic’s direction seems to be stemming from the fact that the trademark cancellation action Automattic brought is being looked at as a tit-for-tat revenge thing when it is part of a much larger, overall dispute with how trademark law works in the US as opposed to copyright law. Trademarks require active defense where as copyright protections exist from the moment the work is in “fixed form” until, IIRC, 75 years after the creator’s death.

    Chris is required, by law, to defend his trademarks or else he loses them. Period. So he cannot be blamed for initiating the action. If he let it slide, he risked having his trademark cancelled. Although on a personal note I think a trademark on “thesis” is just too generic versus “thesis theme” but that’s just me.

    One also cannot fault Automattic for defending itself the way it did either. It’s like how victims of patent trolls go after the patents being used against them.

    Honestly though, I really wish this drama would die, staked through the heart, buried, and sealed in concrete. It does no one any good to sit in one of the dark corners of the Internet chewing livers over this. It’s time to just let it go. It’s unnecessary drama at this point and serves no real purpose. Both Matt and Chris should just let this go. Let Drupal take over the drama spectacle.

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    1. The problem with a lot of the crap being slung in Matt/Automattic’s direction seems to be stemming from the fact that the trademark cancellation action Automattic brought is being looked at as a tit-for-tat revenge thing when it is part of a much larger, overall dispute with how trademark law works in the US as opposed to copyright law. Trademarks require active defense where as copyright protections exist from the moment the work is in “fixed form” until, IIRC, 75 years after the creator’s death.

      I’ve never been too clear on this, and maybe you can help clear this up since you know more about it – What was Matt’s purpose in spending $100,000 to buy Thesis.com?

      Can we, going forward, expect Matt/Automattic to spend tens and hundreds of thousands of dollars on buying up domain names related to the cancellation of trademarks?

      I’m just not clear – I thought Matt/Automattic were mainly about providing an awesome platform for websites, not being in the trademark cancellation business.

      Is there a way, perhaps a checkbox maybe, where we can say that any money we spend with Automattic will only go towards WordPress development and hosting and not buying up domains for ridiculous amounts of money?

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  11. This was one of the things that started me souring on Automattic. It came across as a school bully doing something vindictive just because he could.

    The language in the rebuttal is telling.

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  12. Could it be that the best days of WordPress is behind it?

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  13. As many have said before me: let’s not pretend like there is a deep and complicated explanation for this issue.

    Usually the first (and simple) explanation is the right one: vengeance.
    I am also among those that would like to see the “business plan” for acquiring the domain of a “foe” for $100K.

    Just petty vengeance and bullying.
    Will there be consequences for “the king”?

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