Autodesk has no trademark on DWG?
September 26th, 2008
Autodesk has recently filed a lawsuit against Dassault Systemes SolidWorks Corp (DS SolidWorks) for trademark infringement of its use of the letters DWG in the name of product, websites, application within marketing material, etc. (Autodesk’s lawsuit also involves claims regarding the word REAL in relation to a CAD package, among other business practice issues that I’m not going into at this time. This article is specially about use of DWG.) I am all in favor of respecting trademark owners. However, Autodesk does not possess any such trademark.
They did try and failed to get a trademark for DWG a couple of years ago. They failed because they never planned on protecting the term when it was created decades ago. They waited all the way until the end of 2006 to try to establish it as a trademark. By then, others have already used this within their trademarks. By any account, that is far too late. At a bare minimum, assuming the term was previously trademark-able, it seems that Autodesk has demonstrated a lengthy period of inaction in the effort to establish DWG as a term or brand.
As of this year, Autodesk’s attempt to establish the trademark DWG within the U.S. has failed based on the facts that DWG is a file format, Autodesk is not the exclusive source of files with the format name of DWG, Autodesk does not control the use of DWG by others as either a trademark or a file format name, and no distinction exists that differentiates DWG use as a trademark or a file format name. According to the notice on their filing, all of these facts show that Autodesk’s claim to DWG is insufficient to establish distinctiveness required for a trademark.
So, wha’s this lawsuit all about? In the lawsuit, Autodesk is trying to gain control of the use of DWG as a trademark while presumably relinquishing control of it as a name for a file format. This seems to be a far stretch to say the least. This attempt is a classic chicken-and-the-egg scenario. They can’t claim the trademark since they haven’t previously established it as such. To establish DWG as a trademark, the are suing others who use the term. The defendants of their lawsuits will reference the fact Autodesk had their chance to claim a trademark for DWG, but never did so until recently. All DS SolidWorks has to say is their attempt to trademark DWG has failed and they waited two decades to even try register it as such, so they cannot now try to enforce their control over it.
Here’s the clincher, there are four non-Autodesk CAD products that currently have DWG as part of their trademarks, including DS SolidWorks’ DWGEditor. The problem for Autodesk is so bad that five additional attempts to trademark terms using DWG within the name have so far been unsuccessful for Autodesk. The ironic thing about this is that Autodesk’s AutoCAD DWG file format is proprietary. However, they own the format as AutoCAD, not DWG. AutoCAD is the brand with its trademark well established. This is where Autodesk focused their efforts. It does seem they didn’t understand the value of DWG until it was far too late.
DS SolidWorks is not Autodesk’s first target in this battle to gain control over DWG. They first went after the rather defenseless Open Design Alliance, which is not even an actual competitor. The result was apparently an out of court settlement in which no claims to DWG were recognized or denied. With this presumably unsuccessful case behind them, they are going after DS SolidWorks? This seems tenuous at best. Personally, my opinion is that it is just too little, too late.
Autodesk’s brand is and always has been AutoCAD. DWG is the file format name for AutoCAD (and other software and software formats), and it is not its own brand. At this point, it seems it never will be is own brand.
Autodesk litigation
Categories: Editorial, News | Tags: autocad, Autodesk, brand, dwg, lawsuit, trademark
“DWG is the file format name for Autocad”???
I would be inclined to say .dwg was simply chosen as the file extension – for almost a commonsense reason; it was already a widely used abbreviation for a ‘drawing’ – and using the ‘extension’ as a way of identifying the file type has meant DWG has become know as the ‘file format’ thru’ conversation not by design.
Read, ‘The Autodesk File’ by John Walker for an insight to how ‘file type extensions’ were chosen and, as an aside, how a user is refered to as a “gonzo”.
Can I also add, if you are not also aware of it, that Autodesk have trademark applications in place in several other countries, ours, Australia, included.
Additionally, the combination of letters ‘dwg’ are detailed in our drawing standards – long before Autodesk’s or its use of these letters as a file extension – for use as an abbreviation of the word ‘drawing’.
Raising the question, if Autodesk were successful, in getting the trademark application accepted, would they then tell our standards people to remove it from the standard and to instruct we users of the standard to cease and desist using an abbreviation that has been in place for countless years?
We posted the actual complaint filed by Autodesk with the US district court at CADCAMNet. It is a free article, available to non-subscribers. It is interesting reading, if just to marvel how someone could write it with a straight face. I guess that’s why lawyers make the big bucks.
The trademarking of the “DWG” name is still underway, according to the Trademark Office records. Do the trademark laws protect them while the application is pending? I wonder…
Janet,
The answer is yes, if you start out using the unique item as a trademark from day one. One issue with DWG is that it is not unique to Autodesk since they derived it from the national standards. A second and third issues are that they did not create it as a trademark from day one AND they waited two decades to try to do so now. These issues alone are enough to kill their claim to it. Big companies have lost their trademarks for much less. Here Autodesk never even claimed it in the first place, until years after the fact.
They open their claim with the DWG trademark issue, but that’s not the heart of their claim. They are making overall general accusations against DS/SW’s marketing practices. That claim is a little stronger, but still on pretty shakey ground. As stated in the article, I didn’t address that portion of the suit.
[...] in September 2009, I wrote about a lawsuit brought against DS SolidWorks by Autodesk. In that lawsuit, Autodesk tried to enforce their claim over the term DWG by attempting to [...]