Legal ping-pong in the WordPress world continues as Automattic sends WP Engine a cease-and-desist letter alleging trademark infringement

Automattic

Image Credits: Automattic

The brouhaha in the WordPress community looks likely to escalate into a legal battle around trademarks.

Just a day after WordPress hosting service WP Engine sent a cease-and-desist notice to Automattic asking its CEO to stop publicly trashing WP Engine, now Automattic has sent its own cease-and-desist letter to WP Engine, saying the latter has infringed several trademarks like WordPress and WooCommerce.

This comes after Matt Mullenweg, the CEO of Automattic and co-creator of WordPress, last week criticized WP Engine for profiteering off the open-source WordPress project, called it a “cancer to WordPress,” and accused the company of contributing very little to the community.

In its letter dated Monday, Automattic alleged that WP Engine has built a business of over $400 million in revenue based on unauthorized use of its WordPress trademark, which Automattic claims it has the exclusive commercial rights for from the WordPress Foundation. Automattic also said WP Engine has misled consumers into believing that there is a direct affliction between the two companies.

“Your unauthorized use of our Client’s trademarks infringes on their rights and dilutes their famous and well-known marks. Negative reviews and comments regarding WP Engine and its offerings are imputed to our Client, thereby tarnishing our Client’s brands, harming their reputation, and damaging the goodwill our Client has established in its marks,” the letter read.

“Your unauthorized use of our Client’s intellectual property has enabled WP Engine to compete with our Client unfairly, and has led to unjust enrichment and undue profits,” it added.

Automattic is also demanding compensation for the profits made by WP Engine by using its trademarks, and said that if WP Engine doesn’t amicably solve the matter, the company has the right to file a civil injunction case.

For context, here’s a good summary of the WordPress community by my colleague Paul Sawers:

WordPress powers more than 40% of the web, and while any individual or company is free to take the open source project and run a website themselves, a number of businesses have sprung up to sell hosting services and technical expertise off the back of it. These include Automattic, which Mullenweg set up in 2005 to monetize the project he’d created two years earlier; and WP Engine, a managed WordPress hosting provider that has raised nearly $300 million in funding over its 14-year history, the bulk of which came via a $250 million investment from private equity firm Silver Lake in 2018.

In the cease-and-desist letter WP Engine sent to Automattic on Monday, the company defended its right to use the “WordPress” trademark under fair use laws. The company added that Automattic has “a profound misunderstanding of both trademark law and WordPress Foundation’s trademark policy.”

It also said Mullenweg demanded WP Engine pay Automattic “a significant percentage of its gross revenues — tens of millions of dollars in fact — on an ongoing basis” for a license to use trademarks like “WordPress.”

“When his outrageous financial demands were not met, Mr. Mullenweg carried out his threats by making repeated false claims disparaging WP Engine to its employees, its customers, and the world,” WP Engine’s letter said.

Notably, Automattic’s letter doesn’t mention Mullenweg’s remarks about WP Engine.

In the last week, Mullenweg has accused WP Engine of not contributing enough to the community and offering “a cheap knock-off” version of WordPress. WP Engine pushed back against this characterization and called out Mullenweg for launching a smear campaign against the company, saying it has already affected some of its business.

This might be the start of a long legal tussle between the two entities. A lot of folks also pointed out that this battle might be harmful for providers offering specialized WordPress hosting.

Earlier today, WordPress Foundation changed its Trademark Policy page to call out WP Engine alleging the hosting service of confusing uesers.

“The abbreviation “WP” is not covered by the WordPress trademarks, but please don’t use it in a way that confuses people. For example, many people think WP Engine is “WordPress Engine” and officially associated with WordPress, which it’s not. They have never once even donated to the WordPress Foundation, despite making billions of revenue on top of WordPress,” the updated page reads.

Happy groom piggybacking bride in vineyard during sunset

Thankful Registry continues its emphasis on thoughtful gift giving

Happy groom piggybacking bride in vineyard during sunset

Image Credits: Klaus Vedfelt (opens in a new window) / Getty Images

When TechCrunch first covered gift registry platform Thankful Registry eleven years ago, its philosophy was turning the act of asking for gifts into a mindful process, instead of a greedy grab for stuff. Fast forward more than a decade, Thankful continues to lean into that mindset with its relaunch. In addition to a redesign, Thankful also has new features like the ability to send cash with more transfer apps.

When Amazon removed the ability to add items from other sites to its Wishlists and registries in 2023, it opened a new opportunity for Thankful. Founded in 2013, the bootstrapped startup, which is run out of Taipei by Kathy Cheng, wants to become the world’s most popular universal gift registry and wishlist. It also wants to be one of the most beautiful, with an emphasis on design and user experience. As Cheng puts its, “gifting by nature is a social transaction. You can’t simply be an online tool.”

Right now, 80% of active accounts on Thankful are wedding registries, 10% are baby registries and rest were started by nonprofits and general users. Half of its users are in the United States, while the rest are spread out in Australia, Canada, the United Kingdom and the rest of the world. Since Thankful’s soft relaunch in October, 1 in 4 new trial accounts have converted into paid accounts.

Cheng first got the idea for Thankful when a friend got married and Cheng used her Macy’s online registry. She tells TechCrunch that she “hated” the experience. “It was just like a shopping list. Everything was super small, images were super small. It was like you’re just ticking an item off someone’s list. There was no information about the couple, no beautiful photos, no welcome message,” she says.

She set out to build a registry platform that would make asking for gifts and giving them a more meaningful experience. In addition to a focus on design, Thankful also has features, like ones that let people write messages when they buy a gift.

Before its redesign, Thankful’s homepage stayed unchanged for 10 years. The new version was designed by Cheng and Corey Li, a freelance UX designer based in Kaohsiung, and built by Ruby development agency 5xRuby in Taipei. Cheng says she wants to update the design and add more functions, including a focus on cash gifts for international users. The new version also makes it easier for users to add gifts to their registries. Before, they used a bookmarklet, but now they can also paste links and upload images.

For countries where cash gifts are popular, Thankful has a Wallet feature that lets people request multi-currency cash gifts through popular direct cash transfer platforms. These include PayID in Australia, Monzo in the United Kingdom, e-Transfer in Canada and Wise for global gifts. In the U.S., available platforms are Stripe, PayPal, Chime, Zelle, Venmo and CashApp. Cheng says one in five gifts given through Thankful is cash.

Cheng notes that gift registries like The Knot, Zola, Joy and Babylist have expanded their registry businesses through dropshipping models, earning money by processing and shipping orders to customers. But Thankful avoids dropshipping because Cheng says she hates the “shop ’til you drop” mentality of registries that encourage people to ask for more items so they can make revenue. Instead, Thankful uses a pricing model with two options. Customers make one-time payments of $60 for a year’s registry or $90 a year for permanent registry.

As a universal gift registry, Thankful is used by many people to add items from small businesses, including mom and pop shops, independent designers and Etsy.

A screenshot of Thankful's baby registry
A screenshot of Thankful’s baby registry

“There are so many D2C brands now,” says Cheng. “People are choosing to buy from D2C brands instead of Nordstrom, Bloomingdale’s, Kmart and Target. So you can have somebody who has 20 retailers on their registry page, and that’s all going to look good and work together.”

In addition to wedding and baby registries, Thankful is also used by non-profits to ask to donations. They include Cincinnati Zoo, Clearwater Marine Aquarium, Perth Inner City Youth Services and Refugee Education UK. When Roe v. Wade was overturned by the Supreme Court in June 2022, a lot of donations came through registries for Planned Parenthood. Before that, people asked for donations to go to ACLU when Donald Trump was elected 2016.

“You have to be so flexible and that’s why I think universal is the way to go, but competitors, because their money is made in dropshipping don’t want to go universal,” says Cheng.

Cheng says that even though donation accounts make up less than 2% of total gifts fulfilled on Thankful, the platform has facilitated more than $412,000 in donations so far. About 80% of these donations, or $330,000, have gone to U.S.-based non-profits, with the average amount at around $100. Thankful doesn’t charge transactions or platform fees for donations and gives non-profits and teachers complimentary forever accounts for fundraisers.

The relaunch marks the first time Thankful has updated its pricing model in a decade and one of the reasons is that it is founder-owned and competing against other registries, including ones with venture capital funding like Joy and Zola. Cheng notes Thankful is still less expensive than other rivals like cash-only honeymoon funds Hitchd and Traveler’s Joy.

Cheng says she wants customers to see Thankful as a service that stays with them for different milestones. Many couples first sign up for their weddings, before using Thankful for baby registries. Other users include people who use the platform as evergreen gift lists for their extended families, registries for dog adoptions and lists of things needed for people going through serious illnesses.

“Gifts really touch so many parts of our lives,” says Cheng. “We just want to make it as easy and thoughtful as possible.”

A depiction of Arrival's UPS van.

Arrival's spectacular fall continues with a delisting from Nasdaq

A depiction of Arrival's UPS van.

Image Credits: Arrival

Commercial EV startup Arrival is being removed from the Nasdaq stock exchange as it speeds toward dissolution.

The company, which went public after merging with a special purpose acquisition company, announced Monday morning that the Nasdaq will suspend trading of Arrival shares January 30, followed by a formal delisting. Nasdaq is taking the action after Arrival was late in posting financial results and failed to file a remediation plan with the exchange.

The delisting notice comes just two months after Arrival announced it secured a $50 million lifeline, which it said it hoped would be enough to keep the company afloat as it explored a sale of its assets. In the meantime, Arrival is reportedly talking to accounting firm EY to lead an administration process, which is similar to bankruptcy.

Arrival’s big promise when it was founded was that it would make electric vehicle production “radically more efficient” by using so-called microfactories to build electric delivery vans, buses and more. It went public in 2021 by merging with a SPAC and quickly shot to a valuation of $13 billion.

Like most of its EV SPAC peers, Arrival struggled to get its business up and running and instead kept burning through the money it raised in the transaction. It repeatedly shifted focus and went through multiple rounds of layoffs. Arrival cycled through leadership and even tried — and failed — to merge with another SPAC last year in a desperate attempt to raise more funding.

The company is now worth closer to $20 million, at least before Nasdaq announced the delisting on Monday. It has yet to deliver a fully working production-level vehicle to any of its prospective customers, like UPS or Uber.