Automattic Inc. Claims It Owns the Word 'Automatic'
- Reference: 0179985816
- News link: https://tech.slashdot.org/story/25/11/06/1735215/automattic-inc-claims-it-owns-the-word-automatic
- Source link:
> Automattic, the company that owns WordPress.com, is asking Automatic.CSS -- a company that provides a CSS framework for WordPress page builders -- to change its name amid public spats between Automattic founder Matt Mullenweg and Automatic.CSS creator Kevin Geary. Automattic has two T's as a nod to Matt.
>
> "As you know, our client owns and operates a wide range of software brands and services, including the very popular web building and hosting platform WordPress.com," Jim Davis, an intellectual property attorney representing Automattic, wrote in a letter dated Oct. 30.
>
> "Automattic is also well-known for its longtime and extensive contributions to the WordPress system. Our client owns many trademark registrations for its Automattic mark covering those types of services and software," Davis continued. "As we hope you can appreciate, our client is concerned about your use of a nearly identical name and trademark to provide closely related WordPress services. Automattic and Automatic differ by only one letter, are phonetically identical, and are marketed to many of the same people. This all enhances the potential for consumer confusion and dilution of our client's Automattic mark."
>
[1] https://www.404media.co/automattic-automatic-trademark-matt-mullenweg-kevin-geary/
Were it up to me... (Score:2)
Trademarks with incorrectly spelled words would be denied.
Re: (Score:2)
What about correctly spelled ones like Apple?
Re: (Score:2)
I have no issue with correctly spelled words.
Re:Were it up to me... (Score:5, Insightful)
I'd rather trademarks with correctly spelled words be denied...
Re: (Score:2)
Mmmhmm. A misspelled word is at least not the real word. But I would say that they cannot enforce IP for the real word homonym/homophone when it's used.
Re: (Score:3)
It's not misspelled. It's pronounced "ah-toe-mah-tih-tic. The founder stutters.
I think If i worked with that company, I'd just always pronounce it that way.
Re: (Score:2)
> Trademarks with incorrectly spelled words would be denied.
I have zero problems with incorrectly spelled words as trademarks, so long as the trademark registration conditions explicitly forbid them from launching trademark suits against companies which use the correctly spelled word. So in this case, AFAIC "Automattic" can go piss up a rope.
Possibly valid (Score:4, Insightful)
Normally this would be laughable. But since the product at hand is specifically in the same ecosystem as the Trademark holder, things might get dicey.
[1]https://www.uspto.gov/trademar... [uspto.gov]
[1] https://www.uspto.gov/trademarks/search/likelihood-confusion
Re:Possibly valid (Score:5, Informative)
Not just possibly, but absolutely valid. This is exactly the kind of thing trademarks exist to prevent. They aren't claiming the word "automatic", they're claiming that naming a framework that's meant to work with their product (WordPress) a name that differs from their own by only 1 letter, particularly such a non-obvious difference (many people won't notice the existence of an extra 't') is meant to cause confusion an think it's an official part of their offerings. Because it is. If the other company doesn't change the name they will be destroyed in court. And frankly they'll deserve it. Whoever chose that name was either a total idiot with no concept of the law, or a scammer who meant to prey on Autmattic's good name.
Re: (Score:2)
> Autmattic's good name
Have a care: you could be responsible for a lot of people dying of laughter.
Re: (Score:2)
Fair, but in the business world of people who buy that type of software, being the official authors of WordPress does give them cachet. The Automatic.CSS name was absolutely picked to piggyback off it.
Re: (Score:3)
And if it were simply just a CSS framework that also happened to work with Wordpress it wouldn't be such a simple case. As much as I hate to side with Automattic here, they should be defending their trademark against this. But since they are the bigger fish and as a show of goodwill to the developer community, they should put up an offer to help pay the costs associated with rebranding. Has to cost less than actually fighting it in court regardless.
Re: (Score:2)
Since 2021, Confusion is not a concrete harm that supports a Trademark infringement case. It must cause a concrete harm to the business.
[1]https://harvardlawreview.org/p... [harvardlawreview.org] has a great, easy to read review of the impact.
Two excerpts, first from introduction, second from the takeaway:
"""
In TransUnion LLC v. Ramirez,the Supreme Court held that a legal violation is not an injury in fact unless it entails concrete harm.
to be concrete, the injury must have a “close historical or common-law analogue.”
Pa
[1] https://harvardlawreview.org/print/vol-135/trademark-injury-in-law-and-fact-a-standing-defense-to-modern-infringement/
Re: (Score:3)
But since Automatic.CSS has been going since 2021, why has Matt left it so long to defend "his copyright"?
Re: (Score:2)
He got bored hassling WP Engine, so has to find something new to latch on to.
Re: (Score:2)
Automatic Inc. does *not* have a registered trademark for the word "Automatic", nor can they. The word is a common English word and is therefore not trademarkable. Rather, they have claimed an *unregistered* trademark (TM) for the word, and they can and do sue to back up their right to use the word.
In the same way, Microsoft has never been able to register a trademark for the word "Windows" because it is a common word. You can therefore call the panels in your app, "Windows" without fear of being sued by Mi
The title is stupid. (Score:3)
Trademarking common words in a very specific domain is pretty common. Try to create an online store called Amazon, or a computer company called Apple and see how that goes. But there are plenty of products and companies that have those in their name in other markets.
I don't know anything about the WordPress market, but having two companies, specifically selling WordPress products, with such similar names seems like it could be a pretty reasonable trademark dispute. In no way are they claiming to own all uses of the word automatic.
Re: (Score:2)
Exactly. You can name your bakery Fords but good luck trying to start a car company called Fords. Apple and Apple Records worked out their trademark overlap, which wasn't an issue for decades as they were in different industries, when the computer maker got into the music industry.
Re: (Score:2)
I know it is not in the US as for this story; but there is Stelios Haji-Ioannou, founder of Easyjet and several other 'Easy---' companies, in the UK and Europe. He seems to think that he therefore owns the right to every use of the word 'Easy' in trade names. See [1]https://www.keystonelaw.com/ke... [keystonelaw.com] , and also some other more recent lawsuits that he has launched since that article.
[1] https://www.keystonelaw.com/keynotes/trade-mark-litigation-not-so-easy
I trade mark the letter E only $0.69 per use! (Score:2, Funny)
I trade mark the letter E only $0.69 per use!
Re: (Score:2)
I guss I will hav to rfus to us that lttr anymor.
Re: (Score:2)
Okay, you can do that. It’s not that good anyway. I’m just dandy without it, thanks a lot.
they can have the word "automattic" (Score:1)
but there's prior art - dating to 1812 - for "automatic"
Re: (Score:2)
"Prior art" is only a factor in patents. This ain't a patent.
Pick a name like (Score:1)
"Aflac" and nobody will ever fight for your name. Plus, it makes for a memorable duck mascot.
(Although rumor is they are fighting with Duck Duck Go over the mascot.)
Re: (Score:2)
In Cusco, Peru, there used to be a chicken place with the name 'McDonalds', and on the sign was a painting of Donald Duck. They have a different name now, and I always wonder which of the two trademark/copyright owners made them change it.
No problem (Score:1)
As the CEO of Inc.INC (Inc.) I can conform that we own the word "Inc" and have begun legal action to enforce our rights. Beginning with these Automattic chancers.
Dr Evil ways in (Score:1)
âoeHe would make outrageous claims, like he âinventedâ(TM) the question mark.â - Dr Evil
Not In All Cases (Score:2)
They aren't claiming they own the word 'Automatic' in every case. Just in the WordPress area or likely related areas. It's much like you can name your bakery Fords but you couldn't start a car company called Fords. These trademarks apply within the same or similar industries. It was one of the issues that Apple worked through with Apple Records. Things were fine when they were in two completely different industries but when Apple Computer got into the music business, they had to work things out with Apple R
Re:Not In All Cases (Score:4, Informative)
Before 2021, Automattic had a great case. After, not much, as Supreme court strengthened requirements of concrete harm.
Hard to prove that Automattic.CSS is causing concrete business harm to Automattic, when it's adoption encourages adoption of Wordpress and the Automattic ecosystem.
Notable exerpts from the Harvard Law Review: [1]https://harvardlawreview.org/p... [harvardlawreview.org]
in TransUnion LLC v. Ramirez,the Supreme Court held that a legal violation is not an injury in fact unless it entails concrete harm.
to be concrete, the injury must have a “close historical or common-law analogue.”
Part III argues that the modern conception of likely confusion flunks the concrete-harm test because trademark law traditionally required business harm to producers.
In the absence of business harm, the injury that trademark owners sustain from others’ use of their marks is closer to a nonjusticiable moral injury.
When trademark owners do not establish business harm, courts must dismiss their claims on standing grounds.
--
Kavaughs addition:
Suppose that a woman drives home from work a quarter mile ahead of a reckless driver who is dangerously swerving across lanes. The reckless driver has exposed the woman to a risk of future harm, but the risk does not materialize and the woman makes it home safely.
As counsel for TransUnion stated, that would ordinarily be cause for celebration, not a lawsuit.
What the Court was after was a collision between risk and reality. Until the crash, there was no material consequence to the woman and thus no concrete harm. One could imagine cases where an unrealized risk was far from a “cause for celebration”
---
Under TransUnion, to be concrete, an alleged injury must have a “close historical or common-law analogue,” although not “an exact duplicate.”
The legal injury of likely confusion is not concrete because trademark injury traditionally meant business harm to trademark owners.
---
In the absence of actual or sufficiently imminent business harm, the harm that trademark owners incur from others’ use of their marks is probably closer to a moral injury
[...]
Whether or not these complaints are sympathetic, they are not legal injury under the Lanham Act, much less concrete injury under Article III.
A defendant’s gain is not in itself a brand’s loss.
[1] https://harvardlawreview.org/print/vol-135/trademark-injury-in-law-and-fact-a-standing-defense-to-modern-infringement/
Re: (Score:2)
I didn't read to the end when I posted. The final lines are great:
"""
Still, if this textualist Court really means what it says, then trademark law requires an overhaul. The legal injury of likelihood of confusion bears none of the hallmarks and boasts none of the traditional pedigree of a bona fide injury in fact. Without proof of business harm, trademark claims must fail. In the words of Justice Kavanaugh, “No concrete harm, no standing.”
Woudn't they retain the name (Score:2)
Automattic? It's all in the extra 't' right?
No (Score:2)
If it's your contention that Automattic can be conflated with Automatic, then why did you put the extra 't' in there? If the word Automatic could be trademarked, why didn't you name yourself that in the first place?
Of course, I jest. I know the answer. The reason is your lawyers told you up from that the word Automatic can't be enforced as a mark in your trade.
Now, if you were - say - a gardening company, you might have an argument if you can establish your mark across the industry of gardening. But in soft
Now, all you ... (Score:2)
... Gen Z wankers will have to learn to drive stick shifts.
I think I'm in trouble (Score:2)
I don't even know *how* to drive a stick!
if I R.E.M.ember correctly... (Score:3)
There was an entire album about this that clearly stated that Automatic was For The People.
Chronology matters (Score:2)
I mean, it doesn't matter to the courts, but it matters to me:
Did Automatic.css choose its name before, or after, Automattic chose its name?
If before, then Automattic are assholes. Assholes who might prevail in court, but still.
If after, then Automatic.css should have known this would happen. Consider rebranding to fivespeed.css or something like that.
Automatic stupidity (Score:1)
That which is public cannot be private. That which is private cannot be public. First usage of Automatic 1599 - 1586 Automatical.
Resistance isn't futile. (Score:2)
Geary would probably just get sued again if he automatically acquiesced. :-)
Em... Well known? (Score:2)
I've never heard of them...!
This would be hilarious it it weren't so pathetic (Score:2)
This fight would be so hilarious it it weren't so pathetic and sad.
I mean what the hell right? (Score:2)
Microsoft gets to own the word visual so why not automatic?
Re: (Score:3)
Love the story of the Canadian developer MikeRoweSoft and the lawsuit Microsoft filed. In the end, he gave them the domain and as part of the settlement, Microsoft paid all of Rowe's expenses, gave him a subscription to the Microsoft Developer Network, provided an all-expenses-paid trip to the Microsoft Research Tech Fest, offered Microsoft certification training, and gave him an Xbox with games.
[1]https://en.wikipedia.org/wiki/... [wikipedia.org]
[1] https://en.wikipedia.org/wiki/Microsoft_v._MikeRoweSoft
Enough is enough (Score:3)
The US Trademark Office should stop giving trademarks on basic words and the law should be changed that you can't claim ownership of basic single words from a copyright, trademark or other means.
Re: (Score:2)
Hell, Microsoft owns the word Word.
Re: (Score:1)
> Microsoft owns the word Word.
My competing product is Macrohard Wad
Re:MS and "visual" (Score:2)
Ironically few of their products are "visual" any more. They got rid of WYSIWYG in their dev tools so now devs have to play fiddle faddle to get stuff to look right, and even then DOM shuffles them around in drunk ways under different conditions. It's a time-drain.
WYSIWYG isn't evil, it just needed a few tweaks to adapt. But fadsters were too quick to toss it out with the bathwater over buzzword addiction. Gittoffmylawn!