Have you found a website hosted by Automattic on WordPress.com that you believe is infringing on your trademark? Before you report it, please ask yourself these 3 questions:
- Is the website using your trademark to review or criticize your products or service? If so, this is not trademark infringement. Since we will promptly reject your complaint, please don’t submit your complaint.
- Have you contacted the site owner directly to resolve the issue? Check if the blog has a contact form or leave a comment on one of their posts requesting the site owner contact you.
- Is the site really hosted at WordPress.com? Automattic has no control over blogs that say “Powered by WordPress.org”. Those blogs use the open source WordPress software and are not hosted by us. Please contact the appropriate web host with your complaint. We only host blogs that have “wordpress.com” in their URL or that say “powered by WordPress.com” on the site.
Filing your complaint
If you weren’t able to resolve the issue directly with the blogger, we recommend using our Trademark Infringement form to submit your complaint, to ensure you include all the information we’ll need to investigate: http://automattic.com/trademark-policy/
Specifically, we’ll need the following information:
- your name and contact information
- your company name, and website address, if applicable
- identification of your trademark being infringed, including official trademark registration details and information
- the URL of the WordPress.com site being reported and the exact content/aspect of that site
- a clear and detailed explanation of how the above content is in violation of your trademark, thus creating consumer confusion
- a statement that you have a good faith belief that use of the trademark in the manner complained of is an infringement of the rights granted under United States and/or foreign trademark law
- your physical or electronic signature as the owner or person authorized to act on behalf of the owner of the trademark that is allegedly infringed
- your consent to forward the trademark complaint to the site’s owner, including your contact information
With all this information, our team will review your complaint, and will take action as appropriate if we consider the use of your trademark to be infringing.
When we evaluate your complaint, we weigh the following factors:
- Likelihood of confusion. This is the central focus of determining if the use of a mark is infringing.
- Strength of the mark. There are five categories of trademarks:
- Fanciful – a made up mark that doesn’t correlate with the product/service, e.g. Kodak, Haagen-Dazs, Exxon. These marks have less inherent meaning, and can be used to create a strong correlation between the mark and product/service.
- Arbitrary – a mark with a common meaning, unrelated to the product/service, e.g. Apple (for computers), Amazon (online book sales). These marks are strong because they are inherently distinctive.
- Suggestive – a mark that hints at the product/service, but which still requires an act of imagination, or power of suggestion, e.g. Microsoft (suggesting software for microcomputers), Coppertone (suggesting your copper tone from using sun tan lotion). These marks can be strong, but their strength relies on the suggestiveness, which may be disputed and deemed a descriptive trademark instead.
- Descriptive – a mark that describes the product/service, e.g. Holiday Inn (for travel accommodations), World Book (for encyclopedias). These marks don’t receive any trademark protection, unless they’ve been used in commerce and have built up a secondary meaning. “Secondary meaning” occurs when consumers identify the goods or services on which the descriptive term appears with a single source. In other words, if consumers know that HOLIDAY INN hotels are all affiliated with a single source, then the mark has secondary meaning and receives trademark protection.
- Generic – a mark that describes the product/service, e.g. Shredded Wheat (for a cereal), Laptop (for a portable computer). These marks don’t receive trademark production.
- Proximity of the products/services. Are the purchasers of both in the same group of people? Does the product/service have a similar use and function?
- Similarity of the marks. Do they sound the same? Appear the same? Mean the same? This can increase the likelihood of confusion.
- Evidence of actual confusion. Is there any evidence customers have been confused?
- Similarity of marketing channels used. Would product/services using the mark be found advertising in the same channels? This can increase the likelihood of confusion.
- Type of product/the degree of caution exercised by the typical purchaser. For cheaper goods, there might be more likelihood of infringement since low cost usually means low degree of caution before purchase. However, if the product is a military cargo aircraft that costs millions, and the only customer is the U.S. military, there is a weaker case for infringement.
- Intent behind selecting or using the mark. Does the use of the mark suggest or imply an affiliation or sponsorship? Or is it just being used to refer to the trademark? For example, fan blogs aren’t infringement because there’s probably no confusion, and they’re just using the name because they have to refer to what they’re fans of, not as an indication of affiliation or sponsorship.
- Likelihood of expansion in the market of the goods. Is there a strong possibility that either party may expand their business to compete with the other? This can increase the probability that the current use of the mark is infringing.
- Did they use exactmark.wordpress.com when choosing a site address? If so, that tips the scales a bit in favor of the trademark owner because one reason you would use that website address is to make visitors think you are that entity.
After examination, most trademark complaints fall into the follow categories:
- Not trademark infringement. Most often the trademark complaints we receive are sites that are using the trademark to review or criticize a company’s products or services. We will let you know we won’t be suspending the site, and we will pass along your complaint to the site owner for their review.
- Borderline complaint. If we aren’t legally required to act on your complaint under the law of the U.S., we will let you know, and will pass along your complaint to the site owner with advice to contact you directly. As the site owner is the party legally responsible for the content, we will encourage you to resolve it directly with the site’s owner.
- Valid trademark infringement complaint. Unless the infringement is pervasive enough to warrant an immediate suspension, we will pass along your complaint to the site owner, along with a list of changes they’ll need to make over the next week to resolve your complaint. If the changes aren’t made, we will suspend the site.
- Not infringement, but another violation. If the site you’ve reported is violating our Terms of Service, we’ll immediately suspend it and thank-you for your assistance.
- Automattic’s Trademark Policy – Including trademark infringement complaint submission form.
- Automattic’s Transparency Report – Intellectual Property – Information about trademarks demands received by Automattic.
- Trademark Electronic Search System (TESS) – Search Trademarks registered in the U.S.A.
- Trademark Information from Chilling Effects – Includes a FAQ section about Trademarks.