WordPress Seeks Trademarks for ‘Managed WordPress’ and ‘Hosted WordPress’

The WordPress Foundation has taken a significant legal step by filing for the trademarks “Managed WordPress” and “Hosted WordPress,” terms commonly used in the web hosting industry. The applications, submitted on July 12, 2024, aim to secure exclusive commercial rights to these phrases for hosting and software services. If approved, this move could restrict their use by companies, including web hosting providers and plugin developers, without prior authorization from the foundation.

Background on the WordPress Foundation and Trademark Filing

The WordPress Foundation, a non-profit organization responsible for maintaining the open-source WordPress content management system (CMS), filed the applications on an “Intent to Use” basis. This legal step indicates that the foundation plans to use these terms in commerce. The scope of the trademarks is broad, covering services such as web hosting, cloud hosting, server infrastructure, downloadable web development software, and plugins for managing website content.

The phrases “Managed WordPress” and “Hosted WordPress” have become industry standards, often used by web hosting companies to describe specific services tailored to WordPress websites. Managed WordPress hosting refers to a service where the hosting provider takes care of technical aspects like software updates, backups, and security. Hosted WordPress typically refers to WordPress sites hosted on a specific server platform. By trademarking these terms, WordPress is aiming to assert control over their usage, especially in a commercial context.

Why Is WordPress Filing These Trademarks?

The foundation’s trademark applications include a declaration of their "bona fide intention" to use the terms in connection with their products and services. This move suggests a strategy to maintain greater control over the WordPress ecosystem and ensure that companies using these phrases align with the foundation’s guidelines or obtain proper licenses.

Though the WordPress Foundation is a non-profit entity, it operates separately from Automattic, the for-profit company founded by Matt Mullenweg, co-creator of WordPress. Automattic runs several commercial ventures, including WordPress.com, and has been involved in disputes over the use of WordPress-related phrases. This legal gray area has caused confusion, particularly as Automattic has attempted to enforce licensing fees on competitors such as WP Engine for using terms like “WordPress” in their marketing.

In one notable instance, WP Engine, a managed hosting provider, alleged that Automattic demanded significant licensing fees—potentially in the tens of millions of dollars—for the use of WordPress-related trademarks, despite the fact that the trademarks were held by the WordPress Foundation, not Automattic. WP Engine argued that its use of the term “Managed WordPress” was a fair use under established trademark law and consistent with WordPress’s own guidelines.

The Role of Automattic and Enforcement of Trademarks

While Automattic and the WordPress Foundation are legally distinct, it appears there may be an agreement between the two entities allowing Automattic to enforce trademarks on the foundation’s behalf. The cease-and-desist letter sent by WP Engine to Automattic suggests that Automattic sees itself as having the right to collect licensing fees for certain WordPress-related terms, even though WP Engine argued no such license was necessary.

This arrangement could explain why Automattic has been involved in these disputes, despite the WordPress Foundation being the entity filing for the trademarks. If the foundation’s trademark applications are approved, Automattic may continue to play a role in enforcing these trademarks, potentially asking for licensing fees from other companies that use the phrases commercially.

Potential Implications for Web Hosts and Plugin Developers

Should the trademark applications be granted, web hosting companies and plugin developers that use “Managed WordPress” and “Hosted WordPress” in their service descriptions could face legal challenges if they do not secure permission from the WordPress Foundation. The foundation could require businesses to pay licensing fees or stop using the terms altogether. This would impact not only hosting providers but also any related software or services that are built around these terms.

The WordPress Foundation’s move to trademark these phrases is likely aimed at protecting the integrity of the WordPress brand. However, it also raises concerns within the broader WordPress community about whether this level of control could stifle innovation or create barriers for smaller businesses and open-source developers.

What Happens Next?

The trademark applications are now subject to review by the United States Patent and Trademark Office (USPTO). If approved, there will be a period where third parties can object to the trademarks, providing an opportunity for businesses and individuals who oppose the trademarks to voice their concerns. Whether or not the trademarks are ultimately granted, the process highlights the complex legal landscape surrounding WordPress, a platform that has long been hailed for its open-source roots but is now navigating the tension between its non-profit foundation and its commercial stakeholders.