The United States Patent and Trade Mark Office decided last month that DWG is indeed not a name that can be registered as a trademark. As it has been saying all along -- and along with interveners like SolidWorks and Open Design Alliance -- the USPTO repeats that DWG is a description of a file type. In their words:
DWG is merely descriptive of applicant’s goods under Section 2(e)(1) of the Trademark Act for two reasons: (1) DWG is a recognized abbreviation for “drawing," and (2) .dwg is a file format used for computer-aided design (CAD) drawings made both with applicant’s CAD software and others’ CAD software.
The USPTO then goes through Autodesk's arguments (or rather, the arguments put forward by their lawyers, Wilson Sonsini Goodrich & Rosati) one by one:
- BetaBatt could not register DEC, since it stood for “direct energy conversion,” a type of battery.
- Thomas Nelson could not register NKJV, since it stood for “new King James version,” a type of Bible.
- Autodesk had conceded that .dwg was a file extension used by industry.
- DWG is legally equivalent to .dwg.
- An Autodesk survey ("Do you associate the name or term ‘DWG’ with design software from any particular company or companies?") asked the wrong question, since it was not clear whether DWG was a trade mark, a file extension, or something else.
- Although Autodesk argued that there was no difference between DWG as trade mark or file format, the USPTO said, "The law is otherwise." It must only be a mark, not also a file extension.
- In any case, the 43% who associated DWG with Autodesk was not a compelling number.
- "The fact that applicant’s goods may be popular is irrelevant to the issue of whether consumers recognize DWG as a trademark for the specified goods."
- Autodesk contradicted itself, saying at one point it used .dwg since the early 1980s, and at another point since 2005.
- A chart showing “Autodesk products featuring DWG technology” failed to distinguish between software bearing DWG as a trade mark and that using DWG technology.
- Two out five icons submitted by Autodesk did not include DWG; Autodesk used icons with DWG since 2003 but "did not include it on its lengthy lists of trademarks on its website until 2007."
- Again, DWG did not appear as a trade mark on Autodesk's Web site until 2007. "Also, it is unlikely that people look through long lists of trademarks on websites."
- Although five dictionaries suggest DWG is proprietary to Autodesk, "these definitions are now outdated [as Autodesk] disavowed any proprietary rights in .dwg as a file extension designation, as indicated in the Autodesk, Inc. v. Dassault Systemes Solidworks."
- Even through Autodesk was successfully in trade marking DWG in Canada, Australia, Japan, China, Spain, Mexico, and the Benelux countries, this has no bearing on the USA.
- A number of non-employees declared that "I believe purchasers and users of CAD software primarily associate the term DWG with Autodesk software." But the USPTO points out that none of them distinguished between file format and trade mark.
- In any case, statements by a number of them admited that other software vendors also use DWG. "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."
- When Autodesk had argued that "its use of DWG as a file format name is use analogous to trademark use," the USPTO said this applies only to determine priority (who first used it) and not distinctiveness (who only uses it).
- In any case, this "use" argument matters not, since Autodesk had used DWG since the early 1980s, but didn't try to trade mark it until two decades later.
- Autodesk had bought out the name RASTERDWG from softelec, but USPTO was unimpressed, because other companies also have DWG in their product names, such as AnyDWG, AutoDWG, and EasyDWG.
- Autodesk admitted it had no license agreements with AnyDWG, AutoDWG, and EasyDWG.
- Autodesk's ownership of dwg.com was similarly dismissed.
- This next one puzzled me. Autodesk had listed file format extensions that were granted registered trade mark status, such as Spatial's (?) SAT, Apple's PAGES, and its own FBX. I thought this would be a powerful argument in favor of Autodesk, but the USPTO rejected this argument, because Autodesk's lawyers did not include copies of the actual registrations.
- In addition, none of them were abbreviations of descriptions, and it wasn't known if others used these file formats.
- Autodesk countered a 2008 response from USPTO, which had said that Autodesk "lost" the rights to DWG. But now the USPTO says it did not mean that Autodesk lost the rights; rather, Autodesk failed to claim the rights when it had the chance to. Since the early 1980s, many others used DWG, and so Autodesk lost the right to registering DWG.
In conclusion, the USPTO states:
Applicant does not control the use of DWG by others, either as a trademark or as a file format name. While applicant created the .dwg file extension designation, it does not have proprietary rights thereto. Further, others have used and continue to use DWG-related marks, resulting in applicant being unable to claim exclusive rights to DWG-related marks.
Now, Autodesk does have six months to respond in a way that fully satisfies the problems addressed in last month's decision. Otherwise, the decision is FINAL.
The USPTO added an appendix that lists the many uses of DWG, such as "designated work group," "daily weight gain," and "dead white guy."