To: Autodesk, Inc. (trademarks@wsgr.com)

Subject: U.S. TRADEMARK APPLICATION NO. 78852798 - DWG - 5477-TM1001

Sent: 6/9/2011 9:36:41 AM

Sent As: ECOM101@USPTO.GOV

Attachments: Attachment - 1Attachment - 2

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

     APPLICATION SERIAL NO.       78852798     MARK: DWG         

         

*78852798*    CORRESPONDENT ADDRESS:          JOHN L. SLAFSKY                WILSON SONSINI GOODRICH & ROSATI              650 PAGE MILL RD          PALO ALTO, CA 94304-1050              

 CLICK HERE TO RESPOND TO THIS LETTER:http://www.uspto.gov/trademarks/teas/response_forms.jsp

  

 

    APPLICANT:           Autodesk, Inc. 

  

    CORRESPONDENT’S REFERENCE/DOCKETNO:            5477-TM1001            CORRESPONDENT E-MAIL ADDRESS:            trademarks@wsgr.com

 

  

OFFICE ACTION 

STRICT DEADLINE TO RESPOND TO THIS LETTERTO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUSTRECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THEISSUE/MAILING DATE BELOW. ISSUE/MAILING DATE: 6/9/2011 THIS IS A FINAL ACTION. This responds to applicant’s communication filed February 24, 2011.   Applicant has complied with therequirement for further information and documents. Registration has been refused on the ground that applicant’s mark, when applied to applicant’s goods, is

merely descriptive thereof within the meaning of Section 2(e)(1) of the Trademark Act.  Applicant hasresponded to this refusal by claiming that its mark has acquired distinctiveness under Section 2(f) of theTrademark Act.  The application file has been thoroughly reviewed.  While applicant’s remarks and theevidence of record have been given careful consideration, the examining attorney remains of the opinionthat the mark is merely descriptive of applicant’s goods and that applicant has not established that itsmark has acquired distinctiveness under Section 2(f).  Thus, the Section 2(e)(1) refusal based on meredescriptiveness is maintained and made FINAL.  Applicant is seeking to register DWG for “computer software for data management and creation andmanipulation 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 modelingapplications.”    MERE DESCRIPTIVENESS REFUSAL DWG is merely descriptive of applicant’s goods under Section 2(e)(1) of the Trademark Act for tworeasons:  (1) DWG is a recognized abbreviation for “drawing, and (2) .dwg is a file format used forcomputer-aided design (CAD) drawings made both with applicant’s CAD software and others’ CADsoftware.  

As the evidence submitted with the Letter of Protest[1], and referenced in the Office action of August 24,2010, clearly establishes, DWG is a recognized abbreviation for “drawing” (and DWGS for the pluralthereof).  Exhibits 18, 19, 21, 24-26, and 28-32 show use of “dwg” or “dwgs” as abbreviations of“drawing” and “drawings,” respectively.   Also see attached Internet evidence from Acronym Finder. “Drawing” is obviously at least merely descriptive of software used to create drawings, and thus, so isDWG.  An abbreviation, initialism, or acronym of a merely descriptive or generic term is also merelydescriptive or generic if it is readily understood by the relevant purchasers to be “substantiallysynonymous” with the merely descriptive or generic wording for which it represents or stands.   E.g.,Modern Optics, Inc. v. Univis Lens. Co., 234 F.2d 504, 506, 110 USPQ 293, 295 (C.C.P.A. 1956); In reBetaBatt Inc., 89 USPQ2d 1152 (TTAB 2008) (finding DEC substantially synonymous with “directenergy conversion” and thus merely descriptive of a type of batteries); see also In re Thomas Nelson, Inc.,97 USPQ2d 1712 (TTAB 2011) (finding that consumers would recognize the mark NKJV as anabbreviation for “new King James version” and thus is merely descriptive of bibles). As applicant concedes, .dwg is a file extension used for CAD drawings, both by applicant and others inthe industry.   DWG is the legal equivalent of .dwg and therefor merely describes software which assists inthe creation of drawings which use a .dwg file extension.  Thus, DWG merely describes applicant’s goodswithin the meaning of Section 2(e)(1) of the Trademark Act and the refusal thereunder is proper.  SECTION 2(f) EVIDENCE In response to the Section 2(e)(1) mere descriptiveness refusal, applicant has submitted a claim ofacquired distinctiveness under Section 2(f) of the Trademark Act based on the submission of evidence.  Asindicated in the Trademark Manual of Examining Procedure: 

[A]n applicant may submit affidavits, declarations under 37 C.F.R. §2.20, depositions, or other

appropriate evidence showing the duration, extent, and nature of the applicant’s use of a mark incommerce that may lawfully be regulated by Congress, advertising expenditures in connectionwith such use, letters, or statements from the trade and/or public, or other appropriate evidencetending to show that the mark distinguishes the goods or services.

 Establishing acquired distinctiveness by actual evidence was explained as follows in In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125, 227 USPQ 417, 422 (Fed. Cir. 1985):

 An evidentiary showing of secondary meaning, adequate to show that a mark has acquireddistinctiveness indicating the origin of the goods, includes evidence of the trademarkowner’s method of using the mark, supplemented by evidence of the effectiveness of suchuse to cause the purchasing public to identify the mark with the source of the product.

 TMEP section 1212.06 (“Establishing Distinctiveness by Actual Evidence”).   The evidence submitted by applicant in support of its claim of acquired distinctiveness includes: 

consumer survey datadeclarationsuse since the 1980sevidence of use of applicant’s “DWG-related brands” dating to the 1990sregistrations from other jurisdictionssoftware license datamarketing datarevenue dataweb traffic datadictionary definitionstrademark registrations and allowed applications for marks which are also file format names

  CONSUMER SURVEY DATA Applicant claims that a consumer data survey demonstrates that its mark has acquired distinctiveness.  Thesurvey respondents were persons who make the software purchasing decisions for companies thatpurchase, license, or upgrade design software.  The questions referring to DWG were phrased in thismanner: 

My next question concerns the name or term ‘DWG.’   Do you associate the name or term‘DWG’ with design software from any particular company or companies? 

            (IF YES) “With what company or companies/” 

(IF DIDN’T KNOW COMPANY NAMES) “Do you associate the name or term ‘DWG’ withdesign software from one company or more than one company?

 See Deborah Jay declaration, Para. 2 (submitted with response filed March 13, 2007).  The survey, asapplicant notes: 

found that 43% of decisionmakers associated ‘DWG’ with design software from a singlecompany or source, and 42% of decisionmakers said they associated ‘DWG’ with design

software from Autodesk and/or AutoCAD® exclusively.  Because of the fact that .dwg is a file extension popularized by, but not used exclusively by, applicant, thesurvey asked the wrong questions.  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 ofthe product or service. Boston Beer Co. L.P. v. Slesar Bros. Brewing Co., Inc., 9 F.3d 175, 28USPQ2d 1778 (1st Cir. 1993) (survey found insufficient to establish acquired distinctivenesswhere survey demonstrates product-place association rather than product-source association). Theapplicant must document the procedural and statistical accuracy of this type of evidence andcarefully 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 'OfficeMovers' 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 does not show that the public views DWG as an indication of the source of applicant’s goods.  The survey questions were constructed in such a way that it is not clear if the reference to DWG is as atrademark or as a file extension name, or something else.  The survey does not ask the understanding ofrespondents with regard to DWG, e.g. whether it is a trademark or a file extension name.  Because thewords “name” and “term” used in the survey question could encompass use of DWG as a file formatname, this survey does not serve to establish whether consumers of applicant’s goods recognize DWG asa trademark.  Thus, the survey results which show that 43% of respondents “associate” DWG withsoftware from a particular company is not compelling because that familiarity could well be with the fileformat use of “.dwg” and not with the trademark use thereof.   The survey certainly does not establish thatthe respondents understood DWG to be a trademark for applicant’s goods. Applicant, however, argues that it does not make a difference whether the survey respondents recognizedDWG as a trademark or as a file format: 

For purposes of demonstrating reputation and, in particular, acquired distinctiveness, it shouldmake no difference whether survey respondents associate the file format name ‘.dwg’ or the markDWG with Applicant, or both.  The fundamental question is not how reputation was established,but whether reputation has been established and how strong that reputation is.

 Response filed May 12, 2008, page 9.  The law is otherwise. The relevant use must be as a mark, not as afile extension name.  The substantially exclusive and continuous use must be “as a mark.” 15 U.S.C.§1052(f). See In re Craigmyle, 224 USPQ 791 (TTAB 1984) (registrability under §2(f) not established bysales over a long period of time where there was no evidence that the subject matter had been used as amark); In re Kwik Lok Corp., 217 USPQ 1245, 1248 (TTAB 1983) (declarations as to sales volume andadvertising expenditures held insufficient to establish acquired distinctiveness. “The significant missingelement in appellant’s case is evidence persuasive of the fact that the subject matter has been used as amark.”).   TMEP section 1212.05(c) (“Use “as a Mark”).   Simply stated, use other than as a mark is notrelevant for purposes of establishing acquired distinctiveness of the mark.  As indicated above, the evidence must establish that the public views the mark as an indication of source. A file extension name and a trademark are not the same.  Since DWG is also a file extension designation,a survey which does not distinguish between use of the subject term as a trademark or as a file extensionname carries virtually no weight in demonstrating that distinctiveness of DWG as a trademark has been

acquired.  RELEVANCE OF DECLARATIONS AND STATEMENTS MADE THEREIN In addition to the declaration of Deborah Jay regarding the survey, applicant also has submitted thedeclarations of: 

-  applicant’s vice president of marketing, Mark Strassman (filed with response of March 13,2007) -  applicant’s director of Digital Systems Design, Shawn Gilmour (filed with response of February24, 2011) -  five individuals who work in the CAD field but who are not employees of applicant (filed withresponse of May 12, 2008).

  Strassman Declaration In his declaration, Strassman states: 

One hundred percent of the Fortune 100 companies use Applicant’s products.   Applicant itself is aFortune 1000 company, providing goods and services to over 7 million registered users in all 50states and worldwide. Since 1985, Applicant has realized over $10 billion in revenue from software featuring the DWGfile format. 

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

 A search for articles in the Lexis-Nexis news database referring to DWG and also referencingAutoCAD® or Applicant revealed over 2,200 articles.  A similar search in Westlaw’s newsdatabase revealed over 1,800 articles.

 The fact that applicant’s goods may be popular is irrelevant to the issue of whether consumers recognizeDWG as a trademark for the specified goods. See In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d1056 (Fed. Cir. 1999) (claim based on annual sales under the mark of approximately eighty-five milliondollars, and annual advertising expenditures in excess of ten million dollars -- two million of which werespent 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 proposedmark); 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'ssuccess, 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 inproving that consumers recognize DWG as a trademark for applicant’s 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 inthe Strassman declaration.  Obviously, Mr, Strassman 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.  Gilmour Declaration Gilmour refers to a chart of revenue data as being for “Autodesk products featuring DWG technology.”  (Para. 3).  No distinction is made between revenues for goods sold actually bearing the DWG trademarkand those simply featuring DWG technology.  Thus, the revenues generated from the sales of goods withthe mark thereon cannot be determined and the submitted revenue figures therefore do not support theclaim of acquired distinctiveness. Gilmour discusses use of DWG as part of an icon: 

For many years, users of Autodesk’s software products featuring DWG technology have beenpresented with a distinctive DWG icon on their computer screens when saving design and imagefiles created or edited using Autodesk’s products.   Autodesk estimates that the DWG icon hasbeen displayed on the computer screens of millions of software users.”  

 (Para. 5).  The icons are depicted in Exhibit 1.  The first two do not include the letters DWG.  Use of aDWG icon began in 2003.  It is therefore curious that applicant did not include it on its lengthy lists oftrademarks on its website until 2007.  While the icon may have been seen by millions, there is no reason tothink that those encountering the DWG icon viewed the DWG part of it as exclusively referring toapplicant or that it was a trademark of applicant.  Gilmour notes that between September 1, 2010 and October 30, 2010, applicant’s website had 4.7 millionunique users located in the United States.  (Para. 8).  While the website contains a DWG logo, thoseviewing it on applicant’s website at best would associate it with applicant. That is a far cry from themperceiving DWG as a trademark for computer software.    Gilmour refers to the inclusion of DWG-related marks in a list of its trademarks available on its website. Para. 15.  Applicant claims that the presence of DWG on these lists on its website supports its claim ofacquired distinctiveness.  However, the first time that DWG (alone) appears on applicant’s websitetrademark list is 2007, even though applicant’s claimed dates of first use are in 2005.   Also, it is unlikelythat people look through long lists of trademarks on websites.  While such inclusion may show intent,intent is not relevant.  What is relevant is whether matter is perceived as a trademark or as something else(e.g. generic name, file extension name, etc.).  The existence of other DWG-related marks on applicant’strademark lists is not relevant because others also use marks which include DWG. Applicant has made of record five dictionary defintions of DWG, all of which refer to Autodesk orAutoCAD and suggest that DWG is applicant’s proprietary file format.   Gilmour states: 

…. these publishers identify DWG as a format exclusively associated with Autodesk or withAutodesk’s well-known CAD software product, AutoCAD.

 Para 17.   However, these defintions are now outdated.  Applicant has disavowed any proprietary rights in.dwg as a file extension designation, as indicated in the Autodesk, Inc. v. Dassault Systemes SolidworksCorporation, Case No. 3:08-cv-04397-WHA in the United States District Court for the Northern Districtof California. As stated in the Memorandum Opinion on the Use of “DWG” as a File Extension andAutodesk’s Disavowal Thereof, dated December 31, 2009:

 ….Autodesk must stand by its disavowal of trademark rights in .dwg as a file extension – adisavowal that is binding on Autodesk….” (page 8)

 No one has ownership of file extension designations under the Lanham Act because suchdesignations are inherently functional. (Page 6). 

Therefore, these dictionary definitions are irrelevant and cannot serve to support applicant’s claim ofacquired distinctiveness. With the Gilmour declaration, applicant has made of record copies of registrations for DWG issued byCanada, Australia, Japan, China, Spain, Mexico, and the Benelux countries.  It has also submitted proofthat its DWG applications in the United Kingdom and Brazil have been allowed.  Applicant contends thatthese submissions serve to support its claim of acquired distinctiveness.  However, registration in a foreigncountry does not automatically ensure eligibility for registration in the United States. In re Rath, 402 F.3d1207, 1214, 74 USPQ2d 1174, 1179 (Fed. Cir. 2005);  In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292(Fed. Cir. 1987); In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985); OrderSons of Italy in America v. Marofa S.A., 38 USPQ2d 1602 (TTAB 1996).  Thus, the existence of foreignregistrations and allowances for DWG is not relevant to the establishment of acquired distinctiveness ofDWG as a trademark in the United States.  Other Declarations All of the declarations from non-employees submitted with applicant’s response filed May 12, 2008suffer from the same flaw:  none distinguish between use of DWG as a file extension name and as atrademark for applicant’s goods.   The pertinent parts of these declarations appear below: Donnia Tabor- Hanson, technical specialist at ABC CAD Solutions, Inc.: 

Based on my experience in the CAD field, I believe purchasers and users of CAD softwareassociate the term DWG with Autodesk exclusively.  (Para. 3)

 The .dwg file format has always, to my knowledge, been spoken of as meaning ‘compatible withAutoCAD.’   CAD users may sometimes use non-Autodesk packages to create .dwg files, but if sothey typically choose the .dwg format so that they can transfer the files to others using Autodesk’sAutoCAD technology. (Para. 4)

  Thomas Short, of Thomas Short, P.E.: 

Based on my experience in the CAD field, I believe purchasers and users of CAD softwareuniversally associate the term DWG with Autodesk and especially with the AutoCAD softwarefile format. (Para. 3) I understand that other software providers may, like Autodesk, use the .dwg computer file formatbut more often than not they are designing software that is to work with AutoCAD for specializedapplications. (Para. 4)

  

Larry Swinea, Senior CAD Designer with the Griggs Group: 

Based on my experience in the CAD field, I believe purchasers and users of CAD softwareassociate the term DWG with Autodesk exclusively.  (Para. 3) I understand that other software providers may, like Autodesk, use the .dwg computer file format. It is my personal opinion that they do this to be compatible with AutoCAD.  And I have seen thisas a marketing approach.  I have seen companies release a new add on or cad program, andpromote it as ‘ uses a .dwg format that is compatible with AutoCAD’.” (Para. 4)

  Martin Fischer, Professor of Civil and Environmental Engineering and Director of the Center of IntegratedFacility Engineering at Stanford University: 

Based on my experience in the CAD field, I believe purchasers and users of CAD softwareassociate the term DWG with Autodesk primarily.  (Para. 3)            

B. Rustin Gesner, IT & CAD Director of Group Mackenzie: 

Based on my experience in the CAD field, I believe purchasers and users of CAD softwareprimarily associate the term DWG with Autodesk software.  (Para. 3)

 I understand that other software providers may, like Autodesk, use the .dwg computer file format,primarily for the benefit of AutoCAD users, to write files in a format compatible with AutoCADso they can easily be opened in AutoCAD and other Autodesk program users. [sic] (Para. 4).

 (Emphasis added).  Again, as with the survey, there is no distinction made between use of DWG as atrademark or as a file format in these declarations.  It is not clear that the declarants understand DWG tobe a trademark for applicant’s goods, which is, of course, the whole point.   The Tabor-Hanson and Swinea declarations state that the declarants “associate the term DWG withAutodesk exclusively.”   But, then both go on to state that they are aware that others use the .dwg fileformat: 

Tabor-Hanson:  “CAD users may sometimes use non-Autodesk packages to create .dwg files….” 

Swinea:  “I understand that other software providers may…. use the .dwg computer file format.” Declarant Short states that “users of CAD software universally associate the term DWG with Autodesk”but then also acknowledges “that other software providers may …. use the dwg computer file format.” Short also notes that purchasers and users of CAD software “especially (associate DWG) with theAutoCAD software file format.”  This is evidence of recognition of DWG as a file format ame not as atrademark. It is not understood how these declarants can claim that DWG is associated exclusively or universally withapplicant while at the same time acknowledging that DWG is also is used by others as a file format.  Thisclearly does not reflect recognition of DWG as a trademark by these declarants. 

Both the Fischer and Gesner declarations use the word “primarily”: 

Fischer:  “associate the term DWG with Autodesk primarily”Gesner:  “primarily associate the term DWG with Autodesk software.”

 Such “primary association” means more often than not.   This is hardly compelling evidence of acquireddistinctiveness.  USE ANALOGOUS TO TRADEMARK USE Applicant claims that its use of DWG as a file format name is use analogous to trademark use and thatapplicant should thus be allowed to tack-on such use to bolster its claim of distinctiveness.  However, theconcept of analogous use relates to priority of use and does not apply in ex parte proceedings.  Applicanthas submitted no citation establishing otherwise.   Use analogous to trademark use has been described as being: 

… non-technical use of a trademark in connection with the promotion or sale of a product undercircumstances which do not provide a basis for an application to register, usually because thestatutory requirement for use on or in connection with the sale of goods in commerce has not beenmet. Although never considered an appropriate basis for an application to register, such usehas consistently been held sufficient use to establish priority rights as against subsequentusers of the same or similar marks. See: Jim Dandy Co. v. Martha White Foods, Inc., 458 F.2d1397, 173 USPQ 673 (CCPA 1972); National Cable Television Ass'n., Inc. v. American CinemaEditors, Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed.Cir. 1991).

 (Emphasis added).  Shalom Children's Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516, 1519 (TTAB 1993). Also, see Oromeccanica, Inc. v. Ottmar Botzenhardt GmbH & Co., 223 USPQ 59 (TTAB 1983).  Useanalogous to trademark use may be used in an attempt to establish priority in ex parte situations, not toestablish acquired distinctiveness under Section 2(f).  Further, even if applicant was able to convince a tribunal that the concept of analogous use should orcould be applied in an ex parte Section 2(f) situation, applicant’s use is not analogous use, as that conceptis applied in inter partes proceedings.  Applicant first used the file format in the early 1980s but did notuse DWG as a mark for almost two decades, which is certainly not a commercially reasonable time in thecomputing environment of those decades.  “Actual, technical trademark use must follow the useanalogous to trademark use within a commercially reasonable time.”   Dyneer Corp. v. AutomotiveProducts Plc, 37 USPQ2d 1251 (TTAB 1995).  Also, applicant claims that use of the mark on itspackaging is akin to advertising use and thus should be considered analogous use because advertising usehas been considered as use analogous to trademark use in priority situations.  But, although “useanalogous to trademark use is sufficient to create a proprietary right in the user for purposes of alikelihood of confusion claim, analogous use must be more than mere advertising.” Westrex Corp. v. NewSensor Corp., 83 USPQ2d 1215, at 1218 (TTAB 2007).  Further, use on packaging is not advertising.  Also, because applicant has no proprietary rights in .dwg as a file extension name, applicant’s use ofDWG as a file extension name certainly cannot be used to support registration of DWG as a trademark.   

APPLICANT’S OTHER ARGUMENTS As others did and still do, applicant uses DWG as part of its trademarks.  Thus, applicant’s ownership ofthe RASTERDWG registration and its other DWG-related marks do not provide support for its claim ofacquired distinctiveness.   Applicant claims that its ownership of dwg.com supports its claim of acquired distinctiveness but hasprovided no legal support for that position.  As stated before, the use must be as a mark.  

 RELEVANCE OF THIRD-PARTY USES During the prosecution of this application, it has been established that others use marks which includeDWG for similar goods.  These include, for example, the uses of AnyDWG, AutoDWG, and EasyDWGmade of record with the Office action of November 13, 2007.  In response to the examining attorney’squestion, applicant indicated it did not have any license agreements with the users of those marks. (Response filed May 12, 2008, page 5).    Applicant contends that the use of DWG in the marks of others is “… made for the express purpose ofcommunicating to CAD software users that CAD data can be transferred easily, via third party software, toand from .dwg files created with Applicant’s AutoCAD-based technology.” (Response filed May 12,2008, page 11).  Applicant also states: 

Other CAD software companies have reverse-engineered Applicant’s DWG file format and claimthat their software products are compatible with Applicant’s DWG technology…. Thesecompanies’ products create ‘.dwg’ files….  

 (pp. 10-11)  Yet, earlier in that same response, applicant states: 

…. To the best of applicant’s knowledge, there are software programs on the market today usingthe .dwg file format that are not either marketed or licensed by applicant.”

 (page 6).  This latter statement seems to contradict the earlier statements and the facts.  RELEVANCE OF USPTO REGISTRATION OF MARKS WHICH ARE THE SAME AS FILEFORMAT NAMES Applicant claims that registrations issued by the USPTO for marks which are also purportedly file formatnames support the registratbility of DWG as a trademark.  Applicant submitted a list of these registrations,which include the following marks: 

FBXPAGESJAVANESX3FDNGBSB

SAT However, the mere submission of a list of registrations does not make such registrations part of the record.  In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006); TBMP §1208.02; TMEP §710.03. To makethird-party registrations part of the record, an applicant must submit copies of the actual registrations orprintouts of the registrations from the USPTO’s database.   In re Ruffin Gaming LLC, 66 USPQ2d 1924,1925 n.3 (TTAB 2002); In re Carolina Apparel, 48 USPQ2d 1542, 1543 n.2 (TTAB 1998); TBMP§1208.02; TMEP §710.03. It is noted, however, that unlike we have here, none are abbreviations for merely descriptive terms.Further, it is not known if these registrations are on the Principal Register or Supplemental Register orregistered under Section 2(f).  It is also not known if there was evidence of others using the file formatdesignations.  Also, even if the registrations were properly made of record, third-party registrations are notconclusive on the question of descriptiveness.  Each case must be considered on its own merits.  Anapplied-for mark that is merely descriptive does not become registrable simply because other similarmarks appear on the register.  In re Scholastic Testing Serv., Inc., 196 USPQ 517 (TTAB 1977); TMEP§1209.03(a).  RELEVANCE OF USDC FOR NORTHERN CALIFORNIA CASE Other than applicant’s disavowal of any proprietary rights in .dwg as a file extension name, this case isnot relevant because it did not rule on trademark infringement nor on the genericness of DWG, findingthere to be material issues of fact in relation thereto.  WHETHER APPLICANT LOST ITS TRADEMARK RIGHTS Applicant states:  “The Examining Attorney suggests that Applicant previously enjoyed rights to theDWG mark but somehow ‘lost’ them.”   (Response filed May 12, 2008, page 13).  The examiningattorney did not mean that applicant had rights and lost them, but rather that while applicant (perhaps) hadthe opportunity to claim trademark rights in DWG, its long delay in claiming trademark rights and theresultant widespread use of DWG in the marks of others resulted in applicant losing that opportunity.  Theexamining attorney was contrasting the underlying facts in the instant application with those in theunpublished case of  In re Fuji Photo Film Co., Ltd., Serial No. 75-580,709 (December 19, 2006), cited byapplicant and stated:   

In that case, the applicant, along with its business partners, developed a proprietary technicalspecification and licensed it to others, using a “specification agreement,” which set forth the termsand conditions for use of the trademark. In that case, applicant did not use a file format for yearsand years before deciding to try to protect the letters as a trademark.  That applicant was not tryingto go back in time and retrieve that which has been lost because it was not protected.  Thatapplicant controlled third-party uses of the mark.  This applicant does not seem to do so. 

 Office action of November 13, 2007, page 2.  CONCLUSION Much of applicant’s evidence cannot serve to support its claim of acquired distinctiveness because no

distinction was made between use of DWG as a file extension designation and as a trademark.  Thisincludes the survey, all of the declarations, and the revenue data.  Applicant’s use of DWG as a fileextension designation and on its website is not use analogous to trademark use and thus cannot be appliedto tack-on applicant’s earlier non-teademark uses of DWG in order to establishacquired distinctiveness. Applicant does not control the use of DWG by others, either as a trademark or as a file format name. While applicant created the .dwg file extension designation, it does not have proprietary rights thereto.Further, others have used and continue to use DWG-related marks, resulting in applicant being unable toclaim exclusive rights to DWG-related marks. DWG is merely descriptive of applicant’s software.   The Section 2(f) evidence is deemed insufficient toestablish that DWG has acquired distinctiveness as a trademark.  Thus, the Section 2(e)(1) refusal basedon mere descriptiveness is maintained and made FINAL.   PROPER RESPONSE TO FINAL REFUSAL If applicant does not respond within six months of the date of issuance of this final Office action, theapplication will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to thisfinal Office action by: 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or 

(2)  Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 perclass.

 37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04. In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) toreview a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is$100.  37 C.F.R. §2.6(a)(15).   

            /Paul E. Fahrenkopf/            Paul E. Fahrenkopf            Trademark Examining Attorney            Law Office 101            571-272-8264            paul.fahrenkopf@uspto.gov     

 TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.  Pleasewait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates ofthe application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questionsabout the Office action itself, please contact the assigned trademark examining attorney.  E-mailcommunications will not be accepted as responses to Office actions; therefore, do not respond to thisOffice action by e-mail.

 All informal e-mail communications relevant to this application will be placed in the officialapplication record. WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicantor someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all jointapplicants).  If an applicant is represented by an attorney, the attorney must sign the response.  PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant doesnot miss crucial deadlines or official notices, check the status of the application every three to four monthsusing Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/.  Please keep acopy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.uspto.gov/trademarks/process/status/. TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form athttp://www.uspto.gov/teas/eTEASpageE.htm.     

[1] Applicant argues that the declarations submitted with the Letter of Protest are legally defective/insufficient because none contain a perjury warning, as required by law.  The Examining Attorney agreesand did not consider those declarations. However, the other evidence submitted with the Letter of Protestis properly of record. 

To: Autodesk, Inc. (trademarks@wsgr.com)

Subject: U.S. TRADEMARK APPLICATION NO. 78852798 - DWG - 5477-TM1001

Sent: 6/9/2011 9:36:44 AM

Sent As: ECOM101@USPTO.GOV

Attachments:

IMPORTANT NOTICE REGARDING YOURU.S. TRADEMARK APPLICATION

 USPTO OFFICE ACTION HAS ISSUED ON 6/9/2011 FOR

SERIAL NO. 78852798 Please follow the instructions below to continue the prosecution of your application:  TO READ OFFICE ACTION: Click on this link or go tohttp://portal.uspto.gov/external/portal/tow and enter the application serial number to access theOffice action. PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24hours of this e-mail notification. RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how torespond; and (2) the applicable response time period. Your response deadline will be calculated from6/9/2011 (or sooner if specified in the office action). Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as theUSPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respondonline using the Trademark Electronic Application System Response Form. HELP: For technical assistance in accessing the Office action, please e-mailTDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Officeaction. 

         WARNING

 Failure to file the required response by the applicable deadline will result in theABANDONMENT of your application.