Internal blog post reveals Automattic’s plan to enforce WordPress trademark through ‘nice and not-so-nice lawyers’

Matt Mullenweg, the co-founder of WordPress and CEO of Automattic, has been embroiled in a very public and legal battle with WP Engine in recent weeks over the use of WordPress as a trademark and the fees that Automattic believes WP Engine owes to the WordPress project – sparring that has resulted in WP Engine issuing legal suits of its own.

But Automattic’s position on it didn’t materialize overnight.

According to an internal blog post that a source shared with TechCrunch, Automattic had been hatching a plan to be much stricter about trademark enforcement on WordPress and its WooCommerce e-commerce platform since at least the beginning of the year. Different sources have confirmed the authenticity of the post.

The message, written by Automattic’s then-chief legal officer Paul Simineski in January 2024 on the company’s “P2” (a version of WordPress intended for internal communications), outlined a plan for how Automattic would address this strategy, through direct negotiations with companies and through legal action by “nice and not-so-nice attorneys and those responsible for trademark enforcement.” And Automattic could register more trademarks in the future.

“We will use a multi-pronged strategy that will involve some additional brand registrations … legal cease-and-desist letters and a formal paid licensing program for partners,” Simineski noted. (He left the company in April 2024.)

This is effectively what has been played.

In July, the WordPress Foundation filed trademark applications for both “managed WordPress” and “hosted WordPress,” which are pending status. And Automattic issued a cease and desist letter to WP Engine late last month. However, neither Automattic nor the WordPress Foundation has yet published any further guidance on fair use.

The WordPress Foundation, a non-profit organization, has owned the WordPress trademark since 2010, when Mullenweg founded Automattic as a commercial entity to be at the forefront of the open source framework.

Mullenweg’s reasoning for transferring this brand to the foundation was that even if there was a changing of the guard at Automattic, the brand would remain safe with the foundation and the open source project could live on.

Automattic holds the exclusive commercial license for WordPress, and its recent actions signal a major shift in its position as the gatekeeper.

In addition to giving context to Automattic’s recent legal actions, the internal blog post also underscores how tension has risen in the WordPress ecosystem, where the collaborative aspects of open source projects have had to balance with business interests.

Many contributors and developers have pointed out how this fight could negatively affect the WordPress community. This would be a change from previous form, as previously Automattic seemed to have a less adversarial relationship with prominent players in the ecosystem. He had even been an investor in WP Engine to spur more ecosystem activity. We learned and confirmed that it was purchased when Silverlake took a controlling stake in WP Engine in 2018.

The internal post, which refers only to Automattic, with no mention of WP Engine or other companies based on the WordPress framework, focuses primarily on the “WordPress” trademark, including its circular logo. Simineski emphasized that Automattic is the only company authorized to use them in its name and brand.

He also clarified Automattic’s role around WordPress.org. The initiative “does not involve creating or explaining any new rules” beyond its trademark policy, he writes.

Google is also featured in the post, primarily as a vehicle to enable misuse of the trademark.

“A quick perusal of the landing pages for Google Ads and hosting companies will turn up many ‘Managed WordPress’ or companies offering ‘WordPress Hosting,'” he wrote. “Okay? Can we suppress these things? The answers are…no and yes.”

Automattic, he wrote, would seek to work with Google to prevent it from amplifying companies and links that misused the brand. “Usually they can help, but we can’t rely on them 100%,” he added.

The post covers trademarks related to WooCommerce, Automattic’s Shopify competitor that it acquired in 2015. WooCommerce is 100% owned by Automattic, and Automattic follows the same enforcement strategy for it and its “Woo” brand . The app, the adviser wrote in the internal blog post, “will probably be easier and cleaner because it’s less of a community asset.” (WooCommerce is also open source.)

There are some murky areas in Automattic’s dispute with WP Engine and WordPress’ trademark application. One of them concerns the trademarks that were filed in July 2024. In a conversation with TechCrunch last month, Mullenweg claimed that he did not know who filed them on behalf of the Foundation or why. He said he doesn’t know the day-to-day running of the foundation and volunteers are the ones who run it.

The Foundation has three directors, including Mullenweg. The others are Mark Ghosh, who sold his website, a popular WordPress blog, to Mullenweg in 2014, and Chele Farley, a former Republican politician to whom Mullenweg loaned campaign money. Both of them have been almost invisible since the activities of the foundation or talking about the WordPress ecosystem.

For now, the focus of the dispute has been between Mullenweg and WP Engine. “If there are trademark violations, of course, we have to enforce our trademark. I don’t know of any that are as egregious or as harmful as WP Engine,” Mullenweg told TechCrunch in late September.

We reached out to Automattic for comment on this story, and Mullenweg responded directly. He did not give a direct answer to the question of whether the dispute with WP Engine was a one-off or set a precedent for further actions.

“We do trademark enforcement all the time! It’s part of brand protection,” he wrote. “It’s usually pretty minor, and a UDRP or email takes care of that. However, WP Engine’s misuse of the WordPress and WooCommerce trademarks was so intrinsic to their business that it required a further agreement substantial, which I honestly thought would happen (makes sense, from a business perspective) before (September’s WordPress) WordCamp conference, which is why we allowed them to sponsor (the US event).

He added that the firm was “very much upgrading our legal team right now.”