Would Automattic SUE THE WOO!

don’t we all love sensational headlines! :wink:
This is one of those should / could / would / can… type of hypothetical questions. Ready?

Do you think Automatic would or can go after entities with the name ‘Woo’ in their domain?
Before anyone goes nuts here, we’re not talking about those stupid sites that are reselling WooCommerce’s Actual Products

Site like Tony and the Engineers over at WooRockets.com
or Nicholas Jones over at WooAssist.com

While these sites clearly don’t violate any of Automattic’s domain rules for the term “WordPress”, they are clearly about WooCommerce (which Automattic now owns).

Now, I will be the first to admit that I don’t have a crystal ball, and nor would I expect anyone else to foresee Automattic’s future. But vehemently & aggressively attacking people for control over domains with seemingly endless amounts of knowledgeable lawyers against individuals or small independent authentic plugin developers, WooCommerce bloggers, or other domain owners with the word ‘woo’ in it is something that no one ~ or small group of individuals ~ could ever stand a chance against.

So… what do you think? Is having the word “Woo” in a domain name …safe?

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Personally, I’d avoid “Woo” in the domain for the same reason I prefer to avoid limiting terms like “wp” in domains. It’s just not future-proof. What if a few years down the line, WordPress is forked a la Mambo -> Joomla? Or WooCommerce’s name changes and/or is no longer the leading WordPress e-commerce suite?

A name like “WooAssist” would probably sound a bit silly. Names like Skyverge are still memorable and don’t have to worry about such trend fluctuations.

I know that’s beside the point, and ironic considering I own wpchat.com, but thought it was worth mentioning.

I know Automattic / WPF / Matt (I hate to refer to the three of them like that, but you can’t ignore that Matt is the leader of both entities) has been getting a bad rap lately for the legal stuff related to The WordPress Helpers and Thesis.com cases, but let’s break down each one:

First, TheWordPressHelpers.com case which is pretty thoroughly documented by @Jeffro on WP Tavern.

  • WordPress Foundation submits application on November 7th to register the WordPress character mark.
  • Jeff Yablon registers a bunch of domains with “WordPress” in it, and launches a site at TheWordPressHelpers.com in January 2015.
  • Makes a big deal about refusing to switch to an alternative domain that doesn’t contain “wordpress” as if its part of some bizarre marketing ploy, and is apparently contacted by WPF lawyers “shortly after.”
  • Jeff Yablon files an opposition request to the Foundation’s filing on May 5, 2015.
  • Finally gets sued by the WordPress Foundation on June 18th, 2015, gets coverage on popular WP-oriented blogs. Mission accomplished?

And now, the Thesis.com case.

  • Automattic buys Thesis.com for $100k, redirects to ThemeShaper.com, their theme-related site. Judging Matt’s demeanor when he references Thesis.com in this WordCamp SF 2014 Town Hall (5:30 mark), there seems to be some trollish intent behind the purchase.
  • Chris, decides he’d rather seize the domain through legal means from Automattic than get in a bidding war with an entity with much deeper pockets.
  • Automattic, not willing to lose their $100k purchase, defends self, and wins.
  • Automattic petitions to cancel Chris’ trademarks for DIY Themes, Thesis, and Thesis Theme

In the Helpers case, there seemed to be an element of goading going on, followed by Yablon’s attempt to oppose the “wordpress” character mark, before WPF finally fired back.

In the Thesis.com case, legal action on Automattic’s part was only initiated in defense of Chris’ UDRP attempt. It may be considered a bit overzealous to petition to cancel their trademarks.

However, Paul Sieminski, Automattic’s general counsel, stated the “challenge was a part of our defense, simply because Chris was asserting his TM against us, and those trademarks are very likely invalid.”

In both cases, legal action was initiated on WPF and Automattic’s part as a defensive maneuver. Not offensive. I think that’s important to note, before people assume the worst and think they’re about to go on a legal rampage. Matt tweeted, “I hate legal stuff, avoid it wherever possible.”

I tend to believe him. And considering the relative rarity of these cases (TheWordPressHelpers.com is far from the only site with “wordpress” in the domain), I believe history backs it up too.

So to get back to the original question, Matt also tweeted, “because you have a theme doesn’t give you worldwide dominion over an English dictionary word.”

As is “Woo.” While both sites in question are clearly related to WooCommerce, and Automattic could probably initiate legal action (as can anyone for any reason), going after them would be pretty high up on the hypocrisy scale and something I don’t believe they’ll do.

Some of my pro-Automattic/WPF bias is undoubtedly showing through. But I honestly don’t think they (as in the amalgamation of Automattic, WPF, and Matt) have demonstrated a pattern of litigiousness for me to consider them “evil” yet. This is concerning and worth keeping an eye on for sure. But I just don’t see it yet.

So in closing…

Yes. I’d still avoid it for other reasons (see first paragraph of this post) …but yes.

P.S. WooCommerce Jetpack

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If you’re interested in legal analysis of these cases, @richardbest published articles on both.

Just thought I would throw this in here. This is why Automattic won’t be able to invalidate the Thesis trademarks.

https://secureyourtrademark.com/can-you-trademark/common-words-phrases/

And speaking of Thesis.com, Chris Pearson has posted his side of the story here: http://www.pearsonified.com/2015/07/truth-about-thesis-com.php

It doesn’t tell us much that we didn’t already know, but it’s interesting to hear things from his perspective.

I know I haven’t mentioned DIYThemes’ pending patent from 2012 that is referenced in Chris’ article because I felt it wasn’t relevant to this case at all (a “misdirection” as Chris refers to it). But here’s a tweet from Carl Hancock with a link to that.

There’s also a juicy tidbit about a partially-executed settlement agreement that Automattic has yet to sign.

Also, after reading over Chris’ article, I realized I was wrong about Automattic being on the defensive in regards to the Thesis.com case. Chris was essentially forced to defend his trademark after he realized Thesis.com was being forwarded to ThemeShaper, and did so by initiating the UDRP.

Trademarks shackle you with a formal responsibility to protect your brand in the face of challenges.

A quote from Chris in the above linked article. Interesting way of looking at it.

Of course, obligatory “I am not a lawyer” disclaimer here. :smiley:

Well, now Automattic owns the Woo character mark and the Woo Bubble logo trademark. So it’s possible there could be repercussions in the future for new services/companies that use Woo in their name. I don’t think or know if the rights of trademark holders can be used retroactively to existing companies. Then again, these look like new registrations and not transfers.

http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4809:qaklly.2.6
http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4809:qaklly.2.7

Right, and that’s what I pointed out in both the Advanced WordPress group and the Advanced WooCommerce groups as well.
Trademarking WooCommerce? Rock on, great job, go for it, total agreement.
Instructing Ms. Shapiro to go register the three letters at the beginning of W-O-O? Whaaaaaaaaaaaaa?

Look, we all know that there are no coincidences with Trademark Law. So what I’d like to know is what’s the motivation behind Trademarking the three letters of W-O-O?

Seems as though his response didn’t exactly answer the question though.

If I owned a business called something like “WooAssist” I’d probably be exploring rebranding options sooner rather than later.

While I highly doubt Automattic would start suing people as a first resort, I wouldn’t be surprised if they started asking potentially infringing parties to change names in the foreseeable future. Or offer some sort of reasonable settlement (i.e. “place a disclaimer in your footer”).

Just because “woo” is a dictionary word, doesn’t mean sites that contain the word and are clearly related to WooCommerce (WooAssist, WooRockets, etc.) have nothing to worry about, even before the “woo” trademark was registered.

Facebook has successfully stopped websites from using the word “book” in their name (Facebook, Inc. v. Teachbook.com LLC) for example. And they don’t even have a trademark for the word “book” in the US.

When you visit one of these “Woo” websites, a moron in a hurry could plausibly get confused with it being an official WooCommerce resource.

So yeah, like I said in my first post in the thread: think of a name like Skyverge, not WooSomething.

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Jeff, my empty wallet and my questions just came back from an appointment with a Trademark attorney.

Apparently those are only “applications” at this point (according to what he could see)
While the image / logo would most definitely be approved, the lawyer opened my eyes a lot for the application of the letters ‘w-o-o’. He said there’s a very, Very, VERY high likelihood (but, not a guarantee) that none of the USPTO examiners would ever grant a Trademark for something as general and short as ‘woo’.

Those letters are much too general and not specific enough. WooCommerce? Absolutely! But something like woo is apparently much too general and has way too many similar pre-existing trademarks to actually be approved by a USPTO examiner.

What if they’re trying to trademark “WooSomething” (the word Woo plus a word), and not just the use of the word itself. I have no idea about Trademark Law, but something like that sounds logical to me. Similar to how Zynga does it with their “with Friends” trademark and product line.

I’m just speculating here, but it’s possible that they might be playing with other product ideas which can fall under the same “Woo” umbrella name for the future. If that’s the case then then I’d expect that they wouldn’t be too happy if people were doing their own WooSomething product too. Many people would surely get confused with whether it was an “official” Woo product or not.

I am curious as to what happens with domains that have WOO, NOT RELATED TO WOOCOMERCE/WORDPRESS world?

What about people who had WordPress before the TM was grandted?

same question for woo.

Would those be “grandfathered”?

By the way, YES AVOID WOO. What happens if WOOCOMERCE gets beaten by an alternative?

Just like all the WordPress based sites (including WPchat.com).

What if it gets forked or other competition gets more popular?

I think there’s some misunderstanding going on about trademark law. A huge part of trademark law has to do with how it’s used, not just the mere use of a trademarked word.

That means, for example, if I owned Woo.com and it was a dating site, I’d have absolutely nothing to worry about in regards to Automattic’s trademark application. Because dating doesn’t have much do to with WooCommerce.

By the way, it looks like Woo.com is actually owned by somebody named Mason Woo who uses it for his personal website. He also has nothing to worry about in his non-hypothetical situation.

If he started selling WooCommerce add-ons from that domain, that would be another issue.

That’s the totality of what I understand about it :slight_smile:

Kind of same if an apple farmer was selling apples on Lelandapples.com , you would have no worries about Apple (ipod/phone/etc…comany) suing you for the domain.

P.S. what is your favourite type of apples.

So what if someone {{HI}} was to file paperwork and register a business name of woo___ , take out a domain name of woo___.com, and build training videos (like TeamTreeHouse, Udemy, Lynda) that were specifically geared towards uplifting and helping folks who use Woo?

What I’m not quite understanding is how or why Automattic thinks they have the right to take control over the three letters of W-O-O?
Take over anything with the full “WooCommerce” in it? Sure! Control and take down anything with “WordPress” in it? Rock On!

But why attempt to go after W-O-O? It just seems like a stupid and socially “bad” thing to do. As much as we can all legally hypothesize, it’s just a dumb move by Automattic.

My wallet’s a bit lighter and my head a bit more educated.

Those links that @Jeffro linked up to expire, but if you run another search and pull up the same application, you’ll see 1B as a classification.

What this means is that there has been an application submitted. It does NOT imply that the Trademark has or will be issued.

In addition, my wallet lightening appointment with the Trademark Attorney, he did also point out a few other things. There’s a very, Very, VERY high likelihood that there’s not an examiner on the face of the planet that would actually approve of such a generic, short, broad, and over-reaching Trademark! …especially when there are hundreds of other trademarks already issued with the letters “W-O-O” in them.

Automattic can own WooCommerce. And I fully encourage them to defend both terms of “WooCommerce” and “WordPress”. But to think that they can start issuing trademarks for PARTS and pieces of previously trademarked items is just plain irresponsible. They know people are watching. And we all know of “Good” word____ related sites, good ____press related sites, great ___woo and woo____ sites as well. But let’s be honest and mention that some of those are crap spinoffs of people pirating WooCommerce’s Extensions.

While the general population of sites that build and uplift both WooCommerce and WordPress, have a variation of “word”, “woo”, or even “press” and then another word most of these sites are completely respectful of WordPress and WooCommerce. That’s pretty much the exact reason why everyone uses the designation of wp in a lot of sites! And in the same way, most everyone I know has used the shortened designator of ‘woo’ in their branding as well.

So why not have Automattic come out with a notification that says something like,
“Hey folks look, we know you love WooCommerce, maybe you make training videos (kinda like wp101), some of you build kick ass plugins for WooCommerce, and with noble intentions you used “W-O-O” in your business name & your url. In the same spirit of WordPress and the allowance of “W-P”, we’d like to ask all of you to please start using “W-C” (or something similar ~ whatever they pick) because we have filed and application to trademark the letters “W-O-O”. While we’re not too sure if the trademark application will be approved, we would like to ask folks to keep a separation between WooCommerce and any other site. Thanks for understanding.”

Applying for even the right or ability to forcefully take down any and all sites related to WooCommerce with the letters “W-O-O” in them just seems like the least likely and worst approach.

Hi @Brad - Have you read this: https://make.wordpress.org/plugins/2015/10/05/guidelines-for-plugins-that-include-company-andor-product-names-in-the-plugin-name/

We renamed our product from WooCommerce Grow to Grow with WooCommerce because of above.

I feel a bit sorry for WooAssist and WooReports etc… Going to be hard to rebuild brand in a few years if/when they grow to a size large enough to catch the eye of Automattic’s legal team.

Well, there’s this https://woogpl.com/woogpl-is-closing/?doing_wp_cron=1462805495.0918939113616943359375

Interesting that they framed it as a “closing” when they now have a service that does pretty much the exact same thing called GPL Kit.

This has actually come at a great time as we have recently launched GPL Kit as a means to provide a greater experience and provide a means to manage plugins and receive seamless updates from within your WordPress dashboard. – Something that has never been done before.

(emphasis mine)

Pretty sure this is exactly what WP Avengers did, before they let their domain expire.