Automattic Sends Cease-and-Desist to WP Engine Over WordPress Trademark Dispute

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Tensions within the WordPress community are escalating, with a brewing legal conflict between Automattic and WP Engine over trademark usage. Just days after WP Engine issued a cease-and-desist notice to Automattic’s CEO, Matt Mullenweg, Automattic has fired back with its own legal warning, accusing WP Engine of infringing on trademarks associated with WordPress and WooCommerce.

The Spark of the Dispute

The clash began when Mullenweg, who co-founded WordPress and serves as the CEO of Automattic, publicly criticized WP Engine last week. In a fiery statement, Mullenweg called the hosting company a “cancer to WordPress,” accusing it of profiteering off the open-source platform while contributing very little to the broader community. His comments did not go unnoticed, leading WP Engine to respond with a cease-and-desist letter, demanding that Mullenweg refrain from making further disparaging remarks about the company.

However, rather than backing down, Automattic has now issued its own cease-and-desist letter, accusing WP Engine of building a massive business — reportedly valued at over $400 million in revenue — by unlawfully using WordPress trademarks.

Trademark Infringement Allegations

Automattic’s cease-and-desist letter, dated Monday, outlines several serious claims against WP Engine, alleging that the company’s use of WordPress and WooCommerce trademarks is unauthorized and misleading to consumers. Automattic asserts that it holds the exclusive commercial rights to these trademarks through the WordPress Foundation, the non-profit that oversees the WordPress project.

According to the letter, WP Engine’s use of these trademarks has led to confusion among consumers, with some users believing that WP Engine is officially affiliated with WordPress. Automattic claims that this confusion has damaged the reputation and goodwill of its trademarks, leading to unjust enrichment for WP Engine.

“Your unauthorized use of our Client’s trademarks infringes on their rights and dilutes their famous and well-known marks,” the letter reads. “Negative reviews and comments regarding WP Engine and its offerings are imputed to our Client, thereby tarnishing our Client’s brands.”

Automattic is now demanding compensation for the profits WP Engine has earned through this alleged misuse of trademarks. The letter warns that if WP Engine does not resolve the matter amicably, Automattic will pursue a civil injunction to enforce its trademark rights.

WP Engine Defends Its Position

In response to Automattic’s claims, WP Engine has defended its right to use the WordPress trademark under fair use laws, pushing back against what it calls a “profound misunderstanding” of trademark law on Automattic’s part.

WP Engine’s own cease-and-desist letter, issued earlier this week, suggests that Mullenweg has attempted to strong-arm the company into paying tens of millions of dollars annually for a license to use the WordPress trademark. When WP Engine refused, the company alleges that Mullenweg launched a smear campaign, making false claims to damage WP Engine’s reputation with its employees, customers, and the broader public.

The letter does not shy away from criticizing Mullenweg personally, stating that his demands were “outrageous” and accusing him of trying to unfairly extract money from WP Engine under the guise of trademark enforcement.

The Community Impact and Legal Fallout

While this dispute plays out at the executive level, the implications for the broader WordPress community could be significant. Many in the WordPress ecosystem, including those who offer specialized hosting services, are watching closely as the battle could set a precedent for how WordPress-related businesses are able to operate and brand themselves moving forward.

The WordPress Foundation has already responded to the dispute by updating its Trademark Policy page to specifically call out WP Engine. The updated language suggests that WP Engine has misled users by implying an official connection to WordPress and criticizes the company for not contributing to the Foundation, despite making billions in revenue based on WordPress’s open-source software.

“The abbreviation ‘WP’ is not covered by the WordPress trademarks, but please don’t use it in a way that confuses people,” the policy now reads. “Many people think WP Engine is ‘WordPress Engine’ and officially associated with WordPress, which it’s not. They have never once even donated to the WordPress Foundation.”

Looking Ahead

With Automattic demanding compensation and threatening legal action, and WP Engine defending its right to use the WordPress trademark, this conflict seems poised to escalate further. Whether the two companies can reach an agreement or if the matter will be settled in court remains to be seen, but the outcome could reshape the relationship between WordPress and the many businesses that rely on its open-source platform.

For now, the WordPress community is left to wonder how this dispute will affect not only the future of these two companies but also the broader ecosystem that has grown around the platform over the years. As more details emerge, it’s clear that this is not just a private dispute but one with industry-wide consequences.