The WordPress Foundation has applied to trademark the terms ‘Managed WordPress’ and ‘Hosted WordPress’ for software and hosting services. If approved, this would restrict commercial use of these terms by web hosts and plugin developers without prior permission.
## Trademark Applications Filed by WordPress
The trademark applications for these two hosting-related phrases are dated July 12, 2024, and list the WordPress Foundation as the applicant. The phrases being trademarked are “Managed WordPress” and “Hosted WordPress.”
The WordPress Foundation, a non-profit organization behind the open-source WordPress content management system, aims to cover the use of these phrases in various sectors. This includes web hosting, servers for web hosting, downloadable software platforms for web hosting, cloud hosting services, SaaS services, software for managing website content (including downloadable software), web development software, downloadable software for designing and managing websites, and plugin software.
### Why WordPress Filed Trademarks
The trademark applications are filed on an “Intent to Use” basis, indicating their future plans to use these terms in commerce. Both applications state:
> “The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.”
## Who Wants to Own the Trademarks?
The WordPress Foundation, which is a separate entity from the for-profit Automattic, filed the trademark applications. However, it has been Automattic demanding money for a license to use certain WordPress-related phrases. This raises questions about how Automattic can make claims for trademarks filed by the WordPress Foundation. It appears that the Foundation may have an agreement with Automattic for commercial use and enforcement of their trademarks.
The cease and desist letter sent by WP Engine to Automattic includes:
> “During calls on September 17th and 19th, for instance, Automattic CFO Mark Davies told a WP Engine board member that Automattic would ‘go to war’ if WP Engine did not agree to pay its competitor Automattic a significant percentage of its gross revenues – tens of millions of dollars in fact – on an ongoing basis. Mr. Davies suggested the payment ostensibly would be for a ‘license’ to use certain trademarks like WordPress, even though WP Engine needs no such license.
> WP Engine’s uses of those marks to describe its services – as all companies in this space do – are fair uses under settled trademark law and consistent with WordPress’ own guidelines.”
This ongoing dispute suggests that Automattic may be licensed to enforce the trademarks on behalf of the WordPress Foundation.
## Implications of Trademark Filing
This trademark application could significantly impact web hosts using the phrases “Managed WordPress” and “Hosted WordPress.” The WordPress Foundation could enforce ownership of these terms or demand licensing fees.
The Foundation’s objective with this trademark application is to assert legal control over the terms to regulate which entities can use them.
If the trademark application passes examination, there will be a period during which third parties can file objections to the trademark application.
Featured Image by Shutterstock/Wirestock Creators
