>>Citation?
>[academic paper by two lawyers in this space warning exactly that]
Farewell friend!
Only one of the three links you provided as a source even mentions it. And that mention is in the context of (paraphrase) "nothing here is intended to take away your fair use rights".
When you have anything that addresses the issue we've been discussing, I'll be happy to read it. Let me be clear. This isn't an open call to fire any and all articles about trademark in FOSS at me. If they don't address NFE. They aren't relevant. Period.
Please, please do a search and replace for "fair use" before responding with yet another link.
Now that that's out of the way. Here's an actual lawyer with commentary that is *directly on topic*:
Descriptive and nominative fair use
I am not a US trademark lawyer, but to my mind much of this ‘case’ falls to be considered by reference to the defences to infringement known as ‘descriptive fair use’ and ‘nominative fair use’ (nominative fair use being the more likely defence).
The International Trademark Association describes ‘descriptive fair use’ and ‘nominative fair use’ as follows:
“Descriptive fair use permits use of another’s trademark to describe the user’s products or services, rather than as a trademark to indicate the source of the goods or services. This usually is appropriate where the trademark concerned has a descriptive meaning in addition to its secondary meaning as a trademark. For example, WD-40 Company’s use of the term “inhibitor” was found to be descriptive fair use of the registered mark THE INHIBITOR when used to describe a long-term corrosion inhibitor (WD-40) product.
Nominative fair use permits use of another’s trademark to refer to the trademark owner’s goods and services associated with the mark. Nominative fair use generally is permissible as long as: (1) the product or service in question is not readily identifiable without use of the trademark; (2) only so much of the mark as is reasonably necessary to identify the product or service is used; and (3) use of the mark does not suggest sponsorship or endorsement by the trademark owner. For example, one could refer to “the professional basketball team from Chicago,” but it is simpler and more understandable to say the Chicago Bulls. Here, the trademark is used only to describe the thing rather than to identify its source, and does not imply sponsorship or endorsement. … .”
I have not seen the exhibits to Automattic/WooCommerce’s cease and desist letter and so cannot comment on all the circumstances in which the companies are asserting that WP Engine has infringed their trademarks or rights as exclusive licensee. However, as a long-time WP Engine customer who is therefore pretty familiar with WP Engine’s website and marketing, it strikes me that at least a good deal of WP Engine’s uses of the words ‘WordPress’, ‘WooCommerce’ and ‘Woo’ are descriptive/nominative in nature and therefore non-infringing. It is certainly not within Automattic/WooCommerce’s power to prevent all descriptive/nominative uses of those words by WP Engine. Context is key. And I do note that WPEngine says things like this on its website:
Who created WooCommerce?
WooCommerce is developed and supported by Automattic, the creators of WordPress.co and Jetpack. The plugin’s development teams also work with hundreds of independent contributors to provide regular updates, new features, and improved security measures that keep your store up-to-date and protected.
And when WP Engine talks about the likes of ‘WooCommerce hosting’ and that the ‘path to WooCommerce® success starts here’, the webpage states expressly in the footer that WooCommerce is a registered trademark of Automattic Inc.
Bonus link (it's more off the cuff and much less serious - but it will give you a feel for how a legal professional might see this case): https://www.twitch.tv/videos/2261286307