There's been talk lately about Automattic enforcing trademarks for the term “Woo”, by sending takedown notices to websites utilizing the term in their domains and offering services or products associated with WooCommerce.
Automattic has been sending letters, primarily to sites toward sites like WooGPL, who were selling access to WooCommerce products, and apparently confusing customers that would then go to Automattic for support. I've been told such situations are their priority when defending the trademark, but it's not the only priority.
WP Tavern and WP Mayor and Torque all wrote about this story, but didn't realize that the “Woo” trademark application they were pointing to wasn't up to date. There is a separate application that is still live and pending approval.
There are numerous potential benefits for Automattic to grab and hold onto a “Woo” trademark in the more general sense. They have registered trademarks for WooThemes (word mark and logo), and I understand their applications for WooCommerce (word mark and logo) are very close in the US, and they are already approved in Australia (I would link to it, but the website can't… these trademark websites are all atrocious. But you can search it the site or see my screenshot). They are actively applying for the trademarks in other countries as well.
However, Woo is not a registered trademark, and currently falls under a “common law” trademark policy. For reference, registered trademarks are the ones with the ® and common law (typically trademarks applied for but not yet granted) trademarks are referenced with ™. So, I could slap one on Post Status™ without having applied for it, because I'm noting my intent to trademark. Because I've established that I do commerce under this name, I could go after someone — though with less power than if the trademark were registered — who was using it.
Automattic is choosing to go after folks using Woo in their domains, at least when the domains are some derivative of WooThemes or WooCommerce. Unfortunately, some businesses were created (and even worked with or promoted by WooThemes) prior to Automattic's decision to trademark “Woo”.
I've done a lot of research on the topic lately — both for the Thesis post last year, and this time around — and even though trademark law and the internet is a big gray mess, Automattic probably has a pretty good case with these Woo-derivative companies — as in, the companies are riding the “Woo” brand. Even if at the end of the day their case didn't hold up, they have more money and resources to cause headaches for anyone doing WooThemes or WooCommerce related projects and using “Woo” in the title.
For projects where someone may be using WooCommerce or WooThemes explicitly, it's more cut and dry, and anyone silly enough to try that is likely going to have a hard time. But that's not what the WordPress world is up in arms about. Many see the attempt to trademark and enforce “Woo” all by itself as too generic and unnecessary. I see both sides.
The “Woo” brand (prefix alone) is one of the strongest in our industry. It may be the strongest brand in the WordPress ecosystem. Other big brands: Yoast, StudioPress, Gravity Forms, Jetpack — they all have registered trademarks. But with Woo, you know what I'm talking about without saying anything else.
Trademark law is heavily reliant on geographic location in the physical world — so somebody selling WPShoes in Alabama and someone else sells another product called WPShoes in California can maintain their trademarks without issue unless they both try to sell WPShoes in Kansas — and the U.S. law has done almost nothing to help discern how things like concurrent use and geographic location play into the internet. Since the internet is kindof one “place”, who gets to sell WPShoes there?
An excellent paper that tackles this question is by Shontavia Johnson, titled Trademark Territoriality in Cyberspace: an Internet Framework for Common-Law Trademarks. I read the entire 50 page paper that was published in the Berkeley Technology Law Journal, and it was very helpful to see just how unclear current U.S. law is on trademarks on the internet (as well as give me a crash course on important trademark cases generally, which I've used in my opinions above). She concludes:
Federal courts are only beginning to address common-law trademarks used on the Internet. The dearth of case law, coupled with inconsistent results and dicta, currently leaves trademark owners, particularly those who rely heavily or exclusively on Internet commerce, with no clear guidelines. Most courts merely provide anecdotal observations regarding the Internet’s impact on traditional analyses or suggestions for future consideration.
Folks have compared Automattic going after “Woo” to if they started going after “Word”-based companies (assuming they were applying for that trademark, which is both less crazy than you think based on my research of ridiculous trademark attempts, and also, well, they aren't trying to… so I should probably end this parenthetical sidebar now).
However, Automattic does have a fairly rich history in the world of trademarks. Let's play a fun game, called List All Trademark Applications By Automattic or the WordPress Foundation:
Here's a list. If you click on the links, it'll take you to a page about a particular trademark (either a word mark or logo) and you can also see the flow of paperwork and dates that's occurred over the application tenure, which can span years:
|Applicant||Serial Number||Reg. Number||Word Mark / Desc||Check Status||Live/Dead|
|Bubblestorm||86796698||VERIFIED WOOEXPERT WOO WWW.WOOTHEMES.COM||TSDR||LIVE|
|Bubblestorm||86796692||GOLD WOOEXPERT WOO WWW.WOOTHEMES.COM||TSDR||LIVE|
|Bubblestorm||86796681||SILVER WOOEXPERT WOO WWW.WOOTHEMES.COM||TSDR||LIVE|
The “Bubblestorm” name is actually WooThemes, or the company name WooThemes has always used. And they still go by the name today, though it's now wholly owned by Automattic. That was part of why the Automattic-led trademark attempts were cancelled — they decided to keep the Bubblestorm name.
There are a few interesting things to note about the trademark history for Automattic, WooThemes, and the WordPress Foundation (which I include because those are still guided by Matt Mullenweg at the top).
- The Jetpack trademark was originally owned by Jetpack Marketing, LLC, and Automattic filed opposition, which eventually settled outside of the trademark opposition system. Note, this is separate from Automattic's purchase of Jetpack.com from Jetpack Digital, whom now uses Jetpack.net. The application from Automattic with the notes of opposition make for interesting reading.
- It's interesting to me that Automattic owns the BuddPress trademarks, not the WordPress Foundation. It's also interesting that I couldn't find a bbPress trademark application.
- Where you see duplicates of live trademarks, it's likely because they are applied for across different categories: section 09 and section 42 are common for internet/computer based trademarks (the classes are atrocious for the modern world). An examples of alternate classes being used is that WordPress is also trademarked under 41 (education) and 25 (which is clothing aka swag).
- WooExpert badges have applications: I presume to prevent folks from using the badges outside of the WooExpert program.
- On that thread, I'm surprised nothing related to WordPress.com VIP is trademarked. Theoretically, I could probably use “WP VIP” or similar and Automattic would have to battle me over that.
- Interestingly, Automattic has a registered trademark for their logo, but the one for their name is applied for but not registered. They would still defend it strongly, I'm sure, but they have fewer protections there.
Anyway, if you're bored, those applications can be fun to click around. Additionally, you can see Automattic's history of trademark cases, which links to the Jetpack Marketing cases and the Thesis ones. Sidenote: their trademark lawyer is Mary Shapiro, whom also has a colorful history in the trademark database.
Automattic has lawyers and money for lawyers and none of their trademark moves are particularly egregious in my mind. It is pretty rich to me that Automattic is (still) fighting Chris Pearson over his registered Thesis trademark — over it being generic — while simultaneously attempting to register Woo. But it's not unique to them. I did a lot of searching of big companies and their trademarks and they all do it: Facebook, Google, Apple, etc. They all have laundry lists of generic terms they try to secure rights to.
One of the most directly translatable cases is Instagram. Instagram, after several years of not caring, started going after services with “Insta” or “Gram” (or both) in the names. Instagram had a powerful weapon though: their API. Many of those services couldn't exist without access to the Instagram API, so they were easier to slap around. But the services were clearly named — and even performed services — because of the trademark holder. That gives solid ground (with long precedent in trademark world) to the “junior” and “senior” terminology that's common.
Not to mention, most folks using Woo, or Insta, or whatever else deritivative of other companies, didn't ever attempt to trademark the same terms. Most case law I saw was actually two or more companies sharing a name and common law trademark without knowledge of one another. A notable case in the paper I linked above was Thrift vs Thrifty car rentals: the names weren't the same, but there was confusion once they started competing in the same markets. That's the way most traditional trademark cases go. With the internet, so much more gets involved and the landscape is still super murky.
Therefore, Automattic and other companies are doing what they think they need to do to protect themselves. Their legal standing in what they do should be interpreted outside of the moral perspective, as well as the situational one.
Automattic has a lot of resources and they are using those resources to protect and secure their brand, and in their eyes, to also protect their customers. That's fair. But I believe there is a line, and in some instances, I think Automattic could cut folks a break. For instance, I'd hate to see a company like WooRockets — in good standing historically with WooThemes, in business since 2014 (prior to Automattic's applications) — have to change their name because Automattic wants “Woo” all to themselves.
Automattic does leave room in their trademark guidelines on the WooThemes website for companies to use “Woo” with permission; and I hope they make the right call, long term, on when to allow it and when not to.