06 June 2010

File Extensions cannot be Trademark Protected in the US

Well-known US CAD company Autodesk Inc. holds, inter alia, pending “DWG” word mark application (No. 78 852 798) claiming “computer software for [...] creation and manipulation of engineering and design data, particularly adapted for engineering, architecture, manufacturing, building, and construction applications [...]; CAD software; computer software for animation, graphics and design modelling applications”. "DWG" is an acronym of the term “drawing” and used as a generic and merely descriptive term for Autodesk's CAD file format. 

As of June 22, 2008, this registration proceedings as well as a number of parallel DWG-related trademark applications of Autodesk were suspended by the USPTO due to the pending trademark cancellation petitions Autodesk had filed against Open Design Alliance (No. 92 047 002) and Dassault Systemes SolidWorks Corporation (No. 91 170 857), to confront the fact that Autodesk's competitors have increasingly used "DWG" in various forms for their own software product names, and in marketing campaigns aimed at Autodesk customers, whereas the final disposition of these proceedings could affect the registrability of Autodesk's DWG trademark. In the notice of suspension the USPTO notified Autodesk about the following concers that may oppose to the registration of the DWG word mark:
  1. DWG is a file format;
  2. Applicant is not the exclusive source of files with the format name DWG;
  3. Applicant does not control the use of DWG by others, either as a trademark or as a file format name;
  4. The submitted survey does not reflect recognition of DWG as a trademark, since no distinction was made between use as a trademark and use as the name of a file format.
Later, on March 16, 2010 and May 21, 2010 two Letters of Protest were filed, both from the Office of the Deputy Commissioner for Trademark Examination Policy. Both protests have been found
relevant and supporting a reasonable ground for refusal according to 15 U.S.C. § 1052 (e) (1), requiring that “merely descriptive or deceptively misdescriptive” trademarks shall be refused. 

With the letter of protest of March 16, 2010, extensive evidence (140 pages) has been submitted as to possible descriptiveness and/or genericness of the acronym “DWG” due to its functional use as file extension, based on the fact that file extensions are functional and 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.

The letter of protest of May 21, 2010 relates to US case 3:08-cs-04397 (Autodesk vs DS SolidWorks) pending in the Northern District of California, in which Autodesk sued SolidWorks for acts of unfair competition including alleged infringement of Autodesk's “DWG” trademark due to SolidWorks' usage of the characters “DWG” as part of software product names, domain names and the like (cf. Document 1, Complaint, of Autodesk vs DS Solid Works, filed on September 19, 2008). To resolve the matter, Autodesk and SolidWorks have meanwhile each agreed to dismiss all claims and have entered into a confidential settlement agreement (see here).

In that case, Autodesk especially complained about SolidWorks' use of the “.dwg” file extension without being authorised and/or enabled to do so as a member of the “Autodesk Developer Network” or under the “RealDWG” licensing program. Autodesk respectively argues that any usage of the “.dwg” file extension not being under their control would impair Autodesk's reputation for its DWG technology, since unauthorised usage of the DWG file format would not guarantee full interoperability with Autodesk's flagship software AutoCAD.

Supplementary to this competition law related argumentation, Autodesk took the view that the “.dwg” file extension is recognised by design professionals as the name of Autodesk's proprietary DWG technology and thus is primarily associated with Autodesk and AutoCAD. As a result, Autodesk claimed that its pending DWG trademark also covers the usage of the “.dwg” file extension since “DWG” allegedly is so well-known as identification of Autodesk's products and technology, that design experts do not recognise a functional or descriptive meaning of “.dwg” but instead associate the file extension with Autodesk.

Document 241 of Autodesk vs DS SolidWorks, filed on December 31, 2009, has been attached to the letter of protest of May 21, 2010 since it not only summarises SolidWorks' counter arguments, according to which using the “.dwg” file extension is totally functional and Autodesk thus cannot have the rights to a functional “DWG” trademark (doc 241, p. 2, lns. 12-22), but also clarifies the view of competent US Judge William Alsup on these issues. In support of SolidWorks' view, Judge Alsup took the positition that 
ownership of file extension designations cannot be appropriated under US Trademark Law (i.e. the Lanham Act), since file extensions are inherently functional, and functional uses cannot be trade-marked. It is stated that computer programmers and computer users should be free to designate file extensions as they see fit, without the fear of infringing trade-marks. 
Since Autodesk thus has no trademark rights covering a “.dwg” file extension, Judge Alsup suggested that Autodesk should disavowe any use of the mark in functional areas, but had limited it to just product names as such that he ordered that Autodesk expressly disavows
any even arguably functional use of DWG, including the use of DWG as a file extension, [i.e.] anyone in the world is free to use “.dwg” as a file extension as far as Autodesk is concerned [such that] there is no concern that [Autodesk] will obtain a monopoly over the .dwg file extension and prevent its use in the industry (doc 241, p. 5, lns. 14-17).
and further emphasised that 
Autodesk disavowed any and all ownership of its putative [US] word mark DWG with respect to its use by anyone as a computer file extension, regardless of the format of the file in question (doc 241, p. 6, lns. 18-26).
The following quite remarkable conversation finally lead to this disavowal (doc 241, p. 3):
JUDGE ALSUP: I want -- you're skating by something that's very important to me. So I want to get a clear answer. All right? Will you disavow, from here to eternity and for the rest of the universe, that the world has a right to use .dwg as a file extension, and you're not going to try to assert, here or anywhere else, that that use as a file extension violates any law? 

MR SABRI (Autodesk Represenmtative): Your Honor, it may be the case it violates patent law. We're not addressing that today. I will state --

JUDGE ALSUP: You will be in trouble if you don't give me -- listen. If you are trying to monopolize .dwg, you and your company are in big trouble.

MR SABRI: We absolutely are not, your Honor.

JUDGE ALSUP: Well, then disavow it.

MR SABRI: Autodesk cannot --

JUDGE ALSUP: You're not disavowing it?

MR SABRI: I am disavowing it, your Honor. Autodesk cannot state claims against functional uses of .dwg, and the distinction between a word mark DWG and the functional uses I believe will be very clear by this presentation.

JUDGE ALSUP: I want to hear you say we disavow it.

MR SABRI: We disavow any claims against functional uses of the .dwg, your Honor.

JUDGE ALSUP: Thank you.
Regardless of whether or not Autodesk's DWG trademark application will be rejected in the end, any competitor (in the US) is thus expressly allowed to use “.dwg” as file extension regardless of the level of compatibility of such files with those “.dwg” files generated by Autodesk's or their licensee's software products. But this would have been the case anyway, even without Autodesk's disavowal, which may turn out to be the only way to save the trademark application from refusal due to its "merely descriptive or deceptively misdescriptive” character according to 15 U.S.C. § 1052 (e) (1)

Consequently, independent of any such disavowal, the evidence and arguments brought forward in the two letters of protest (dated March 16, 2010 and May 21, 2010) filed in the registration proceedings at least demonstrate or even substantiate that no trademark may cover use of any arbitrary sequence of characters as file extension whatsoever (at least in the US), since 
file extensions are functional [since their primary purpose is to tell the computer the type of the file it is handling], and functional uses cannot be trademarked. To rule otherwise would invite a clog on commerce, given the millions of software applications. The limited universe of extension permutations would soon be encumbered with claimants and squatters purporting to own exclusive rights to file extensions.

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