Evan on Engineering Software

Owen Wengerd wrote today about Autodesk's request that the US Patent and Trademark office cancel the Open Design Alliance's trademarks for OpenDWG.

Ralph Grabowski reported on this, saying "I suspect Autodesk will win the request, because DWG quite clearly belongs to them."

I wonder sometimes if Ralph says such things because it's fun, and gets him lots of readership, or because he actually believes them?

Last year, about 23 years after Autodesk started selling CAD software, the company finally applied for a trademark on the term "DWG".  Yet, they didn't apply for a trademark on the term DWG as it relates to file formats (which is how the term has been used for all these years.)  They applied for a trademark on the term DWG for use in conjunction with computer software.

You may wonder why Autodesk never applied for a trademark on DWG as the name of their file format.  The answer is that they couldn't.  File format names are functional, in that computers use them to identify formats, and associate them with application programs.  It is a fundamental rule of trademarks that they are not issued on symbols or marks that are entirely functional.

Autodesk has created some real confusion, by convolving the use of DWG as a program name with its use as a file format name.

For your reading pleasure, I'm going to excerpt here the correspondence between Autodesk and the USPTO regarding the DWG trademark application. If you'd like to read it in full detail, you can find it on the USPTO web site.  I've kept the full text, typos and all, of all the relevant parts.  I've also highlighted some of the sections that I find particularly interesting:

Autodesk Trademark Application, April 2006:

MARK SECTION

MARK: DWG
STANDARD CHARACTERS: YES
MARK STATEMENT: The mark consists of standard characters, without claim to any particular font, style, size, or color.

OWNER SECTION

NAME: Autodesk, Inc.

GOODS AND/OR SERVICES SECTION

INTERNATIONAL CLASS: 009
DESCRIPTION: computer software for data management and creation and manipulation of engineering and design data, particularly adapted for engineering, architecture, manufacturing, building, and construction applications, together with instruction manuals sold as a unit; computer-aided design software; computer software for animation, graphics and design modeling applications
FIRST USE ANYWHERE DATE: At least as early as 11/28/2005
FIRST USE IN COMMERCE DATE: At least as early as 11/28/2005

FILING INFORMATION

SUBMIT DATE: Mon Apr 03 17:11:26 EDT 2006

USPTO Action, September 2006:

MERE DESCRIPTIVENESS REFUSAL

Registration is refused because the proposed mark merely describes applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq. A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b). A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1). Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).

 

The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract. In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999) (Board found that DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk;” it is unnecessary that programs actually run “concurrently,” as long as relevant trade clearly uses the denomination “concurrent” as a descriptor of this particular type of operating system); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) (“Whether consumers could guess what the product is from consideration of the mark alone is not the test”); TMEP §1209.01(b).

Applicant is seeking to register DWG for “computer software for data management and creation and manipulation of engineering and design data, particularly adapted for engineering, architecture, manufacturing, building, and construction applications, together with instruction manuals sold as a unit; computer-aided design software; computer software for animation, graphics and design modeling applications.” DWG is type of format used in CAD design software. See attached website evidence and copies of two registrations which include DWG which are on the Supplemental Register. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i). As such, applicant cannot have exclsuive rights to it.

Autodesk Response, March 2007:

Applicant Autodesk, Inc. (“Applicant”) hereby responds to the Office Action mailed on September 14, 2006.

I. MERE DESCRIPTIVENESS REFUSAL

A. Acquired Distinctiveness under Section 2(f)

The Examining Attorney has refused registration of the mark DWG on the ground that it merely describes Applicant’s goods. Applicant submits that the evidence the Examining Attorney has presented is not sufficient to establish mere descriptiveness pursuant to Section 2(e). Although Applicant maintains that the mark is not descriptive of its goods, Applicant elects to submit evidence that the mark has acquired distinctiveness through extensive use, promotion and publicity.

To show secondary meaning, an applicant “must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11, 214 U.S.P.Q. 1, 4 n.11 (1982). A proper evidentiary showing of secondary meaning “includes evidence of the trademark owner’s method of using the mark, supplemented by evidence of the effectiveness of such use to cause the purchasing public to identify the mark with the source of the product.” Id. (quoting In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 1125, 227 U.S.P.Q. 417, 422 (Fed. Cir. 1985)).

B. Survey Evidence and Other Actual Evidence of Distinctiveness

Together with this Response, Applicant submits actual evidence establishing distinctiveness of the DWG mark. Actual evidence of acquired distinctiveness can include, inter alia, survey evidence, evidence of long use of the mark, evidence of increasing revenues associated with the mark, and evidence of public or trade recognition of the mark. See TMEP § 1212.06.

1. Survey Results Establish Secondary Meaning

“An expert survey of purchasers can provide the most persuasive evidence of secondary meaning.” 2 McCarthy on Trademarks and Unfair Competition § 15:30 (4th ed.) (quoting Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 12 U.S.P.Q.2d 1740, 1744 (9th Cir. 1989). Accord Co-Rect Products, Inc. v. Marvy! Advertising Photography, Inc., 780 F.2d 1324, n.9, 228 U.S.P.Q. 429, n.9 (8th Cir. 1985) (“Consumer surveys are recognized by several circuits as the most direct and persuasive evidence of secondary meaning.”).

Applicant submits the survey evidence demonstrating acquired distinctiveness of the mark DWG via the declaration of a survey expert from the Field Research Corporation in San Francisco, California, E. Deborah Jay, together with accompanying exhibits (“Jay Decl.”). The Field Research Corporation survey (the “Field Survey”) asked whether the persons who made the software purchasing decisions in companies that purchase, license, or upgrade design software (the “decisionmakers”) associate “DWG” with design software from a single company or source, and if so, whether they associate it with design software from Applicant and/or AutoCAD® (Applicant’s well-known product) exclusively. See Jay Decl. ¶ 2. The Field Survey found that 43% of decisionmakers associated “DWG” with design software from a single company or source, and 42% of decisionmakers said they associated “DWG” with design software from Autodesk and/or AutoCAD® exclusively. See id. ¶ 3.

These results are clearly sufficient to demonstrate the secondary meaning of the DWG mark. See McNeil-PPC, Inc. v. Granutec, Inc., 919 F. Supp. 198, 202 (E.D.N.C. 1995) (finding a “strong association” sufficient for secondary meaning when a survey revealed that 41% of respondents associated the product with a single brand, and 38% of respondents recognized the product as Tylenol). “Various courts have held that such a percentage of recognition (approximately 30% or more) is probative of secondary meaning.” Shuffle Master Inc. v. Awada, 2006 WL 2547091 *3 n.1 (D. Nev. Aug 31, 2006) (finding secondary meaning when survey revealed that 35% of respondents associated the mark with a single source) (citations omitted).

2. Actual Evidence Establishes Secondary Meaning

Applicant’s evidence of use and publicity of the name and mark DWG is submitted via the declaration of a company officer, Mark Strassman, Vice President, Marketing, together with accompanying exhibits (“Strassman Decl.”). The Strassman Declaration demonstrates that relevant consumers recognize the strong association between DWG and Applicant:

● One hundred percent of the Fortune 100 companies use Applicant’s products. Applicant itself is a Fortune 1000 company, providing goods and services to over 7 million registered users in all 50 states and worldwide. (Strassman Decl. ¶ 4).

● Applicant has been using DWG continuously since the early 1980s. (Strassman Decl. ¶ 11).

● Since 1985, Applicant has realized over $10 billion in revenue from software featuring the DWG file format. (Strassman Decl. ¶ 12).

● Applicant maintains the web site www.autodesk.com, which prominently features Applicant’s DWG mark and gets approximately 775,000 page views and 115,000 unique visitors each business day. (Strassman Decl. ¶ 16).

● A search for articles in the Lexis-Nexis news database referring to DWG and also referencing AutoCAD® or Applicant revealed over 2,200 articles. A similar search in Westlaw’s news database revealed over 1,800 articles. (Strassman Decl. ¶ 19).

Applicant has used DWG in various manners for more than 25 consecutive years, and a large number of consumers are familiar with the DWG mark and have come to associate it closely with Applicant. Accordingly, Applicant requests that the Examiner accept Applicant's claim of registrability under Section 2(f) of the Trademark Act. See, e.g., Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572 (Fed. Cir. 1988) (evidence of several years of continuous and exclusive use of and substantial promotion and sales sufficient to establish acquired distinctiveness of guitar-shaped symbol as trademark for guitars).

 

USPTO Action, May 2007:

In response to the mere descriptiveness refusal under Section 2(e)(1) of the Trademark Act, applicant has submitted evidence that the mark has acquired distinctiveness and is entitled to registration under Section 2(f) of the Trademark Act. For the reasons set forth below, the evidence is deemed insufficient to establish acquired distinctiveness and the refusal to register under Section 2(e)(1) is maintained and continued.

Applicant is seeking to register DWG for “computer software for data management and creation and manipulation of engineering and design data, particularly adapted for engineering, architecture, manufacturing, building, and construction applications, together with instruction manuals sold as a unit; computer-aided design software; computer software for animation, graphics and design modeling applications.” DWG is type of format used in CAD design software. See evidence attached to initial Office action.

In considering a claim of acquired distinctiveness, the issue is whether acquired distinctiveness of the mark in relation to the goods or services has in fact been established in the minds of the purchasing public, not whether the mark is capable of becoming distinctive. In re Redken Laboratories, Inc., 170 USPQ 526 (TTAB 1971); In re Fleet-Wing Corp., 122 USPQ 335 (TTAB 1959).

In support of its claim of acquired distinctiveness, applicant has submitted a survey and a declaraton from applicant’s vice –president of marketing. The survey, as applicant notes:

found that 43% of decisionmakers associated ‘DWG’ with design software from a single company or source, and 42% of decisionmakers said they associated ‘DWG’ with design software from Autodesk and/or AutoCAD® exclusively.

Applicant argues that the survey must be considered to establish acquired distinctiveness because it exceeds the percentages found to warrant registration in other situations. However, the kind and amount of evidence necessary to establish that a mark has acquired distinctiveness in relation to goods depends on the nature of the mark and the circumstances surrounding the use of the mark in each case. Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988); Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); In re Capital Formation Counselors, 219 USPQ 916 (TTAB 1983).

It is certainly true that survey evidence is relevant in establishing acquired distinctiveness. As indicated in the Trademark Manual of Examining Procedure:

…. the survey must show that the public views the proposed mark as an indication of the source of the product or service. Boston Beer Co. L.P. v. Slesar Bros. Brewing Co., Inc., 9 F.3d 175, 28 USPQ2d 1778 (1^st Cir. 1993) (survey found insufficient to establish acquired distinctiveness where survey demonstrates product-place association rather than product-source association). The applicant must document the procedural and statistical accuracy of this type of evidence and carefully frame the questions contained therein. See In re E.I. Kane, Inc., 221 USPQ 1203, 1206 (TTAB 1984) ("[T]he survey asked the wrong question. The issue is not whether the term 'Office Movers' identifies a specific company. Rather, it is whether the term 'OFFICE MOVERS, INC.' identifies services which emanate from a single source.");

TMEP section 1212.06(d) (“Survey Evidence, Market Research and Consumer Reaction Studies”).

The survey evidence can be given little weight because “.dwg” is a well-recognized file format for CAD that has been in use for over twenty years. While applicant may have first developed this file format, it is now in use by others. Thus, survey results which show that 43% of respondents “associate” DWG with software from a particular company is not compelling because that familiarity could well be with the file format use of “.dwg” and not with the trademark use thereof. Therefore, the survey can be accorded little weight in establishing the acquired distinctiveness of DWG as a trademark.

Applicant has also submiited a declaration from its vice-president of marketing, which states:

One hundred percent of the Fortune 100 companies use Applicant’s products. Applicant itself is a Fortune 1000 company, providing goods and services to over 7 million registered users in all 50 states and worldwide;

Applicant has been using DWG continuously since the early 1980s;

Since 1985, Applicant has realized over $10 billion in revenue from software featuring the DWG file format;

Applicant maintains the web site www.autodesk.com, which prominently features Applicant’s DWG mark and gets approximately 775,000 page views and 115,000 unique visitors each business day.

The fact that applicant’s goods and website may be popular is irrelevant to the issue of whether consumers recognize DWG as a trademark for the specified goods.

Applicant’s statement that it has been using DWG continuously since the early 1980s is irrelevant. Applicant has claimed first use dates of November 28, 2005, which directly contradicts the statement in the declaration. Obviously, Mr, Strssman is referring to use of “.dwg” as a file format not trademark use of DWG, which is not relevant to the acquired distinctiveness of DWG as a trademark.

While large scale expenditures in promoting and advertising goods and services under a particular mark are significant to indicate the extent to which a mark has been used, proof of an expensive and successful advertising campaign is not in itself enough to prove secondary meaning. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (claim based on annual sales under the mark of approximately eighty-five million dollars, and annual advertising expenditures in excess of ten million dollars -- two million of which were spent on promotions and promotional items which included the phrase THE BEST BEER IN AMERICA -- found insufficient to establish distinctiveness, in view of the highly descriptive nature of the proposed mark); Mattel, Inc. v. Azrak-Hamway International, Inc., 724 F.2d 357, 221 USPQ 302, 305 n. 2 (2d Cir. 1983). The ultimate test in determining whether a designation has acquired distinctiveness is applicant's success, rather than its efforts, in educating the public to associate the proposed mark with a single source. TMEP section 1212.06(b) (“Advertising Expenditures”). Applicant has not demonstrated its success in this regard.

Long use of the mark is one relevant factor to consider in determining whether a mark has acquired distinctiveness. TMEP section 1212.06(a) (“Long Use of the Mark”). But, applicant has not used the DWG as a mark for even two years.

Thus, the evidence is deemed insufficient to establish acquired distinctiveness and the refusal to register under Section 2(e)(1) is maintained and continued.