Wednesday, November 05, 2014

E.D. Va Affirms TTAB: DWG Lacks Acquired Distinctiveness for CAD Software

In a civil action for review under Section 1071(b) of the Trademark Act, the United States District Court for the Eastern District of Virginia has affirmed the Board's ruling (here) in In re Autodesk, Inc., Serial Nos. 78852798, 78852808, 78852813, 78852822 and 78852843 (September 30, 2013) [not precedential], upholding the USPTO's refusals to register DWG, DWG & Design, DWG TRUEVIEW, DWG TRUECONVERT, and DWG EXTREME for "computer software for data management and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" on the ground that DWG is merely descriptive of the goods and lacks acquired distinctiveness. Autodesk, Inc. v. Lee, Civil Action No. 1:13-cv-01464-AJT-JFA (October 30, 2014).

The parties filed cross motions for summary judgment and stipulated that the Court could resolve any material factual disputes without any further proceedings. Autodesk introduced evidence in addition to that in the TTAB record, and so the court reviewed the record de novo and acted as the finder of fact based on the entire record.

With little discussion, the court deemed DWG to be, at best, a descriptive mark. "[I]t appears to the Court that Autodesk uses and promotes the DWG label typically in a descriptive sense, to indicate software that works, or is compatible with, dwg formatted files."

The question then was whether DWG had acquired distinctiveness. Applying fourth circuit law, the court found that "Autodesk has not adequately demonstrated consumer perception that DWG, standing alone, signifies an Autodesk product, as opposed to the DWG digital formatting of products, even though the consumer may think many such products are issued by Autodesk."

Autodesk pointed to its $40-60 million per year in advertising and marketing expenditures, but the Board found no evidence that DWG was promoted as a stand-alone brand name. Autodesk's survey evidence, which purported to show more than 40% association with Autodesk, was fundamentally flawed in that the surveys did not precisely establish what the respondents understood DWG to mean: whether a product labeled DWG meant that it is an Autodesk product, or that the product has functionality or characteristics of software with the .dwg formatting popularized by Autodesk.

The sales success of Autodesk's products did not establish acquired distinctiveness since the products were not branded with DWG alone, "but rather with branding that incorporates DWG as part of a larger mark or with other designs or marks."

Autodesk's evidence of unsolicited media coverage was not probative. Its success in enforcing its trademarks when others relinquished their rights does not mean its claims were meritorious, since settlements are often motivated by factors other than the validity of the claims asserted. Similarly, the licensing of software developers who obtain the right to use the DWG logo does not establish acquired distinctiveness, since the motivation for taking a license may be unrelated to any acknowledgement that DWG, standing alone, is a source indicator.

The court concluded that Autodesk had failed to make a prima facie case of distinctiveness, and so it affirmed the TTAB's ruling

Read comments and post your comment here

TTABlog note: Will the USPTO seek costs?

Text Copyright John L. Welch 2014.


At 10:02 AM, Anonymous Joe Dreitler said...

I suspect that the USPTO will seek costs. If they do, this is one where they should get them.I think that the answer to WYHA is NO. If you didn't think that the CAFC would reverse, then there is more than a bit of gamesmanship appealing to the Dist Ct. in the ED Va. Secondary trademarks are just that - absent a client who will spend lots of $$ to market and promote them. And when you pick, like most marketers do, descriptive terms, initials, etc., then do not expect to have it become without any expenditures something that should be protected. Sounds like they spent more on legal fees than marketing the initials DWG as a brand name.

At 1:15 PM, Anonymous Anonymous said...

Autodesk uses the term generically on its own website. This is a WYHA, big-time. And the answer is a resounding "no." But I suppose if the client insists, and pays the bills on time ....

At 2:56 PM, Anonymous Anonymous said...

What is Autodesk's next recourse...?


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