Automattic Going After Sites with Woo in Their Domain Name

Through a discussion in our comments section on our post about the GPL we recently got to know that Automattic is actively asking businesses having the word ‘woo’ in their domain name to change the domain name. This will no doubt affect GPL plugin resellers as many do have woo in their domain name. The first known site to bow to the pressure is WooGPL. The owner of that site, Billy Ablett, has in fact announced the closure of WooGPL and its reopening as GPLKit.

A quick search for Woo as a trademark brings up two entries in the JUSTIA website which is where many trademarks can be looked up together with their status. With regards to the Woo illustration (“Woo” in a speech bubble) the trademarking process seems to have been abandoned last year. The character mark typeset is currently published for opposition although a later updated seems to indicate that it has been withdrawn from issue. I’m not an expert in trademarks but it seems that Automattic has been having trouble in trademarking ‘woo’. Perhaps one of our lawyer friends can shed further light in the comment section.

Apart from the GPL plugin resellers there are a number of other WooCommerce-related websites providing services and WooCommerce add-ons that might be affected by this action. Time will tell whether Automattic is only interested in protecting the sales of WooCommerce addons from the GPL plugin resellers or whether they will really go after anyone running a WordPress business from a domain containing the word ‘Woo’.

Interestingly enough there are also well-known sites within the web industry at large which use ‘Woo’ in their name. One example is Woobox, which offers Sweepstakes, Coupons, and more for Facebook Pages & Twitter. This leads me to think that Automattic will have a hard time trademarking Woo and enforcing a ban on using it within domains.

About Jean Galea

Jean Galea is a WordPress developer, podcaster and entrepreneur. He is the founder of WP Mayor and WP RSS Aggregator. His personal blog can be found at jeangalea.com. Check out his podcast focused on doing business with WordPress over at Mastermind.fm.

20 Responses

  1. chuchundra
    chuchundra May 9, 2016 at 07:03 | | Reply

    More trademark nonsense from Automattic.

  2. strangerstudios
    strangerstudios May 9, 2016 at 08:33 | | Reply

    My guess is yes, “they will really go after anyone running a WordPress business from a domain containing the word ‘Woo’” That has been their MO with WordPress vs WP, and the point is to protect their trademark.

  3. Rodolfo Melogli
    Rodolfo Melogli May 9, 2016 at 09:28 | | Reply

    Another reason why your Brand/Website name should be unique, memorable and independent from other brand names

  4. HarleyR
    HarleyR May 9, 2016 at 11:35 | | Reply

    I bet the guy that owns the domain Woo.com is shaking in his boots. NOT!

  5. Ronald
    Ronald May 9, 2016 at 14:59 | | Reply

    Woohoo!

    1. brianhogg
      brianhogg May 10, 2016 at 07:03 | | Reply

      *comment removed due to trademark violations*

  6. Anthony Tilke
    Anthony Tilke May 9, 2016 at 20:23 | | Reply

    What about someone whose name is Woo and runs a WP biz? Does a family name trump a TM, or is it the other way around? Outside the US, it will likely be the family name. But, these days a business in the US probably has more rights to a name than someone who was born with it.

  7. Eric Greenspan
    Eric Greenspan May 10, 2016 at 06:49 | | Reply

    Dear Microsoft
    You should make Automattic stop using “Word” in WordPress. Time to give this tyrant a taste of his own medicine.

  8. George Stephanis
    George Stephanis May 10, 2016 at 06:59 | | Reply

    Here’s the Trademark Guidelines for Woo Trademarks:

    https://www.woothemes.com/style-guide/#sg-trademarks

    Regarding domain names, the guidelines state that:

    You can use a Woo Mark without permission if you want to:

    Use “Woo” in a domain name, provided that it is not used in way that suggests an affiliation to Automattic (such as in as a prefix or in a top-level domain).

    E.g., TechWoo.com is ok, but Club.Woo is not.

    You need our permission before using a Woo Mark if you want to:

    Use the marks “WooThemes” or “WooCommerce” in a domain name in any way, or use “Woo” as a TLD or as a prefix.

    E.g., BestWooThemes.com, WooCommerceConsulting.com, or TheWooShop.com.

  9. Jason McCullough
    Jason McCullough May 10, 2016 at 08:02 | | Reply

    What about someone who runs a “how-to” blog? Or a fan site for WooCommerce? Sort of like MacRumors or 9to5Mac?

    1. Chuck Mac
      Chuck Mac May 10, 2016 at 08:27 | | Reply

      Not Woo… but you can take a look at Ikea vs ikeafans.com

      http://pctlg.com/ikea-wins-decision-fan-site-uses-marks/

  10. Rusty Fox
    Rusty Fox May 10, 2016 at 08:02 | | Reply

    Australian actor Greg Pead, who changed his name by deed poll in 1980 to ‘Yahoo Serious’, tried in August 2000 to sue Yahoo! the search engine for trademar breach in the Australian courts.

    The case was dismissed because Serious could not prove that he sells products or services under the name “Yahoo” and therefore could not prove that he suffered harm or confusion due to the search engine.

    Yahoo Serious instigated the law suit in August 2000 because in August 2000 Yahoo! registered Yahoo! as a trade mark for use, amongst other things, in “Entertainment services including television programmes”. Yahoo Serious, whose profession was as an actor, producer and director of ove and television programs was attempting to protect his name against Yahoo! trying to stop him from using it.

    Even if it’s your name, and you use it widely and very publicly, it is no guarantee, at least under Australian law, that somebody else won’t be entitled to use it.

    How does this case apply to Woo? Well, being first seems to mean little. If you are not in the same business, or if the use of the name is not ‘confusingly similar’ then it would appear there is no breach of trademark.

  11. kimstuart12345
    kimstuart12345 May 10, 2016 at 10:17 | | Reply

    Sounds an awful lot like harassment if they don’t actually have a mark registered. Especially if they’ve abandoned their mark registration attempt.

  12. WPezDeveloper
    WPezDeveloper May 10, 2016 at 14:00 | | Reply

    Someone should start a parody site called PooCommerce. lol

    Automattic should hire a marketing agency. If the “Woo brand” is so weak that there is confusion about who and what it, what it does or does not represent, etc. then perhaps that weakness would be better served being fixed by an able agency and NOT by an over-priced legal team?

    Or maybe Automattic is just showing off for Google?

  13. WPezDeveloper
    WPezDeveloper May 10, 2016 at 14:01 | | Reply

    p.s. As of 5 minutes ago the domain WooWordPress.com was available. Could be fun. lol

  14. Eric
    Eric May 10, 2016 at 16:03 | | Reply

    This is more of what they did to Chris Pearson of DIY Themes. We all support this group and this is just awful behaviour to a community that is so supportive of one another.

  15. Joe
    Joe May 11, 2016 at 19:43 | | Reply

    The word “WooThemes” was trademark quite some time ago. Then Automattic bought WooThemes, and many months later they abandoned the WooThemes trademark and filed a new trademark for “Woo” as it relates to various categories of software and apparel. Problem is, there is what is known as “prior use” by many entities in the software world. So Automattic does not have any, ahem, automatic claim to the mark based on first use. There are prior uses by people who could very well challenge the “Woo” mark and win. But, Automattic might try to intimidate people with money – meaning they have a lot to waste on lawyers while other people do not – typical approach, drag people into court and run them ragged until funds run out and then win.

    If Automattic is smart they won’t bite the hand that feeds, and instead they’ll simply use the “Woo” mark to go after all the low lifes that buy up WooThemes plugins and resell them with no actual effort on their own part. I can totally understand how that would piss off Automattic, and they really should go after those shops and shut ’em down. As for those other 3rd parties that build their own code, provide real support, and often send people to WooThemes when it WooThemes has a solution someone needs, they should be left alone! They building the WooCommerce marketspace and this is a very good thing!

  16. Blake
    Blake May 13, 2016 at 08:49 | | Reply

    Why is wordpress.com allowed to use “WordPress” in their domain when it is a clear violation of the foundation’s policies?

  17. George Stephanis
    George Stephanis May 15, 2016 at 11:09 | | Reply

    Howdy. Blake!

    WordPress.com is allowed to have WordPress in the domain, because Automattic (parent company of WordPress.com) had initially handled all the relevant trademark registrations and paperwork, and then gave the trademarks to the Foundation back in … 2010? Anyway. In exchange for just giving away ownership of the trademarks, Automattic was given permission to continue using them in areas that it had previously.

    If Automattic wanted to get a new domain with WordPress in it, it would first have to get permission from the WordPress Foundation (which is the current owner of the relevant trademarks)

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