The United States Patent and Trademark Office has rejected the WordPress Foundation’s applications for trademarks on the phrases “Managed WordPress” and “Hosted WordPress.” But WordPress isn’t walking away just yet.
The Trademark Office published the following notice for the “Hosted WordPress” trademark application:
“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
The USPTO also found that the WordPress Foundation’s description of goods and services is too vague and overly broad, especially regarding the phrase “website development software,” and asks them to clarify whether it is downloadable (Class 9) or offered as online services (Class 42). The USPTO suggested acceptable wording that they can adopt, as long as it accurately reflects what they provide.
The Trademark Office also issued the following response for the trademark application for Managed WordPress:
“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 Process Is Not Over
The WordPress Foundation is continuing its efforts to obtain trademarks for both “Managed WordPress” and “Hosted WordPress.” It has filed a Request for Reconsideration after Final Action for each trademark application, which asks the USPTO to reconsider its refusals based on amendments, arguments, or evidence. These requests are a final procedural step before an appeal, although they are not themselves appeals.
