Trademark Enforcement

Many of you have received an email from us regarding plugin closures for trademark violations. These emails were absolutely not made in error.

Due to recent demands by trademark owners, we will now be more strictly enforcing trademark abuse when it comes to plugins. While it should be sufficient to tell you “Don’t abuse someone’s trademarks.” the reality is that those things are complex and confusing.

We will have altered our system to prevent the submission of those plugins that violate trademarks. This is not something we do lightly, however we have been compelled to close a great many plugins recently. It’s more efficient to prevent potential abuse than to clean it up after the fact.

How Trademarks Apply

Trademarks apply to the following aspects of your plugin:

  • The Slug – Your plugin slug may not begin with someone else’s trademarked (or commonly recognized) term
  • The URL – You may not use someone’s trademark in your domain name
  • The Display Name – You may not begin the display name with someone else’s trademarked (or commonly recognized) term and, in may cases, you may not use the name AT ALL.
  • All Images – You may not use trademarked logos/images in your banner, screenshots, logos, etc

We do our best to take care of the first one – the slug – when you submit your plugin. Plugins approved pre 2015 with trademarks in the URL are ‘grandfathered’ in and permitted to remain. All plugins approved after 2015 are required to meet this restriction. All plugins, no matter when they were approved, must comply with trademark usage in display names and images.

We also keep our eye on similar names. There’s a concept known as brand confusion, so naming your company or plugin similar to another company (like Facerange, say) you can still be legally compelled to change the name. This is why, for example, you cannot use ‘pagespeed’ in your URL for a site optimization tool, even though Google’s only trademark is on ‘page speed’ (two words). The name is similar enough that we have been required to close plugins.

Additional Restrictions

In addition to the above, many brands have an above-and-beyond requirement. You must also avoid representing the brand in a way that:

  • Makes the brand the most distinctive or prominent feature
  • Implies partnership, sponsorship or endorsement
  • Puts the brand in a negative context as part of a script or storyline

Also many have statements like this when regarding applications specifically:

  • Don’t modify, abbreviate or translate the brand name to a different language or by using non-English characters, or use any logos to replace it.
  • Don’t combine shortened versions of the brand with your own brand.
  • Don’t use our ‘wordmark’

This is where it all gets crazy weird. But an example would be the brand Facerange. With the above restrictions, naming your plugin (which is an application) “WordRange” or “FacePress” and having it be a plugin to work with Facerange would be a violation of their terms.

It all comes back to making it painfully clear that you and your work have NO relationship to their products. Some allow you to use their product name wherever you want, and some won’t permit it at all. When in doubt, the best course of action is to assume you don’t have permission and not to use it.

Quick FAQ

Can I use ‘for BRAND’ in my plugin display name?

Sometimes. It depends on the brand. We don’t have a complete list, which makes this very complex. It’s important to pay attention to the rules for brand usage and application uses. Some brands have separate rules. In general, if they’ve trademarked their wordmark then no, you cannot use it for an application. And yes, a plugin is an application.

What’s a wordmark?

That’s the name. So Facerange’s wordmark would be “FACERANGE.”

I have permission from PayBuddy to use their wordmark/logo, is that okay?

We’d rather you not use it on your PLUGIN pages. It’s impossible for us to verify, and many agreements with brand owners are rescinded. Brand your webpage all you want, but leave their official logos and word marks off your plugin.

A brand contacted me directly and asked me to change things. Is that a real demand?

More than likely they are. They’ll usually include links and directions and contact information. Use that and comply with them, because if you don’t, they’ll come to us.

What about existing violations?

We’re handling them in batches. You don’t need to report them to us.

But if you haven’t closed them, why are you closing my plugin?

Because there are thousands of plugins and we do them in small batches for sanity. Also brand owners sometimes give us a priority list, and you just happened to be higher than someone else.

Don’t they get an SEO boost?

No. Write a better readme that uses the brands properly and contextually, and you’ll be fine.

Someone’s infringing on MY brand, what do I do?

Contact them first. Ask them to stop (nicely please). Link them to your brand documentation. If they ignore you, email us the same. We’ll close the plugin until they fix it.

We recommend you BE CLEAR about what you require. Remember, most people aren’t familiar with trademark laws and their intricacies, so it’s very easy for them to get confused.

#guidelines, #trademarks

Reminder: Respecting Trademarks Includes Icons and Banners

This is a reminder that one of our guidelines is respecting trademarks and brands.

tl;dr

Using someone else’s trademarked logo in your plugin logo or banner is a trademark violation, and they have the right to have us remove your plugin at any time.

Explanation

Normally trademark situations come up when you submit a plugin like Facerange Messenger, but you don’t happen to work for Facerange. We change your slug from facerange-messenger to messenger-for-facerange (or something to that effect) and ask you to rename the plugin to “Messenger for Facerange”. Another common instance is when we have to explain bobo-facerange-messenger.com is a violation of their trademark use, and you need to rename your domain.

As of late, companies have begun enforcing logo usage as well. Originally they were just picky about the icon or banner being only their logo, but now they’ve moved on to the use at all. What this means to you is simple: Don’t use someone else’s logo in your plugin’s icon or banner. Period.

If you don’t have the legal rights to use it, don’t. If you’re not sure if you do, assume you don’t. If you lose the legal right (like no longer being a part of PayFriend’s trusted developer program), you must immediately remove their logo from your plugin’s public facing pages.

FAQ

What happens if a company complains?

You will receive a warning via email that a complaint has been filed and you are to correct the icon and/or banner immediately.

How long do I have to comply?

0-days. Technically you’re already a violation. They don’t have to let us give you a chance to come correct, so we would appreciate it being done within 48 hours.

Do I have to push a new version of my code to do this?

Nope. Just fix the images in your assets folder.

Addendum by Otto: This includes screenshots. If you have somebody else’s logos in your plugin itself, or displayed on your service, then you might want to consider getting those removed as well.

What do I do if a company asks me to change my icon/banner?

Change it. Seriously, it’s not worth it. Make your own unique and distinct logo for your plugin. It’ll make you more memorable in the long run.

Do I have to change my display name as well?

Yes, you do. Remember: Don’t start your display name with someone else’s trademark/copyright/commonly known name. If it’s not your name, it’s not a good idea.

Isn’t this contrary to the GPL and open source?

No. Licences like GPLv2 are separate entities, and in fact the GNU supports the use of copyright in code. As for open source, it’s not above the law. Check out FOSSMarks for more information and as always, contact a lawyer with your legal questions.

Addendum by Otto: Also note that Trademark and Copyright are two entirely different things. There is no “licensing” for trademarked items. The GPL and any other license will not apply. Basically, if something is trademarked, then you need to get explicit permission to use it, in writing, or you just don’t use it.

I think it’s fair use. Will you let me keep the icon while I fight them?

Alas, no. We have to consider the directory as a whole and it’s over 60k plugins. The risk for us is too high, and we will side with the legal request.

Addendum by Otto: There is no concept of “fair use” in trademark law. Don’t use other people’s trademarks. Period.

What about existing plugins that you let violate trademarks in the slugs?

That’s because we do not have the technical ability to rename a slug without breaking it for all users. They’d be abandoned. And you can’t automatically migrate users from one plugin to another, so because of that limitation, most companies have permitted us to retain plugins that violate their trademark in the slug. Some have not, and we’ve been forced to close those plugins.

Since the logo and display name can be safely changed, it’s a different matter.

Someone else is violating too! Why didn’t you shut them down?

We email people in batches. You’re welcome to report fellow plugin devs who are violating the guideline, but the odds are we’ve already been in contact with them (or will be shortly). You’re not being singled out, we just have a lot of plugins to work through and we take breaks. Keep in mind, if it’s not YOUR trademark, we generally just warn.

Someone’s using my trademark in their icon/banner, how do I get them to stop?

Contact them first and point to this post (and the 17th guideline) and just ask them NICELY to please change it. If they blow you off or don’t respond in a reasonable time (like 2 weeks), you can email us at plugins@wordpress.org and we’ll follow up.

#guidelines #trademarks

The WordPress trademark and domain names

A friendly reminder to plugin authors: Per the WordPress trademark policy, do not use “wordpress” in your domain name. We have been actively notifying developers that reference such domains in readme files or plugin headers. If you are violating the trademark, please update your plugins. Your next step should be to switch to another domain.

As our page on wordpress.org says, “We see this most frequently with spammy sites distributing plugins and themes with malware in them, which you probably don’t want to be associated with.”

#trademarks