WordPress war latest: Ploy to trademark Hosted WordPress, Managed WordPress derailed

Objection from open source community heralded as 'great victory for the ecosystem'

Updated The WordPress Foundation's effort to trademark the terms HOSTED WORDPRESS and MANAGED WORDPRESS has been thwarted, for now, following a petition from a dissenting member of the open source WordPress community.

The foundation has a mission to democratize online publishing through software released under the GPL. As its name implies, it is especially keen on the open source WordPress CMS.

The org's HOSTED WORDPRESS and MANAGED WORDPRESS trademark applications are currently of interest due to licensing demands made by WordPress hosting biz Automattic, and its CEO Matthew Mullenweg, who also steers the WordPress Foundation and is the co-creator of WordPress.

After a failed bid to convince competing hosting firm WP Engine to pay a trademark licence fee for the use of the word "WordPress," Mullenweg last September launched a fierce campaign against the rival firm. A lawsuit followed and the matter remains the subject of ongoing legal action, plus further feuding.

The fracas so unnerved users of the software – which powers hundreds of millions of websites, great and small – that some have called for a change in WordPress leadership or for the project to be forked, an idea Mullenweg encouraged – but only because he seems to think any such effort is doomed to fail.

The WordPress Foundation has held trademark for the term "WORDPRESS" for years. In July, 2024, several months prior to the eruption of hostilities and presumably amid negotiations with WP Engine, the foundation sought to expand its trademark portfolio by adding HOSTED and MANAGED variants.

But in light of the dispute with WP Engine, the owner of unprotected.org, a site that has been critical of Mullenweg's recent actions, petitioned the USPTO to disallow the requested trademark registrations.

This month, the US Patent and Trademark Office responded by issuing disclaimer requirements for the two terms the foundation applied to register because an examining attorney determined they don't qualify as trademarks.

"Applicant must disclaim the wording 'MANAGED' because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant's goods and services," the USPTO Office Action explains, echoing a similar directive applied to HOSTED in connection with WORDPRESS.

A disclaimer in this context, the USPTO explains, is "a written statement that indicates you don't have exclusive rights to particular wording or a design in your trademark," placed alongside a trademark assertion.

Other companies offering managed or hosted WordPress as a service may therefore rest a bit easier, at least for the time being.

"This represents a great victory for the WordPress ecosystem, and we will continue to fight until there is accountability and a change in leadership," the owner of unprotected.org declared.

Asked to comment, the website operator told The Register: "The WordPress ecosystem is ready for new leadership, and Joost de Valk, the developer of Yoast SEO, is the first who comes to mind."

Automattic, which has a complicated trademark licensing arrangement with the WordPress Foundation, notes that the USPTO determination isn't final. "These are not denials," a company spokesperson said. "They are typical requests, which we will respond to." ®

Updated to add on February 18

Automattic has been in touch to confirm our reporting that this is not a denial. In a statement, a spinner for the software body said, “The WordPress Foundation trademark applications for ‘Managed WordPress’ and ‘Hosted WordPress’ remain on track.

"The trademark office simply clarified that the foundation is not getting exclusive rights to the words ‘managed’ and ‘hosting’ by themselves. This type of office action is very common and not unexpected, and the applications remain under consideration at the USPTO.”