...until it's over. Or at least, over until the next DWG appeal

In brief, the USPTO yet again shut down Autodesk's desperate attempt to register the untrademarkable DWG. See http://ttabvue.uspto.gov/ttabvue/ttabvue-78852808-EXA-8.pdf

We get the sense of the USPTO losing patience, as it patently explains, once again:

Applicant [Autodesk] is unquestionably the world leader in CAD (computer-assisted design)  software and has enjoyed enormous success, as the evidence clearly demonstrates. But, the fact is, that although applicant developed the DWG file format in the early 1980s, it did not start using DWG as a trademark (or as part of a trademark) until over 20 years later.

And then the dagger:

The issue is whether an applicant can wait more than twenty years to assert  trademark rights in a file format name when it does not have exclusive rights to the file format name.

Waiting 20 years to turn a file extension into a trademark was not a "commercially reasonable time."

 

Point by Point Rebuttal

In its reply to Autodesk, USPTO shoots down all of the arguments made by their external lawyers, Wilson, Sonsini, and Rosati. Here they are:

1. Whether a claim of acquired distinctiveness can be based in any part on the term’s use as a file format name. 

Ans: Yes, but not in the case of Autodesk, because they waited two decades. Also, because Autodesk agreed to disavow trademark rights in .dwg as a file extension as a result of the Autodesk, Inc. v. Dassault Systemes Solidworks Corporation law suit.

2. Whether ... a case involving DWG precludes applicant from taking the position that its use of a file format name can support the registrability of its marks.

Ans: Yes, the case does preclude Autodesk.

3. Whether the concept of analogous use may be applied in an ex parte proceeding involving mere descriptiveness. 

Ans: No, analogous use may not be applied.

4. Whether applicant’s survey and declarations demonstrate recognition of DWG as a trademark. 

Ans: No, because the survey made no distinction between DWG as a trademark and as a file format name, except in two cases. And then the dagger: "The survey asked the wrong questions."

As for the declarations (statements submitted by employees and non-employees), they suffer the same problem -- failing to distinguish DWG as a file extension name or as a trademark for goods. The USPTO points out that some declarants contradict themselves. And then the dagger: "It is not understood how these declarants can claim that DWG is associated exclusively or universally with applicant while at the same time acknowledging that DWG is also is  used by others as a file format name."

5. Whether third-party uses of DWG inure [acustom] to applicant’s benefit in evaluation  the acquired distinctiveness of DWG. 

Ans: No. Because software like ArchiCAD uses .dwg and EasyDWG uses it in the name, does not mean Autodesk gets its registration.

6. Whether foreign registrations of applicant’s DWG marks or third-party registrations for marks which are also file format names support the registrability of applicant’s marks.

Ans: No, because foreign registrations have no effect in the USA. Also, extensions that have been registered, like FBX and DGN, have each to be considered on their own merits.

7. Whether dictionary definitions of DWG support the registrability of  applicant’s marks. 

Ans: No, because (a) the dictionary definitions are outdated and (b) Autodesk disavowed .dwg in that law suit they brought against SolidWorks.

 

In Summary

Applicant does not control the use of DWG by others, either as a  trademark or as a file format name.

Have any three letters ever been more expensive?

 

Comments

[Owen Wengerd]

Have any three letters ever been more profitable? For the lawyers, I mean.

[Steve Johnson]

Our Subscription dollars, hard at work.

[Dave Gomersall (Johannesburg)]

My one work colleague's initials are “DWGS”. It becomes a bit of a joke when clients receive drawings done by him. After reading this, I told him to go to the patent office in case Autodesk decide to add the “S” behind their file format..