Every time you think that the US Patent Office has hammered down Autodesk's claim that it should be allowed to trademark the .dwg file extension, up pops another brief from the company's external lawyers, Wilson, Sonsini, and Rosati.
Over and over again, the USPTO has explained to Autodesk that...
.dwg is not unique to Autodesk; other CAD programs use the file extension prior to AutoCAD's existence and to this day -- and so cannot be registered as a trademark.
.dwg is descriptive of the contents of the file's contents -- and so cannot be registered as a trademark.
...but to no avail. Wilson, Sonsini, and Rosati don't seem to have gotten the message, and so in March filed yet another appeal to the USPTO. See http://ttabvue.uspto.gov/ttabvue/ttabvue-78852808-EXA-6.pdf
In its appeal, WSR claims that USPTO was wrong about the lack of distinctiveness, because Autodesk "submitted more than sufficient evidence of acquired distinctiveness of the mark DWG. This evidence includes, among other things:
- Survey evidence
- Declarations from Applicant [Autodesk]
- Third-party declarations
- Documentation of a series of DWG-related marks since the 1990’s [sic]
- Evidence of DWG-related computer file icons used by millions of users in connection with Applicant’s software
- Sales figures for Applicant’s products sold under DWG-related marks and/or using Applicant’s DWG technology
- Evidence of extensive marketplace use of Applicant’s .dwg file format for three decades
- Repeated references to competing businesses using the designation “dwg” to suggest
interoperability with Applicant’s industry-leading technology.
You don't have to be a lawyer, just a CAD user, to recognize that some of Autodesk's evidence is irrelevant, such as Autodesk's use of .dwg for three decades and by millions of users. It's like Toyota wanting to register the word "automobile," because it has used the term for many decades, as have millions of Toyota owners, and that competing car makers interoperate with Toyota products. "Automobile" is both descriptive, and precedes Toyoyta's use of the term; it's not distinctive.
Anyhow, here is WSR's single argument in its appeal:
Here, as set forth in detail below, Applicant [Autodesk] has overwhelmingly succeeded in conditioning the marketplace to associate DWG with Applicant and its software products.
So, could the reason be that Autodesk waited more than two decades before attempting to register this file extension as a trademark, is that the company first needed to create a Pavlovian environment in which you are conditioned to think Autodesk or AutoCAD when you see .dwg or its icon(s)?
In the next post, I'll summarize the USPTO's re action to WSR's appeal.