WP Engine is also seeking summary judgment on all counterclaims brought against it by Automattic in the ongoing lawsuit. In a pre-filing letter submitted to the US District Court for the Northern District of California on October 27, the company outlined its arguments for dismissing the counterclaims, citing nominative fair use, laches, and a lack of evidence supporting the trademark dilution and WooCommerce claims.
Automattic had separately filed its request for a summary judgment on the same day too.
WP Engine challenges counterclaims over WordPress and WooCommerce trademarks
WP Engine’s defense centers partly on its longstanding use of the WordPress name to describe its hosting and management services. The company argues that this use is necessary because its services are specifically designed for websites built on WordPress software. It also points to other hosting providers, including GoDaddy, Kinsta, and Pantheon, which have used similar terminology to describe their WordPress hosting services.
In the filing, WP Engine argues that its use meets the requirements of nominative fair use, a defense that allows the use of a trademark to identify a product or service under certain conditions. It says it has not used more of the trademarks than necessary and that the counterclaimants have presented no evidence of improper use of trademarked logos or distinctive lettering and colors associated with the WordPress name.
WP Engine also disputes that its use of the trademarks suggested an endorsement or sponsorship by Automattic or the other counterclaimants. It says it has never described its services as “endorsed by” or “sponsored by” them. The company further points to a survey submitted by the counterclaimants, arguing that it found no actionable confusion concerning endorsement or sponsorship.
Another basis for WP Engine’s planned motion is laches, which concerns unreasonable delay in bringing a legal claim and prejudice resulting from that delay. WP Engine argues that Automattic and the other counterclaimants knew about its use of the WordPress name years before filing their counterclaims.
As evidence, the company cites an Automattic press release from 2011 that described WP Engine as “the premier, fully-managed WordPress hosting company” and referred to it as having “WordPress experts.” The filing also points to WP Engine’s participation as a WordCamp sponsor from at least 2014 to 2019, arguing that the WordPress Foundation had viewed its use of the marks during that period without taking action.
WP Engine further argues that it would face prejudice if it were now required to change its business and advertising practices. The company says it has invested hundreds of millions of dollars in its business since 2010, including advertising its products and services for websites built on WordPress software.
The filing also challenges the counterclaimants’ trademark dilution allegations, arguing that they have not established that the WordPress marks were famous before WP Engine first used them in 2010. WP Engine says the counterclaimants have not provided evidence that the marks had the level of recognition required to qualify as famous under federal trademark law. It also points to a 2022 Automattic survey that, according to the filing, showed limited awareness of WordPress among people who were not WordPress or Automattic users.
Separately, WP Engine argues that WooCommerce’s counterclaims should also be resolved in its favor because the counterclaimants’ own survey did not show net confusion arising from WP Engine’s use of the WooCommerce mark.
Beyond seeking summary judgment on the counterclaims, WP Engine also intends to cross-move for partial summary judgment on its intentional interference claims against the defendants.