WordPress Trademark Applications Refused By USPTO

The USPTO has refused several trademark applications for the name WordPress, citing insufficient distinctiveness.

The WordPress Foundation has received final refusals on its trademark applications for the words “Managed WordPress” and “Hosted WordPress” with the United States Patent and Trademark Office (USPTO). WordPress is clearly seeking a re-evaluation and even appeals despite this.

Final Office Action Details

The USPTO’s final Office action stated:

“A final Office action refusing registration has been sent (issued) because the applicant neither satisfied nor overcame all requirements and/or refusals previously raised….

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Disclaimer Requirement

• Identification of Goods and Services

• Applicant Domicile Requirement

DISCLAIMER REQUIREMENT 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….

Applicant may respond 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.”

Screenshot of Document Close-Up

Key issues WordPress must address include:

• Disclaimer Requirement
• Identification of Goods and Services
• Applicant Domicile Requirement

Concerns Over Description of Goods and Services

The description provided by the WordPress Foundation of the goods and services, particularly the statement that we develop website software, was deemed vague and overly broad by the USPTO. The office sought clarification regarding whether the software can be downloaded (Class 9) or offered as an online service (Class 42). The USPTO provided some recommended wording, which can be adapted by WordPress to suit its services.

Response to Trademark Refusal

A similar requirement of a disclaimer was given on the application of the Managed WordPress, and the USPTO made it clear that a similar disclaimer requirement was issued for the “Managed WordPress” application, with the USPTO emphasizing that:

“DISCLAIMER REQUIREMENT
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…. Applicant may respond 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.”

The trademark case is still ongoing. The WordPress Foundation has petitioned both trademarks for Reconsideration following Final Action, in which it asks the USPTO to reconsider its refusals on behalf of further arguments, amendments, or evidence. Although these requests are not appeals, they represent the final stage in the procedures before potential appeals.

Final Perspective

Despite descriptive disclaimers and clarification needs, WordPress has not abandoned the registration of trademarks for its most significant branded words. This process will be critical in the growth of the brand and intellectual property strategy of WordPress, as followed by those tracking the IP strategy.