Evan on Engineering Software

After about 24 years, it appears that Autodesk has decided that they want the exclusive rights to use the term "DWG." The United States Patent and Trademark office shows two trademark applications filed for DWG (one for a mark, and one for the word) by Autodesk, on April 3 -- just three weeks ago.

The term DWG has been in use since the late 1970s, when it was the extension used for files created by the Interact program, created by Mike Riddle. Mike never claimed a trademark for DWG, as it seemed rather silly at the time.

Apparently, Autodesk thought it silly at the time too -- they never actually licensed the DWG format or name from Mike (they only licensed Interact, which was the basis for AutoCAD), and they never trademarked the name themselves.

In 1996, Autodesk filed a trademark application for DWG Unplugged, where they said "No claim is made to the exclusive right to use "DWG" apart from the mark as shown." They said the same thing with their application for "Max DWG" in 1998.

In their new application for the DWG word mark, Autodesk claims it was first used on November 28, 2005. If you've been around the CAD industry for a long time (say, since last October), you might wonder how this can be. I wondered too. I checked in the Trademark Manual of Examination Procedures, and found that the dates of use in an application must be supported by an affidavit or declaration under 37 C.F.R. §2.20 -- which makes a willfull false statement punishable by fine or imprisonment.

Given that the date of first use of DWG was about 1979, and that Autodesk's first use of DWG in commerce was in 1982, I believe that there may be a little problem with this application.

What's funny is that on Friday, March 31, I pointed out that Autodesk didn't have any IP rights (including patent, copyright, trademark, and trade secret) in DWG -- and on Monday, April 3 (the very next business day), Autodesk's attorneys filed these trademark applications. (And I used to wonder if anyone actually read this blog!)

Actually, I don't know that I directly precipitated this action on Autodesk's part. On March 7, the term DWG on Autodesk's website did not have a "TM" after it. On March 31, it did -- however, it was not then listed as a trademark on Autodesk's trademark page. It is now. In fact, there is now a rather long description of exactly how one may not use the term DWG, which is so interesting that I'm compelled to repeat it here (subject, of course, to the fair use provisions of the Copyright Act):

DWG TRADEMARK GUIDELINES

DWG is the name of Autodesk’s proprietary file format and technology used in AutoCAD® software and related products. Because of the prominence of the DWG name in connection with AutoCAD-based products, and the considerable marketing and sales of AutoCAD products over the years, the DWG name has come to be closely associated with Autodesk. DWG has served and now serves as an Autodesk trademark. The status of DWG as both an Autodesk® file format name and an Autodesk trademark means that certain uses of DWG, without prior permission from Autodesk, are permissible while others are not.

These are illustrative guidelines on proper use of the name DWG:

• You may cite to DWG as a file name in a referential phrase such as "works with DWG," "for use with DWG," "for DWG," or "compatible with DWG.” If you do so, please disclose that DWG is the native file format for Autodesk’s AutoCAD® software.
• Any phrases with references to DWG must be accurate and not misleading.
• You should not adopt or use product, service, or company names that could cause confusion about affiliation with or endorsement by Autodesk. Do not, for example, cite to the DWG name or to any other Autodesk trademark at the beginning of, or otherwise as the most prominent part of, your product, service or company name.
• You should maintain a visual distinction between your company and product name, on the one hand, and DWG or any other Autodesk trademark, on the other. For example, Acme Co.’s “ALPHABETA for DWG” is permissible.
• You should not create or use any logos that include DWG or any other Autodesk trademark unless your use is pursuant to a license from Autodesk. For example, you should not create your own DWG compatibility logo without permission from Autodesk.
• You should not use Autodesk’s DWG logo without a license from Autodesk. This is Autodesk's DWG logo: [see their web site for this]
• You should only use Autodesk’s DWG-related trademarks, such as DWG TrueView™ and DWG TrueConvert™, RealDWG™ in compliance with Autodesk’s general trademark guidelines, a copy of which is available on Autodesk’s website (www.autodesk.com).
• You should not state or suggest that you have, or are claiming, rights in the DWG name or any other Autodesk trademark.
• You should not apply to register as trademarks any names incorporating DWG.

You should not register any Internet domain names incorporating DWG, unless such domain names are not misleading or confusing and unless there is clear and conspicuous trademark attribution to Autodesk on the homepage of the corresponding website.