4 ms·

Actually no, trademark is a “use it or lose it” state, waiting so long will not be in their favor

mvkel 2y ago
Exactly. Statute of limitations is a factor here
nickff 2y ago
Wordpress is using their trademark though… do you mean to say that you must enforce a trademark to keep it? That’s different, and a subject of some controversy; I’m not sure that it’s been decided conclusively. Please correct me if I’m wrong here (in any way).
- mvkel 2y ago
  It's been decided conclusively, but it is also relatively rare in a practical sense. Trademark law requires the owner to protect their trademark to avoid dilution or genericide, which occurs when a trademark becomes so common it loses its distinctiveness (like what happened with "Aspirin" or "Escalator"). Not a lawyer, but talked about it at length with a trademark attorney when having to defend over the years. It was conveyed that if we aren't willing to legally defend a mark, we could potentially lose it.
  - nickff 2y ago
    Do you think WordPress is diluted? It definitely doesn’t seem to generically refer to blogging or website building software. It seems to me that even WP Engine isn’t diluting it, they’re hijacking it.
    - mvkel 2y ago
      Agreed, but that goes back to defensibility. WP Engine has been doing their thing since 2011 without a peep from Matt. He should have been issuing cease and desists, etc. back then.
      - blackeyeblitzar 2y ago
        Maybe it’s that WP Engine operates differently now. They got a massive investment from Silver Lake, a terrible private equity firm with a track record of doing evil things. They probably have changed how they support Wordpress (the open source project), how they pollute the ecosystem, how they make it harder to leave, etc. In other words, they’re free riding on Matt’s creation and extracting all they can from it.
        FireBeyond 2y ago
        Oh yes, Matt's all about how evil Private Equity is and how they leech from communities and add zero value... It's an interesting take, given that the three board members of the WordPress Foundation are Matt and a ... managing partner of a PE firm (the third is a retired coder, I believe).
        mvkel 2y ago
        As is their right, given the terms.
        deleted 2y ago
        [deleted]
    - FireBeyond 2y ago
      You need to look up nominative usage. "We offer WordPress hosting" is a perfectly legal thing for people to say if they actually offer WordPress hosting, and no amount of trademarks can prevent that. This is specifically called out to try to avoid trademark fuckery. Sure, everyone refers to the "Big Game" versus the "Super Bowl", but that's largely because the NFL can afford more lawyers than they can, and it's not worth the fight.
throwawaymaths 2y ago
IANAL, but If they are making trademark licensing deals with other companies, and periodically pestering the infringer without taking it fully legal I think that counts as "using it". A judge is likely to be lenient since legal costs are pretty bad and a PITA
- underseacables 2y ago
  But who owns the trademark? The for-profit company, or the nonprofit foundation?
  - patmcc 2y ago
    The foundation owns it - https://tsdr.uspto.gov/#caseNumber=78826734&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch https://tsdr.uspto.gov/#caseNumber=78826734&caseSearchType=U... A claim I've heard is that the for-profit company has the exclusive commercial license (along with the right to grant sub-licenses).
    - ValentineC 2y ago
      > A claim I've heard is that the for-profit company has the exclusive commercial license (along with the right to grant sub-licenses). That sounds about right, and is what's written on the WordPress Foundation's trademark page [1]: > If you would like to use the WordPress trademark commercially, please contact Automattic, they have the exclusive license. Their only sub-licensee is Newfold. I read something different [2] while reading up on this whole debacle: > The WordPress Foundation was launched in January 2010. Automattic transferred the trademarks later that year in September. As part of the transfer, Automattic was granted use of WordPress for WordPress.com, but not for any future domains. Matt was granted a license for WordPress.org and WordPress.net. I wonder if something changed along the way. [1] https://wordpressfoundation.org/trademark-policy/ https://wordpressfoundation.org/trademark-policy/ [2] https://wordpress.org/book/2015/11/the-wordpress-foundation/ https://wordpress.org/book/2015/11/the-wordpress-foundation/
- jcranmer 2y ago

Exactly. Statute of limitations is a factor here

Wordpress is using their trademark though… do you mean to say that you must enforce a trademark to keep it? That’s different, and a subject of some controversy; I’m not sure that it’s been decided conclusively. Please correct me if I’m wrong here (in any way).

mvkel 2y ago
It's been decided conclusively, but it is also relatively rare in a practical sense. Trademark law requires the owner to protect their trademark to avoid dilution or genericide, which occurs when a trademark becomes so common it loses its distinctiveness (like what happened with "Aspirin" or "Escalator"). Not a lawyer, but talked about it at length with a trademark attorney when having to defend over the years. It was conveyed that if we aren't willing to legally defend a mark, we could potentially lose it.
- nickff 2y ago
  Do you think WordPress is diluted? It definitely doesn’t seem to generically refer to blogging or website building software. It seems to me that even WP Engine isn’t diluting it, they’re hijacking it.
  - mvkel 2y ago
    Agreed, but that goes back to defensibility. WP Engine has been doing their thing since 2011 without a peep from Matt. He should have been issuing cease and desists, etc. back then.
    - blackeyeblitzar 2y ago
      Maybe it’s that WP Engine operates differently now. They got a massive investment from Silver Lake, a terrible private equity firm with a track record of doing evil things. They probably have changed how they support Wordpress (the open source project), how they pollute the ecosystem, how they make it harder to leave, etc. In other words, they’re free riding on Matt’s creation and extracting all they can from it.
      - FireBeyond 2y ago
        Oh yes, Matt's all about how evil Private Equity is and how they leech from communities and add zero value... It's an interesting take, given that the three board members of the WordPress Foundation are Matt and a ... managing partner of a PE firm (the third is a retired coder, I believe).
      - mvkel 2y ago
        As is their right, given the terms.
      - deleted 2y ago
        [deleted]
  - FireBeyond 2y ago
    You need to look up nominative usage. "We offer WordPress hosting" is a perfectly legal thing for people to say if they actually offer WordPress hosting, and no amount of trademarks can prevent that. This is specifically called out to try to avoid trademark fuckery. Sure, everyone refers to the "Big Game" versus the "Super Bowl", but that's largely because the NFL can afford more lawyers than they can, and it's not worth the fight.

throwawaymaths 2y ago

IANAL, but If they are making trademark licensing deals with other companies, and periodically pestering the infringer without taking it fully legal I think that counts as "using it". A judge is likely to be lenient since legal costs are pretty bad and a PITA

underseacables 2y ago
But who owns the trademark? The for-profit company, or the nonprofit foundation?
- patmcc 2y ago
  The foundation owns it - https://tsdr.uspto.gov/#caseNumber=78826734&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch https://tsdr.uspto.gov/#caseNumber=78826734&caseSearchType=U... A claim I've heard is that the for-profit company has the exclusive commercial license (along with the right to grant sub-licenses).
  - ValentineC 2y ago
    > A claim I've heard is that the for-profit company has the exclusive commercial license (along with the right to grant sub-licenses). That sounds about right, and is what's written on the WordPress Foundation's trademark page [1]: > If you would like to use the WordPress trademark commercially, please contact Automattic, they have the exclusive license. Their only sub-licensee is Newfold. I read something different [2] while reading up on this whole debacle: > The WordPress Foundation was launched in January 2010. Automattic transferred the trademarks later that year in September. As part of the transfer, Automattic was granted use of WordPress for WordPress.com, but not for any future domains. Matt was granted a license for WordPress.org and WordPress.net. I wonder if something changed along the way. [1] https://wordpressfoundation.org/trademark-policy/ https://wordpressfoundation.org/trademark-policy/ [2] https://wordpress.org/book/2015/11/the-wordpress-foundation/ https://wordpress.org/book/2015/11/the-wordpress-foundation/
jcranmer 2y ago