A Trademark For Your WordPress Business?

Published

March 6, 2013

5 Comments

I’ve only trademarked one other thing for another business and that was because it was incredibly obvious that we should – it was a term that was previously trademarked and part of a domain URL that we purchased for 5-figures.

We lucked out in that the previous owner of the trademark didn’t renew their registration and it had expired literally months before we started looking into it. Like I said, we totally lucked into it.

But I’ve never trademarked any of the WordPress-centric businesses that I’ve run and even here at WP Daily I’m hesitant to consider it. I’m not sure what it is but I find it much harder to find that desire to walk through the paperwork, filing, and meeting with my trademark attorney for it.

Have you ever trademarked your particular WordPress-related business? What are your thoughts around it? For those that are interested, I’ve included a neat infographic that details some of the major elements of trademarking and why one should consider it:

There are 5 comments

March 6, 2013 #

Cliff Seal

I’m wading through the process, currently. It’s expensive, tedious, and time-consuming, but I found it to be worth the trouble in my case.
March 6, 2013 #

Dan

That’s good, useful stuff. LegalZoom offers these services; any idea if they’re good?

FYI, anyone can use ™ (unregistered trademark), ℠ (a service mark) and © (copyright) without any fees or legal stuff. It’s the US Federal trademark — ® — John is talking about.

When it comes to a brand logo, the person who created it holds copyright over it. This should be signed away (or is liable to be presumed lost) when it becomes a company trademark or service mark. You can still copyright a logo image as there is some legal basis for treating it as an original work of art. This is a lot cheaper and easier than getting a federal trademark, but I don;t know if it would offer any real protection in a dispute.State-level trade names, trade and service marks are also cheap and easy to register.

My non-expert legal opinion is this all gives you some protection rather than none in a system that is largely based on historical use and precedence. Simply using a trade name and mark ahead of anyone else or in a totally different context gives you a common law right to it. The problem is, IIRC, if someone else infringes on or dilutes your brand. If you don’t take legal steps against them and defend your brand, you can lose it. So in that case a federal trademark is your best friend, but I suspect that lots of money is likely more important and what is most likely to prevail in a pitched legal battle.

The best protection is probably to select a trade name and mark you know are truly original. You can do the search yourself, but as John notes, it’s better to have an expert do it. And if you go that far, you may as well go all the way. It’s a matter of how much is the brand worth to you, but it’s also a good learning process for anyone to go through if they want to be serious and professional about their business.

I also recommend getting the latest edition of a book like Internet Law: A Field Guide (highly expensive but often very cheap if used) and reading at least the chapter summaries. There is a lot on intellectual property and much else that’s good to keep up on. Regulations are growing; your Terms of Service and Privacy Policy are regulated by the FTC and considered contractual agreements with anyone visiting your site. Most states now have statutes requiring disclosure of any events where personal ID information was potentially exposed to unauthorized people. You could get sued in state or federal courts for non-compliance in any of these areas.
March 6, 2013 #

Dan

Came across this some time ago, a good FYI about making sure you clarify not only the original designer’s rights but also the creator of the font/s they use in a logo:

“… to use any part of a scalable typeface in a logo design that we want to resell onto a client, we must first read the user agreement and / or check with foundry to confirm whether we may use the typeface in the logo design.”

http://justcreative.com/2009/01/14/logo-design-copyright-laws/
March 6, 2013 #

Zachary Russell

I actually am going through the process of going through a WordPress related trademark application now. I’m about 3 months into the process. I decided to do this after I purchased the domain wordpressebooks.com, and later realized that I couldn’t use it for a site. To be clear the letters WP are NOT trademarked by WordPress (it’ most likely isn’t a trademark-able term), and can be used in your trademark. I would always recommend speaking with an IP Attorney first though.
March 6, 2013 #

Vid Luther

We have a trademark for ZippyKid, along with the Logo. One thing to note, during the application we had our name and description as ZippyKid WordPress hosting. We were contacted by Automattic legal sometime in November, and asked to remove the word “wordpress” from the description. It was fairly trivial, and resolved over an email and a few beers :).

In terms of the actual process of getting a trademark, I was fortunate to have a friend who specializes in IP law, who handled it all for me, for a very low fee. All I had to do was write a check. If you know a lawyer like that, buy him a beer or 8. It’s worth it.

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