USPTO Issues Disclaimer to Matt Mullenweg on Trademarks
Unprotected.org, Updated: Feb 2025
We have successfully made a petition to the U.S. Patent and Trademark Office (USPTO) against both trademark applications for "Managed WordPress" and "Hosted WordPress". Here is what the USPTO examining attorney said,
DISCLAIMER REQUIREMENT [1]
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. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
This wording appears in the identification of goods and services. Thus, the wording merely describes applicant’s goods and services because applicant provides software for managing content on a website.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “MANAGED” apart from the mark as shown.
DISCLAIMER REQUIREMENT [2]
Applicant must disclaim the wording “HOSTED” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and services. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
This wording appears in the identification of goods and services. Thus, the wording merely describes applicant’s goods and services because applicant provides servers and software for web hosting.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “HOSTED” apart from the mark as shown.
IDENTIFICATION OF GOODS AND SERVICES [1, 2]
Applicant must clarify certain wording in the identification of goods and services in International Class 9 because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the nature of the goods and services.
The identification for "website development software" in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d).
The wording "downloadable website development software and plug-in software" in Class 9 is indefinite because the nature of the goods is unclear. While "downloadable website development software" is a definite and acceptable good in Class 9, the wording "and plug-in software" requires further clarification as to the nature of the goods.
Applicant may substitute the following wording, if accurate (suggestions in bold):
Downloadable website development software
This represents a great victory for the WordPress ecosystem, and we will continue to fight until there is accountability and a change in leadership.
Links:
- USPTO Office Action About Application #98646183
- USPTO Office Action About Application #98646185
- USPTO Trademark Application #98646183
- USPTO Trademark Application #98646185
Articles:
- "Ploy to trademark 'Hosted' WordPress, 'Managed' WordPress derailed" - Thomas Claburn, The Register
- "Automattic says it wanted 8% cut of WP Engine revenue" - Thomas Claburn, The Register
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