What the effect of Autodesk's registration of DWG as a trademark means

by Owen Wengerd

Trademarks are interesting creatures. They serve a very specific and very limited purpose: to identify the source of a good or service. Trademarks are intellectual property, but unlike other types of intellectual property, the status and strength of a trademark can and often does change over time.

Identical trademarks can be used by different entities as long as this does not result in source confusion, so infringement is often not straightforward. If a trademark is abandoned, it eventually loses its status as a trademark. If a trademark becomes generic (like "aspirin" and "thermos"), it also loses its status as a trademark. Trademarks which had once been abandoned (or become generic) can be revived. For example, the Xerox trademark has been revived after many years of being used as a generic synonym for "photocopy".

Autodesk's attempt to register DWG as a trademark is an example of an effort to take a mark that started out generic and turning it into a trademark. This action is perfectly legal, if they can pull it off; but they'll need to overcome objections by senior users of the mark and demonstrate that consumers do in fact associate DWG with Autodesk.

I expect Autodesk will eventually succeed; it's just a matter of time and effort, and possibly paying off companies like Nemetschek North America to withdraw their objection. If Autodesk's registration attempt fails this time, they can continue using DWG as an unregistered mark, then try again to register it in the future. Unless someone is well funded and highly motivated to stop them, Autodesk will eventually succeed.

What will the world look like once Autodesk successfully registers DWG as a trademark? It certainly won't end. In theory, the world will improve slightly, at least from a consumer's point of view. After all, the purpose of trademarks is to prevent or reduce consumer confusion, which is a good thing.

A file extension is not a trademark, so registration of DWG will not give Autodesk any right to the .dwg file extension. It won't prevent consumers from using the term "DWG" in any non-commercial way they please. It certainly won't prevent competitors from reading and writing .dwg files, although it might limit what they call such files. In no material way does registration of DWG as a trademark give Autodesk control over the data in a .dwg file -- at least not more than they already have.

What a DWG trademark will do is strengthen Autodesk's RealDWG trademark, and open the door for Autodesk to claim other marks with DWG in them. It might give Autodesk a bit more ammunition if they want to use the threat of a trademark infringement claim as a weapon. It certainly will give Autodesk leverage for licensing its RealDWG libraries, because it can sweeten the pot by including a license to use the DWG mark when referring to the .dwg files produced with their libraries.

Owen Wengerd is president of ManuSoft and vp Americas of CADLock. You can read his blog at Outside The Box.

Comments

[Evan Yares]

Filename extensions don't actually include a period. The period is a separator. So, when you're referring to the DWG filename extension, you don't need to include the period.

Also, tracing the history of the DWG filename extension, it was originally upper case. Today, it's actually case insensitive. It's probably more proper to write the DWG filename extension as "DWG". (Just as with the PDF filename extension.)

So, you have the DWG mark, on one hand, and, on the other hand, the DWG filename extension, which is used on DWG files to identify the DWG format.

Seems perfectly clear, doesn't it?

[Owen Wengerd]

The comparison to PDF is a good one, and the point you make is essentially the examining attorney's argument against allowing the registration. However if registration eventually succeeds, competitors will refer to them as .dwg files to avoid infringement claims.

[Evan Yares]

Even Autodesk doesn't refer to them as .dwg files with any consistency.

[Ralph Grabowski]

I used DWG when describing the format ("DWG format") and .dwg for the file (".dwg files" or "drawing.dwg").

The period indicates I am referring to a file extension. The use of lowercase goes back to when Autodesk rewrote its documentation to allow for Unix versions of AutoCAD.

Unix is case-sensitive, wjhereas DOS (and now Windows) isn't. For compatibility, all file names needed to be in lowercase. To distinguish filenames from the rest of the documentation text, Autodesk wrote them in italics -- a practice I continue to use.

Quoting from the "AutoCAD Reference Manual" for Release 12,

"If you expect to transfer files between UNIX and other systems, we recommend that you enter all filenames in lowercase..."

That would apply to drive and path names, as well.