Trademarks in the WordPress ecosystem: An interview with Carl Hancock


Meet Carl Hancock, the Gravity Forms guy

That hat on Carl's head? It's the logo of his company, Rocket Genius. You may not have ever heard of Rocket Genius. But if you're in the WordPress community, you know his product – it's called Gravity Forms.

Being one of the most popular premium plugins in the entire WordPress ecosystem means many things for Carl. One of the more frustrating dynamics, I'm sure, is that his plugin has been rolled into themes, placed on FTP sites, and more – because the code is licensed under GPL.

In case you don't understand what that means, I wrote about it recently.

While it's true that your code is free to be duplicated and distributed, it's not ok to infringe on trademarks. And that's something Carl has direct experience with.

Because of that, and because you almost never see Carl write a blog post (he prefers 140 character posts on Twitter), I thought I'd interview him and get you some of his direct insight.

An Interview with Carl Hancock about Trademarks

Why would you apply for trademarks for your products?

It's critical to protecting your brand.

We've worked long and hard while investing a lot of money into building Gravity Forms as both a product and a brand. A trademark provides us with a way to protect what we have built as a company and to protect our customers and community from people misusing our brand.

While many people think that filing for an actual trademark isn't necessary since they can leverage what are called “common law” trademarks that requires you to register nothing with the United States Patent and Trademark Office, this also means you'll have little luck protecting your brand name beyond a local geographic area.

If you've built a solid brand you have to protect it.

What options did you have to pick thru?

There's a variety of options that have to be take into account.

Are you actively using the name right now? Is it a name you plan on using in the future but aren't actively using? You can file an “intent to use” trademark for a name you may not be using today but plan on using in the future.

This allows you to protect a trademark even before it's actively used in commerce.

Another question is where do you want to protect your brand?

Being awarded a trademark within the United States doesn't automatically protect your brand around the world. If your business is international in nature, that is when things like the Madrid Protocol can come into play. The Madrid Protocol is an international treaty that enables you to register your trademark within any or all of the 91 member countries without having to do so individually.

It's not simple and straightforward.

You don't pay $100 and instantly gain protection for your brand name around the world. It's why I recommend not doing it yourself – work with a lawyer who knows intellectual property law and does this for a living.

There are also other types of marks you can register such as certification marks, collective marks, etc. But I'm not familiar with when they should be used.

In our line of work we are primarily concerned with standard trademarks and intent to use trademarks.

Why did you pick what you did?

For Gravity Forms we registered a a standard trademark and we are in the process of registering it internationally in additional countries. We are also in the process of registering several intent to use trademarks for products that are on our roadmap.

How much does this kind of thing cost?

Initially we used Trademarkia and went with the DIY option.

Ultimately it wasn't really much different in price than working with an IP lawyer to handle things directly.

With Trademarkia the Gravity Forms trademark came to about $932. This included the government fee and the lawyer fees to handle filing the trademark on our behalf.

Going forward we are working with Christopher Gatewood, an IP lawyer based out of Richmond, Virginia.

He also happens to be a WordPress and Gravity Forms user. The price difference is negligible and the benefit is we have a closer business relationship with the legal counsel were are working with to protect one of our most important business assets: our brand.

Is there someone you recommend?

You can always go the DIY route as we originally did by using services such as Trademarkia (LegalForce) or LegalZoom.

But I don't go the DIY route when it comes to my medical care so why do so with your brand?

I'd recommend reaching out to a lawyer who specializes in intellectual property law, such as our own lawyer Christopher Gatewood.

Correct me if I'm wrong, but didn't you meet Christopher at Pressnomics?

Yes, he is very familiar with WordPress which is why he was at Pressnomics.  

He and a partner are working on a plugin as well as services to help people put together customized terms of services for web sites and apps instead of copying-n-pasting from other sites as most people do.

Do you need trademark protection?

Only you can make the final call. But if you're building commercial products and want to make sure others don't trade on your name and brand, then you might want to seriously consider it.

If you do, and use other services beyond those listed here, make sure you come back and let us all know (in the comments below).