Automattic (WordPress) thinks your trademark is worthless

It's about startups, small business, trademarks and defending your brand against bullies

The Cause for Concern

There is a site, at http://edoceo.wordpress.com/ tied to a WordPress username of "edoceo" which ties over to a Gravatar account of "edoceo". The site has not been used since January 2009. The word "edoceo" is our registered trademark in the USA. We've requested that Automattic/WordPress release that name to us, they have been refusing.

Defending your Small (but Important) Trademark

We all know why your startup/small-business gets a trademark, you want to protect your (potentially) valuable brand identity. There are a few hundred dollars in fees to the government and some legal fees as well, the investment can be a few thousand dollars.

Once registered your mark gives you priority to use it. If you don't defend your mark you can lose it or it can become blurred, diluted or tarnished.

That is what is happening here with this site hosted on WordPress.

Defense Process

We initially contact Automattic about this issue in March 2013. We were told by Karen that usernames cannot be reused, an outright lie - simply run a SQL `UPDATE` and problem solved. On April 13 David (a "Happiness Engineer") attempted to sell us on WordPress.com services for our edoceo.com domain, no. We were told again that there is "nothing we can do" by WordPress. And on April 25th Phil told me that they would contact that blog owner, as there was no way for us to do so. It took until May 15th for Phil to reply, stating they have been unable to contact the previous owner. The site is cleary abandoned.

On June 25 we submitted another email identifying our trademark, it's registration number and detailing our viewpoint. Phil again replied stating there is "insufficient cause".

On September 10 we again contacted Paul (General Council to Automattic), detailing our case and presenting our evidence. We were later told by Bryan that it lacked details. Here is the message we sent.

Paul,
Thank you so much for getting back to me. Edoceo, Inc performs work
with, development on, consulting for and general assistance with
WordPress to multiple clients.

Our issue is specifically with the site at
'http://edoceo.wordpress.com' which we feel grossly misrepresents
Edoceo, Inc under DMCA and Trademark laws. The word 'edoceo' is our
registered trademark (# 3,611,559) (copy attached) which was first
used in commerce in July 2001. The site at http://edoceo.wordpress.com
does not have our permission to use our mark in this space.

Additionally, the Wordpress environment integrates with another
services such as Gravatar and the usage of the 'edoceo' mark inside of
wordpress.com crosses into the improper usage of 'edoceo' inside
Gravatar. This Gravatar service is used by other services that
intersect with Edoceo, Inc. (Github, &c) and our ability to leverage
our mark is restricted due to this cross-over.

It's clear from looking at 'http://edoceo.wordpress.com' that it is
not in use by the original registered user, whoever that may be.

We think the just and proper thing to do is to provide Edoceo, Inc
access to this account that we may exercise our rights to our mark.

David Busby
Edoceo, Inc.
http://edoceo.com/
206.282.6500

We've now submitted our third request

Our trademark is the word Edoceo. Registration #3611559, Serial #77532768, First Use July 2001 is registered for the following goods and services:
--
Computer application software for mobile phones;
Computer e-commerce software to allow users to perform electronic business transactions via a global computer network;
Computer hardware and peripherals;
Computer operating programs;
Computer operating programs and computer operating systems;
Computer programs for using the internet and the world wide web;
Computer programs used for electronic cash register systems;
Computer software for application and database integration;
Computer software for controlling and managing access server applications;
Computer software for creating searchable databases of information and data;
Computer software for use in customer relationship management (CRM);
Computer software for use in the encryption and decryption of digital files, including audio, video, text, binary, still images, graphics and multimedia files;
Computer software for wireless content delivery;
Computer software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface;
Computer software that provides web-based access to applications and services through a web operating system or portal interface;
Computer touchscreens;
Computers;
Network access server operating software;
Tax management software;
Telecommunications equipment and software, namely, fiber-optic transceivers, fiber optic repeaters, converters and optimizers, wave division multiplexers, free-space optics transmission systems, switches including Ethernet switches and routers, fiber-to-the-home and ethernet-over-VDSL access aggregators, terminators and repeaters, and remote presence management products, namely, switches, and console, alarm, sensor and power management devices;
Web site development software.
--

A screenshot: http://edoceo.com/img/trademark-screenshot.png
A PDF of the TESS page http://edoceo.com/pub/trademark-print.pdf
A scan of the original http://edoceo.com/img/trademark-scan.png

David Busby
Edoceo, Inc.
PO Box 70591
Seattle, Washington 98127
United States

The trademark that is allegedly being infringed: edoceo
The URL of the WordPress.com site being reported: http://edoceo.wordpress.com/
The exact content/aspect of the site being reported: name
A clear and detailed explanation of how the above content is in violation of the trademark in question, thus creating consumer confusion:

The site at http://edoceo.wordpress.com/ infringes on our arbitrary and suggestive trademark of "edoceo"

* It is causing confusion to our potential customers and a false advertisement.
* It tarnishes our mark by usage on this inferior, incomplete product with a blurred line between services we directly provide in and around WordPress software.
* It dilutes the value of the Edoceo mark; specifically in and around the goods and services of "Web site development software".
* This is not fair use, or parody.

I have a good faith belief that use of the trademark as described above is an infringement of the rights granted under United States and/or foreign trademark law.: Yes

I understand that a copy of this notice, including any contact information I provided above, will be forwarded to the blog owner.: Yes

Signed on this date of (today's date, MM/DD/YYYY): 09/11/2013

Signature (your digital signature is legally binding): David J Busby

Trademarks and Usernames

More than just WordPress have issues with this, Twitter, Tumblr don't respect these marks. They hide behind the item being a username, however these user names are promoted to a higher, public level by the site operators.

Other sites, such as YouTube and Instagram do respect the usage of names and trademarks, with them the process is as simple as an email. YouTube took two days to process, Instagram was processed the same day.

See Also