WordPress cofounder and Automattic CEO Matt Mullenweg has been locked in a very public and legal fight with WP Engine over the last few weeks regarding use of WordPress as a trademark, as well as fees Automattic claims that WP Engine owes to the WordPress project - sparring that has resulted in WP Engine filing its own legal demands.

But this position by Automattic did not come out of the blue.

Automattic, which owns WordPress and the e-commerce platform WooCommerce, had been writing an outline to get much stricter about enforcement of trademarks across the WordPress and WooCommerce platforms since at least the start of the year, per an internal blog post a source shared with TechCrunch. The sources confirmed the authenticity of the post individually.

The message-in which Automattic's then-chief legal officer, Paul Sieminski, in January 2024 wrote on the company's "P2," a version of WordPress aimed at internal communications-outlined a plan for how Automattic would pursue this strategy, both through direct negotiations with companies and through "nice and not nice lawyers and trademark enforcers." And Automattic potentially would register further trademarks going forward.

We're going to pursue a multi-faceted approach that includes some supplemental trademark filings… lawyer-written cease-and-desist letters, and an official paid licensing program for the partners, Simineski said. (He left the company in April 2024.)

This is basically what has played out.

In July, the WordPress Foundation applied to trademark both "Managed WordPress" and "Hosted WordPress," whose status is pending. And at the end of last month, Automattic issued a cease-and-desist letter to WP Engine. Neither Automattic nor the WordPress Foundation have elaborated further on fair use, however.

Now owned by the not-for-profit WordPress Foundation, since 2010, the trademark for WordPress goes hand in hand with its founding in 2005 when Mullenweg founded Automattic as a for-profit business to rest atop of this open-source framework.

As Mullenweg outlines, he transferred that trademark to the foundation because even if there was a change in guard at Automattic the trademark would remain safe with the foundation and thus the open-source project could live on.

Automattic holds the commercial license to WordPress, and in recent actions, it has marked a real volte face over its position as a guardian.

Along with giving a brief context to the legal tussle involving Automattic, this blog underscores how, in the ecosystem of WordPress, tensions have risen while open source projects, with their collaborative aspects, had to be weighed against business interests.

Many developers and contributors have pointed out how this fight will adversely impact the WordPress community. That would be a first inasmuch as Automattic didn't seem to have any more adversarial relationship with major players in the ecosystem previously. It actually even was an investor in WP Engine to help attempt to ratchet up ecosystem activity. It was bought out, we've learned and confirmed, when Silverlake took a controlling stake in WP Engine in 2018.

The internal post—the only reference to Automattic, no mention of WP Engine or other companies building on the WordPress framework—is focused primarily on the "WordPress" trademark, including its circular logo. Simineski emphasized that Automattic is the only company permitted use of those in its name and branding.

He also explained what Automattic is doing with relation to WordPress.org. "It does not involve creating or explaining any new rules" beyond its trademark policy, he writes.

Google also makes an appearance in the post-primarily as a vehicle for enabling abuse of the trademark.

A quick search through Google Ads and hosting company landing pages will turn up plenty of 'Managed WordPress', or companies which offer 'WordPress Hosting.' he wrote. "Is this okay? Can we clamp down on these things? The answers are… no, and yes.".

According to him, Automattic would look to team up with Google to prevent it from promoting companies and links that were misusing the branding. "Overall, they can help but we cannot rely on them 100 percent," he added.

The post covers trademarks related to WooCommerce, the Shopify competitor that Automattic acquired in 2015. WooCommerce is 100% owned by Automattic, and Automattic is applying the same enforcement strategy to it and its "Woo" branding. Enforcement, the counsel wrote in the internal blog post, "will probably be easier and cleaner because it's less of a community asset." (WooCommerce itself is also open source).

Some of the murkier areas in the dispute between Automattic and WP Engine and WordPress trademark enforcement involve the trademarks filed in July 2024. In a conversation recently with TechCrunch, Mullenweg claimed he did not know who had filed the trademarks on behalf of the Foundation, nor why. According to him, he does not know about the day-to-day running of the foundation, and volunteers are the ones running it.

The Foundation has three directors, Mullenweg included. The others are Mark Ghosh, who sold his website-a very popular WordPress blog-to Mullenweg in 2014, and Chele Farley, the former Republican politician whose campaign Mullenweg lent money to. Both of them have been nearly invisible from foundation activities or speaking about the WordPress ecosystem.

For now, though, the controversy has been between Mullenweg and WP Engine. "If there are violations of the trademark, of course, we need to enforce our trademark. I'm not aware of any others that are as egregious or as harmful as WP Engine," Mullenweg told TechCrunch in late September.

We reached out to Automattic for comment for this story and Mullenweg replied directly. He did not give a direct answer to the question of whether this was just an isolated incident with WP Engine or something bigger that was starting down the path toward another set of actions.

"We do trademark enforcement all the time! It's part of protecting the trademark," he wrote. "Usually it's pretty minor, and a UDRP or email takes care of it.". But the trademark malfeasance was so foundational to the WP Engine business that it needed a much more significant agreement, one that I honestly thought was going to happen before WordCamp in September, which is why we let them sponsor the U.S. event.

He also added that "the company was upgrading a lot of our legal team right now.".