Autodesk, Inc.

Trademark Trial and Appeal Board

Sep 30, 2013

No. 78852822 (T.T.A.B. Sep. 30, 2013)

Hearing: Mailed:
August 28, 2011 September 30, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Autodesk, Inc.
________

Serial Nos. 78852798, 78852808, 78852813,
78852822 and 78852843
_______

John L. Slafsky and Matthew J. Kuykendall of Wilson Sonsini
Goodrich & Rosati for Autodesk, Inc.

Paul Fahrenkopf, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Zervas, Wellington and Greenbaum, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Autodesk, Inc. (“applicant”) is the owner of four
applications for registration of the following three
standard character marks and single combination mark, all
filed pursuant to Trademark Act §1(a), 15 U.S.C. §1051(a):
1. DWG (Serial No. 78852798, claiming first use and
first use in commerce on November 28, 2005);

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Ser. No. 78852798, 78852808, 78852813, 78852822 and 78852843
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2. (Serial No. 78852808, claiming first
use and first use in commerce on March 22, 2006);1

3. DWG TRUEVIEW (Serial No. 78852813, claiming first
use and first use in commerce on November 28, 2005);
and

4. DWG TRUECONVERT (Serial No. 78852822, claiming
first use and first use in commerce on November 28,
2005).

Applicant is also the owner of an application for the
standard character mark DWG EXTREME (Serial No. 78852843),
filed under Trademark Act §1(b), 15 U.S.C. §1051(b).
The recited goods in each application are the
following International Class 9 goods:
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.

The examining attorney refused registration of the
proposed DWG standard character mark under Trademark Act
§2(e)(1), 15 U.S.C. §1052(e)(1), on the basis that
applicant’s proposed mark is merely descriptive of

1 Applicant entered the following description of the mark; “The
mark consists of a folder for storing design documents and data.”
Ser. No. 78852798, 78852808, 78852813, 78852822 and 78852843
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applicant's goods. Applicant maintains that the examining
attorney did not establish that the proposed mark is merely
descriptive, and in the alternative submitted evidence to
establish that the proposed mark had acquired
distinctiveness under the provisions of Trademark Act
§2(f), 15 U.S.C. §1052(f). The examining attorney was not
persuaded by applicant’s showing of acquired
distinctiveness and ultimately issued a final Office action
maintaining the Section 2(e)(1) mere descriptiveness
refusal and his finding that applicant's Section 2(f)
showing is insufficient.
As to the remaining marks, the examining attorney
refused to register them in view of his requirement
pursuant to Trademark Act §§2(e)(1) and 6(a), 15 U.S.C.
§§1052(e)(1) and 1056(a), that applicant disclaim DWG
because, again, DWG is merely descriptive of the identified
goods.
Background
We provide now some background about applicant, taken
from the declaration of Mark Strassman, applicant’s Vice
President of Marketing. In the early 1980s, applicant
developed and distributed software allowing architects,
engineers, manufacturers, and other design professions to
build two-dimensional and three-dimensional virtual models
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of their buildings, consumer products, and other physical
objects. Applicant’s software is the computer-aided design
(“CAD”) software program of choice for world-renowned
architects to design skyscrapers, bridges, aqueducts and
other large-scale projects. AutoCAD – launched in 1982 -
is applicant’s most successful and best known product, and
is used for design and drafting. There are currently more
than seven million registered users of AutoCAD, and its
sales have totaled over $11 billion, with a substantial
portion of that revenue derived from AutoCAD.
“DWG is Applicant’s name for the file format and
technology underlying AutoCAD® and other of Applicant’s CAD
software products.” Strassman at ¶10. AutoCAD
applications allow users to create and store user files in
the DWG file format, which bear a .dwg file extension.
Since 1985, applicant realized approximately $10 billion in
revenue from software featuring the DWG file format.
Issue on Appeal
Applicant states at footnote 2 in its appeal brief
that it “does not concede that the mark DWG is merely
descriptive of CAD software, but, given the compelling
evidence of acquired distinctiveness in the USPTO record,
is not appealing the Section 2(e)(1) refusal.” Thus, the
only issue before us is the sufficiency of applicant’s
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claim of acquired distinctiveness, in whole for the
proposed DWG mark, and in part for the DWG component of the
remaining marks.2
Evidentiary Issue
The record contains two communications from the Office
of the Deputy Commissioner for Trademark Examination Policy
forwarding material submitted by Letters of Protest to the
examining attorney. In his Office action of August 24,
2010, the examining attorney “incorporated” this material,
which included three unverified “statements” from third-
parties. Applicant objected to the examining attorney’s
reliance in his brief on one of the statements, namely, the
statement of Mickey Wohlmuth, a co-founder of CADMAX
Corporation. The examining attorney stated in the final
Office action that he “agree[d]” that the statements are
legally defective or insufficient because none contain “a
perjury warning.” For the examining attorney to now rely
on Mr. Wohlmuth’s statement in his brief is unfair to
applicant. Applicant’s objection is therefore sustained
and we do not further consider Mr. Wohlmuth’s statement.
In addition, we do not further consider the other

2 The question of whether, in general, a designation may function
as both a trademark and as the name of a file format is also not
before us, because the examining attorney conceded in his brief
that a designation may function as both a trademark and as the
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statements submitted with the Letters of Protest in light
of what the examining attorney said in his final Office
action.
Analysis
It is applicant's burden to establish a prima facie
case of acquired distinctiveness. See Yamaha Int’l Corp.
v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001
(Fed. Cir. 1988). In determining whether a term has
acquired distinctiveness, the Board may examine copying,
advertising expenditures, sales success, length and
exclusivity of use, unsolicited media coverage and consumer
studies (linking the name to a source).3 Cicena Ltd. v.
Columbia Telecomms Group, 900 F.2d 1546, 14 USPQ2d 1401
(Fed. Cir. 1990). “On this list, no single factor is
determinative.” In re Steelbuilding.com, 75 USPQ2d 1420,
1424 (Fed. Cir. 2005). The amount and character of

name of a file format. Examining attorney’s brief at unnumbered
5.
3 See also TMEP §1212.06 (October 2012), stating:
Under Trademark Rule 2.41(a), 37 C.F.R. §2.41(a), an
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 in commerce that may
lawfully be regulated by Congress, advertising
expenditures in connection with such use, letters, or
statements from the trade and/or public, or other
appropriate evidence tending to show that the mark
distinguishes the goods or services.
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evidence required to establish acquired distinctiveness
depends on the facts of each case and particularly on the
nature of the mark sought to be registered. See Roux
Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ
34 (CCPA 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ
381 (CCPA 1960); and In re Gammon Reel, Inc., 227 USPQ 729
(TTAB 1985).
The Federal Circuit, our primary reviewing court, has
stated that “the greater the degree of descriptiveness the
term has, the heavier the burden to prove it has attained
secondary meaning.” In Re Bongrain Int'l (Am.) Corp., 894
F.2d 1316, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990).
Thus, we consider next the degree of descriptiveness of the
term in relation to the goods identified in the
application.
The record reflects that “dwg” is an abbreviation for
“drawing.” See American Standard Abbreviations for Use on
Drawings (American Standards Association, 1947 and 1950);
Architectural and Graphic Standards (John Wiley & Sons,
Inc., 5th ed. 1956); American National Standard
Abbreviations for Use on Drawings and in Text (Am. Soc.
Mechanical Engineers, rev. 1950); Acronyms and Initialisms
Dictionary (4th ed. 1960). An abbreviation of a merely
descriptive or generic term is also merely descriptive or
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generic if it is readily understood by the relevant
purchasers to be “substantially synonymous” with the merely
descriptive or generic wording which it represents or for
which it stands. See Modern Optics, Inc. v. Univis Lens.
Co., 234 F.2d 504, 506, 110 USPQ 293, 295 (CCPA 1956); In
re Thomas Nelson, Inc., 97 USPQ2d 1712 (TTAB 2011) (finding
that consumers would recognize the mark NKJV as an
abbreviation for “new King James version” and thus is
merely descriptive of bibles); In re BetaBatt Inc., 89
USPQ2d 1152 (TTAB 2008) (finding DEC substantially
synonymous with “direct energy conversion” and thus merely
descriptive of a type of batteries). Applicant’s goods are
used to create drawings, i.e., drawings for engineering,
architecture, manufacturing, building, and construction
applications. DWG, therefore, as a recognized abbreviation
for “drawing,” is highly descriptive of a primary feature
of applicant’s goods.
We now consider whether applicant has submitted
sufficient evidence to establish acquired distinctiveness
of this highly descriptive term.
During the oral hearing, applicant’s attorney
represented that the evidence demonstrates that applicant
used DWG in three phases. The first phase extended from
the early 1980s until the mid-1990s, when applicant used
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.dwg only as a file extension in connection with files for
its program AutoCAD. The second phase extends extended
from the mid-1990s until the early 2000s, when applicant
intermittently used DWG to identify the source of its
software, and, of course, used .dwg as a file extension.
The third period spans from 2003 when applicant allegedly
used DWG consistently as a source indicator, as well as
.dwg, until the present.
A central question in this appeal, and integral to
applicant’s description of the evolution of its alleged
mark, is whether applicant’s use of .dwg as a file
extension can inure to applicant’s benefit in establishing
trademark rights in the designation DWG.4 As we see it,
this encompasses uses in the first phase, i.e., when
opposer had no trademark use, as well as in the second and
third phases, when applicant was or is using both DWG and
.dwg.
Applicant argues at pp. 11 – 13 of its brief
(citations omitted):
There are no restrictions on how acquired
distinctiveness can or should be established.
Here, Applicant’s evidence of substantial and
ongoing use and promotion of the .dwg file

4 Indeed, at p. 7 of its brief, applicant characterizes the issue
as “[w]hether applicant’s claim of acquired distinctiveness for
the mark DWG is supported by Applicant’s longstanding and
continuous use and promotion of the .dwg file extension and of
various DWG-related marks.”
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format, of promotion of a series of DWG-related
brands, of promotion of DWG desktop icons since
at least 2003 and other efforts pre-dating 2005
are of great consequence.

Applicant’s pre-2005 use of the .dwg file
format and DWG-related marks are relevant, for
example, as “use analogous to trademark use.”
Courts have long-recognized the concept of “use
analogous to trademark use,” permitting a party
to establish proprietary rights in a mark even
when its use falls short of the technical use
required to obtain a federal trademark
registration. …

The Examining Attorney has disregarded
Applicant’s evidence of analogous use on the
grounds that the theory is inapplicable to ex
parte proceedings. … Indeed, application of the
analogous use doctrine in an ex parte proceeding
concerning secondary meaning is appropriate
because in both an ex parte secondary meaning
inquiry and in an inter partes proceeding, the
key issue is whether a brand owner can show it
has promoted a term such that the public now
associates the term with the owner’s products and
services. … To determine whether a party’s use of
a term rises to the level of analogous use,
courts ask whether the “use is of such a nature
and extent as to create public identification of
[the] target term with the [party’s] product or
service.” … Likewise, in a secondary meaning
analysis courts consider whether a party has
presented evidence showing “an association formed
in the minds of the consumers between the mark
and the source or origin of the product.”

Indeed, application of the analogous use
doctrine in an ex parte proceeding concerning
secondary meaning is appropriate because in both
an ex parte secondary meaning inquiry and in an
inter partes proceeding, the key issue is whether
a brand owner can show it has promoted a term
such that the public now associates the term with
the owner’s products and services.

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In any event, even if Applicant’s pre-2005
use of the .dwg file format and DWG-related marks
is not deemed analogous use, it remains
compelling circumstantial evidence of the
evolution of secondary meaning for the DWG mark.
There is no basis for the Examining Attorney’s
extraordinary position that such use -- spanning
over two decades -- is “irrelevant” and should be
disregarded.

However, at page 5 of its appeal brief, applicant
states that it “is not claiming trademark protection in the
file format ‘.dwg’ and has no intention of exercising its
trademark rights to prevent or restrict others from using
the ‘.dwg’ software file format.” This was not the first
time applicant disclaimed trademark rights in the file
extension .dwg; in Autodesk, Inc. v. Dassault Systemes
Solidworks Corp., 685 F.Supp.2d 1023, __ USPQ2d __ (N.D.
Cal. 2009), an action for, inter alia, trademark
infringement of applicant’s asserted common law trademark
DWG, the Northern District of California held that Autodesk
was judicially estopped from asserting trademark protection
to the “.dwg” file format. According to the Court,
“Autodesk disavowed any such claims against the use of
“.dwg” as a file extension, and sought trademark protection
only for its use as a word mark - namely, to have exclusive
use of ‘DWG’ in packaging, advertising, and marketing
materials used in connection with the sale of its goods and
services.” The court commented:
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Autodesk's arguments [that it only disavowed
uses of “.dwg” as a file extension when needed to
achieve interoperability with the DWG file format
defined by Autodesk] raise grave and serious
concerns regarding the potential for trademark
holders to monopolize the use of file extensions.
The purpose of the Lanham Act is to protect
consumers against deceptive designations of the
origin of goods and, conversely, to enable
producers to differentiate their products from
those of others. … Additionally, the targeted
unauthorized use of a trademark must be a use “in
connection with a commercial transaction in which
the trademark is being used to confuse potential
consumers.” … By contrast, the primary purpose of
a file extension is to tell the computer the type
of the file it is handling. A computer is not a
consumer. Its “reading” of the file extension is
not in connection with a commercial transaction.
It doesn't care who made the file format it is
trying to read. Whether the proper terminology
for this use is a “functional use” or “non-
trademark use,” a file extension is not
actionable under trademark law.

This remains true even if computer users
associate a particular file extension with a
particular manufacturer (e.g. “.xls” with
Microsoft, “.pdf” with Adobe, or for argument's
sake, “.dwg” with Autodesk). While there is no
question that a file extension could serve a
tangential purpose of communicating the source of
the file or file format, this effect - in the
vast majority of instances - would be incidental.
The primary function of a file extension to both
a computer and its user is to identify a file or
file type. Even if the function were solely to
identify the format in which the contents are
stored, that would still be a functional use.
Functional uses are not protected under trademark
law.

Id. at 1028.
In addition, applicant’s reliance on the doctrine of
analogous use is misplaced. In Shalom Children's Wear Inc.
Ser. No. 78852798, 78852808, 78852813, 78852822 and 78852843
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v. In-Wear A/S, 26 USPQ2d 1516, 1519 (TTAB 1993), the Board
explained (citations omitted, emphasis added):
Use analogous to trademark use … is non-technical
use of a trademark in connection with the
promotion or sale of a product under
circumstances which do not provide a basis for an
application to register, usually because the
statutory requirement for use on or in connection
with the sale of goods in commerce has not been
met. Although never considered an appropriate
basis for an application to register, such use
has consistently been held sufficient use to
establish priority rights as against subsequent
users of the same or similar marks.

Further, the Board explained in Central Garden & Pet
Co., Inc. v. Doskocil Manuf’g Co., Inc., Opp. No. 91188816,
__ USPQ2d __ (TTAB August 16, 2013), that “the Trademark
Act defines ‘use’ of a trademark as the sale or transport
in commerce of goods bearing the mark [and that] [w]hile
such use (sometimes called ‘technical’ trademark use) is
required to support an application for registration, a
party may establish priority in a proceeding based on
‘analogous use,’ i.e., any non-technical use of a mark
which is sufficient to create in the mind of the relevant
public an association between the goods and their source.”
The Board distinguished between “technical” trademark use
which is required to support an application for
registration and “analogous use” which is “non-technical”
Ser. No. 78852798, 78852808, 78852813, 78852822 and 78852843
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trademark use relevant to a proceeding in which priority is
an issue.
Thus, the doctrine of analogous use is inapplicable to
the present application. As the examining attorney
correctly noted, the doctrine is used in inter partes
proceedings, and not in ex parte proceedings. Applicant
has not cited any Board or Federal Circuit precedent in
which the doctrine has been applied in an ex parte
proceeding. Indeed, the doctrine is unnecessary in ex
parte proceedings, because priority is not an issue. And,
in cases where the issue is acquired distinctiveness, the
Federal Circuit has set forth a comprehensive list of
evidence that an applicant may use to demonstrate that its
applied-for term is a trademark; analogous use was not
included. See Steelbuilding.com, 75 USPQ2d 1424 (“the
Board may examine copying, advertising expenditures, sales
success, length and exclusivity of use, unsolicited media
coverage, and consumer studies (linking the name to a
source).”).
We do not ignore applicant’s use of .dwg as a file
extension and its contention that numerous individuals know
of its file extension. Indeed, the Federal Circuit stated
that “the determination [of acquired distinctiveness]
examines all of the circumstances involving the use of the
Ser. No. 78852798, 78852808, 78852813, 78852822 and 78852843
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mark.” Steelbuilding.com, 75 USPQ2d at 1424. And, as
quoted above, the Dassault Systemes court allowed that
“While there is no question that a file extension could
serve a tangential purpose of communicating the source of
the file or file format, this effect - in the vast majority
of instances - would be incidental.” Dassault Systems, 685
F.Supp.2d at 1028.
We therefore must determine whether this case involves
an “incidental situation” where a file extension serves a
tangential purpose of communicating the source of the file
or file format, mentioned by the district court, when
applicant stated that it “is not claiming trademark
protection in the file format ‘.dwg’ and has no intention
of exercising its trademark rights to prevent or restrict
other[] [third-parties] from using the ‘.dwg’ software file
format.” Brief at 5.
We turn, then, to the evidence of third-party uses of
.dwg (as opposed to DWG). The declarations in the record
acknowledge that third parties create software that is to
be used with applicant’s software applications and that in
doing so, they create files with the .dwg file extension.
See, e.g., the declarations of:
● Donnia Tabor-Hanson, a Technical Specialist
employed by AEC CAD Solutions, Inc., who stated
that “CAD users may sometimes use non-Autodesk
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packages to create the .dwg files, but if so they
typically choose the .dwg format so that they can
transfer the files to others using Autodesk’s
AutoCAD technology”;

● Thomas Short, of Thomas Short, P.E. who stated
that “other software providers may, like
Autodesk, use the .dwg computer file format but
more often than not they are designing software
that is to work with AutoCAD for specialized
applications”; and

● Larry Sinea, Senior CAD Designer with The
Griggs Group who stated 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 this as a marketing approach. I
have seen companies release a new add on or CAD
program, and promote it as ‘uses a dwg format
that is compatible with AutoCAD.’”

Use of “dwg” as a file extension by third-parties thus
occurs without objection by applicant, and applicant does
not have any license agreements with these third-parties.
See May 12, 2008 response at 5. We therefore find that
applicant in practice does not exclusively use .dwg as a
file extension and that third-parties do not consider
applicant to have proprietary rights in .dwg as a file
extension. Indeed, this is reflected in applicant’s
website, which, according to applicant, states in relevant
part, “the status of DWG as both an Autodesk® file format
name and an Autodesk trademark means that certain uses of
DWG, without prior permission from Autodesk, are
permissible while others are not.”
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Because (i) applicant does not intend the .dwg file
format as trademark use, and takes the position that it “is
not claiming trademark protection in the file format ‘.dwg’
and has no intention of exercising its trademark rights to
prevent or restrict others from using the ‘.dwg’ software
file format,” brief at 5, and, (ii) third-parties are using
the .dwg file extension without objection by applicant,
applicant has not persuaded us that its use of .dwg as a
file extension aids the consuming public in recognizing DWG
as a source indicator for applicant’s claimed goods.
With the foregoing in mind, we turn to the evidence
applicant relies on to demonstrate that DWG (and not .dwg)
has acquired distinctiveness as a mark, beginning with its
survey.
Applicant commissioned a double blind survey from
Deborah Jay of the Field Research Corporation in San
Francisco, California. The survey, conducted by telephone
in late 2005 and early 2006, was structured so as to be
directed to individuals who make software purchasing
decisions in companies that purchase, license, or upgrade
design software (the “decisionmakers”). It questioned
these decisionmakers on whether they associate “DWG” with
design software from a single company or source, and if so,
whether they associate it with design software from
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applicant and/or AutoCAD exclusively.5 See Jay Decl. ¶2.
The Field Research survey found that 43 percent of
decisionmakers associated “DWG” with design software from a
single company or source, and 42 percent of decisionmakers
associated “DWG” with design software from Autodesk and/or
AutoCAD® exclusively. Id. at ¶3.
The examining attorney correctly points out that the
survey does not distinguish between use of DWG as a
trademark or as a file extension name. “Name or term” in
the survey questions encompass both use of DWG as a
trademark and as a file format. At p. 7 of its reply,
applicant argues that there is ample evidence in the record
suggesting that the survey respondents were referring to
use of DWG as a trademark. Relying on the declaration of
Shawn Gilmour, applicant’s Director of Digital Systems
Design, applicant notes that the survey was conducted
between November 28, 2005 and January 20, 2006, and at that
time:

5 The relevant questions were:

“My next question concerns the name or term ‘DWG.’ Do you
associate the name or term ‘DWG’ with design software form 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’ with design software from one company or more
than one company?

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● Applicant had been offering products under
DWG-related brands for at least 7 years;

● Applicant had been posting trademark notices
identifying DWG-related brands as Applicant’s
trademarks for at least 8 years; and

● Millions of Applicant’s users saw the file
icon (of application Serial No. 78852808) on
their computer screens for nearly two years.

Applicant is assuming that the decisionmakers were
referring to trademark use when responding to the survey.
There is no direct evidence that this is the case, and the
survey questions – which were spoken on the telephone and
were not in writing so the decisionmakers would know that a
distinction existed between .dwg and DWG - do not exclude
the possibility that decisionmakers were thinking of the
file extension when responding to the questions.
Thus, even under the circumstances pointed out in Mr.
Gilmour’s declaration, the survey does not distinguish
between uses of DWG as a file extension and as a trademark.
We do not presume that decisionmakers were consistently
referring to DWG as a trademark, especially when the record
contains evidence - of recent vintage - of use of DWG as a
file extension.
Applicant argues at p. 16 in its main brief that
“[n]othing in the survey would suggest to respondents that
they were being asked about file formats.” However, it is
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applicant’s burden to establish acquired distinctiveness,
and the survey allows that the decisionmakers could have
considered the .dwg file format in their responses.
Applicant also argues that “even if some of the
respondents associated the surveyor’s use of ‘name of term
‘D-W-G’’ with the file extension .dwg, the survey evidence
would still be appropriate and compelling.” Brief at 16.
There are two problems with this argument; (i) there is no
way of knowing how many decisionmakers associated the
survey’s reference to “DWG” with the file extension .dwg,
and (ii) it is not clear how the survey results should be
discounted.
Thus, for the reasons stated above, we find that the
survey has limited probative value.
We next turn to a declaration in the record which
applicant heavily relies on, the declaration of Mark
Strassman, applicant’s vice-president of marketing. He
states, in relevant part:
10. “DWG is Applicant’s name for the file
format and technology underlying AutoCAD® and
other of Applicant’s CAD software products.”

11. “For nearly 25 years, computer files that
AutoCAD® users have created, edited, or viewed
- the number of these files likely totals in
the billions - have incorporated the
distinctive suffix DWG.”

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12. “Since 1985, Applicant has realized
approximately $10 billion in revenue from
software featuring the DWG file format.”

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

19. There are over 2,200 articles in the
Lexis-Nexis database and 1,800 articles in the
Westlaw news databases referring to DWG and
also referencing AutoCAD® or Applicant.

Mr. Strassman concludes:
21. In sum, because DWG is the name of the
proprietary computer file format associated so
closely with Applicant's software, and because
of Applicant’s efforts to promote DWG over
time, consumers of CAD software are highly
familiar with the name DWG and link it with
Applicant. This connection between DWG, on the
one hand, and Applicant on the other, began
with and has persisted since the launch of
Applicant’s initial AutoCAD® product in the
early 1980s.

We have several problems with Mr. Strassman’s
declaration. First, paragraph 10 includes both the file
extension and the asserted mark in the definition of “DWG.”
Second, paragraphs 11 and 12 appear to be referring to the
file extension, and not the proposed mark, and the income
noted evidently includes income from the period from 1985
to 2005, prior to the time when applicant began
(consistently) using its proposed mark. Third, regarding
applicant’s website discussed in paragraph 16, various
Ser. No. 78852798, 78852808, 78852813, 78852822 and 78852843
22
webpages from applicant’s website include references to the
file extension; this is not a situation where there is
consistent trademark use on a website. Indeed, as
mentioned earlier in this decision, applicant’s website
asks consumers viewing the website to distinguish between
different uses of “dwg” on the website, stating, “the
status of DWG as both an Autodesk® file format name and an
Autodesk trademark means that certain uses of DWG, without
prior permission from Autodesk, are permissible while
others are not.” Fourth, the testimony regarding the
articles mentioned in paragraph 19 is not helpful because a
representative sampling of the articles is not in the
record. We therefore are unable to determine whether the
articles refer to DWG as a trademark or as a file
extension. Also, there is no indication as to how many
articles in the databases are duplicates and no indication
of when and where the articles were published, and
particularly whether they were published prior to 2003,
before applicant allegedly was consistently promoting DTG
as a trademark.
Turning next to Mr. Gilmour’s declaration, this
declaration suffers from several of the same deficiencies
noted with Mr. Strassman’s declaration. Specifically, the
figures regarding sales, revenue and authorized users
Ser. No. 78852798, 78852808, 78852813, 78852822 and 78852843
23
relate to “DWG technology” rather than exclusively for
software sold under the proposed mark. Figures for “DWG
technology” may include figures for software sold under the
.dwg file extension, and even under different marks.
In addition, Mr. Gilmour addresses applicant’s use of
four icons in connection with its software. He states:
For many years, users of Autodesk’s software
products featuring DWG technology have been
presented with a distinctive DWG icon on their
computer screens when saving design and image
files created or edited using Autodesk’s
products. Autodesk estimates that the DWG icon
has been displayed on the computer screens of
millions of software users.

Decl. ¶5. Only the following two icons, which were not
used before 2004, include “DWG”:

In discussing the icons as used on computer screens, Mr.
Gilmour’s declaration does not distinguish between those
icons which do, and those icons which do not, include the
DWG designation.
Further, at paragraph 7 of his declaration, Mr.
Gilmour refers to the icon depicted above with DWG written
horizontally and several exhibits to his declaration
demonstrating use of the icon on product packaging for
Ser. No. 78852798, 78852808, 78852813, 78852822 and 78852843
24
applicant’s software. He states, “[t]he number of
consumers of CAD software who have purchased software with
such packaging is in the millions.” An examination of the
sample packaging in the record reveals that the icon is
depicted in the back of the packaging, and the primary
marks for the product are AUTOCAD and AUTODESK. From the
limited statements in the declaration and the samples of
packaging, we are not able to assess the impact on
consumers of a small combination mark depicted in the back
of the product.
Finally, at paragraph 8 of the declaration, Mr.
Gilmour states that applicant displayed its DWG-related
marks on its various websites including its primary
website, and that in a two-month period in 2010, over 4.7
million unique users located in the United States visited
its webites. The statement is not specific as to what
marks were viewed, how the marks were displayed and how
many webpages actually contained the asserted DWG mark(s).
Additionally, the statement only addresses a two-month
period in 2010, and is silent about other periods of time.
In addition to the declarations of Messrs. Strassman
and Gilmour, applicant submitted declarations from the
following five individuals, employed by third-parties:
Ser. No. 78852798, 78852808, 78852813, 78852822 and 78852843
25
(i) Donnia Tabor-Hanson, who states that she
believes that “purchasers and users of CAD
software associate the term DWG with Autodesk
exclusively”; and the “.dwg file format has
always … been spoken of as meaning ‘compatible
with AutoCAD’”;
(ii) Thomas Short, who states that he believes
“purchasers and users of CAD software universally
associate the term DWG with Autodesk and
especially with the AutoCAD software file
format”;

(iii) Larry Swinea who states that he believes
“purchasers and users of CAD software associate
the term DWG with Autodesk exclusively”;

(iv) Martin Fischer, who states that he believes
“purchasers and users of CAD software associate
the term DWG with AutoCAD primarily”; and

(v) Rustin Gesner, who states that he believes
“purchasers and users of CAD software primarily
associate the term DWG with Autodesk software.”

The examining attorney maintains that these declarations
are flawed in that they do not distinguish between use of
DWG as a file extension name or as a trademark for
applicant’s goods. We agree. Furthermore, the
declarations have limited probative value because they do
not state the basis for each declarant’s conclusion that
purchasers and users of CAD software associate the term DWG
with applicant. They declare that their statements are
based on their experience in the CAD field, but do not
describe what it is in their experience that lead them to
their conclusion. In addition, the declarations are only
Ser. No. 78852798, 78852808, 78852813, 78852822 and 78852843
26
five in number. See In re Dimitri's Inc., 9 USPQ2d 1666,
1668 (TTAB 1988) (stating with regard to seventeen
declarations in evidence, “The existence of a relatively
small number of people who associate the term ‘SUMO’ with
applicant is simply insufficient for us to find that the
term functions as a trademark for applicant’s goods.”).
We also point out that the sworn declaration of
Abhijit Oak, applicant’s Senior Director of Enterprise
Application Development, filed in Autodesk, Inc. v. Open
Design Alliance, Civ. No. C06-1637-MJP in the Western
Division of Washington, and submitted to the Office with
one of the Letters of Protest, states in relevant part:
Like many software application, the AutoCAD
program implements a proprietary file format for
storing user data files – in the case of AutoCAD,
user design data. That file format and related
technology is known as ‘DWG.’” … The DWG file
format serves to organize the information and
relationships within the file, allowing that
information to be used in the AutoCAD program.

(Emphasis added.) Mr. Oak’s statement suggests that the
term “DWG” as used in the declarations is intended to
include the file extension .dwg, and not just the
designation DWG.
With regard to the U.S. trademark registrations from
the USPTO’s TARR database which applicant submitted and
maintains are for computer software file extensions, we
Ser. No. 78852798, 78852808, 78852813, 78852822 and 78852843
27
find them unpersuasive; it does not appear that mere
descriptiveness and hence acquired distinctiveness were
issues in obtaining the registrations, or that they all
involved use of the registered trademarks as file
extensions. Further, as is often noted, the Board is not
bound by prior decisions of examining attorneys. See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001); In re Davey Products Pty Ltd., 92 USPQ2d 1198 (TTAB
2009).
Applicant also argues that its marks should be
registered because the USPTO has registered two of
applicant’s other marks, namely REALDWG and RASTERDWG.
These marks differ from the terms involved in this appeal.
They likely registered for reasons unrelated to the issues
now before us, where the term DWG stands alone or as a
separate term. Each case must stand on its own merits, and
a mark that is merely descriptive must not be registered on
the Principal Register simply because other such marks
appear on the register. In re theDot Commc'ns Network LLC,
101 USPQ2d 1062 (TTAB 2011); In re Scholastic Testing
Serv., Inc., 196 USPQ 517 (TTAB 1977).
Applicant also asserted that it “protects its rights
in the mark DWG,” and offered evidence of six legal actions
– two in the district courts and four before the Board - in
Ser. No. 78852798, 78852808, 78852813, 78852822 and 78852843
28
which it was a plaintiff. The evidence regarding the four
actions before the Board does not reflect what mark(s)
applicant sought to oppose or cancel, and hence have no
probative value. With respect to the two district court
actions, the papers submitted from the action against
Dassault Systemes Solidworks Corporation do not reflect a
victory for applicant in the proceeding. The papers from
the district court action against the Open Design Alliance
reflect a settlement of the action, which did not involve
the proposed mark DWG, but involved “trademark infringement
and false designation of origin based on [Open Design
Alliance’s] improper simulation of Autodesk’s TrustedDWGTM
authentication mechanism and use of the AUTODESK® trademark
….” This consolidated appeal does not involve either of
the TrustedDWG or AUTODESK marks.
Next, applicant submitted copies of several foreign
registrations for DWG and DWG formative marks. In In re
Hag Aktiengesellschaft, 155 USPQ 598 (TTAB 1967), the Board
stated, “[t]he foreign registrations … are not persuasive
on the issue before us because it has not been demonstrated
that the criteria for registration in these countries
involve examination systems in any way analogous to that of
this country; and manifestly applicant's right of
registration must be determined under the provisions of the
Ser. No. 78852798, 78852808, 78852813, 78852822 and 78852843
29
Lanham Act as interpreted by the various judicial tribunals
in this country.” Thus, the foreign registrations have no
probative value.
We have also considered the other evidence submitted
and arguments made by applicant in support of its claim of
acquired distinctiveness, including the asserted
recognition by third-parties of applicant’s trademark
rights, and references to DWG by “glossary publishers” such
as “Free On-Line Dictionary of Computing.” Such evidence
and arguments fail to persuade us that applicant has
acquired distinctiveness in the term DWG.
We also point out that applicant did not submit other
types of evidence which the Board typically considers in
determining acquired distinctiveness. Specifically, there
is no evidence regarding advertising expenditures or the
quantity, frequency and scope of any advertising of
software under the applied-for marks. Clearly, DWG is not
the primary mark for applicant’s goods, and it is not
apparent from the material submitted by applicant to what
extent the DWG-formative marks have made an impression on
purchasers as a source indicator for applicant’s goods.
Thus, in view of the foregoing, and given the highly
descriptive nature of the designation DWG, we would need
substantially more evidence than what applicant has
Ser. No. 78852798, 78852808, 78852813, 78852822 and 78852843
30
submitted in order to find that the designation has become
distinctive of applicant's goods. In re Lens.com Inc., 83
USPQ2d 1444 (TTAB 2007). Because the applied-for term has
been used in association with a highly successful product
does not mean the term has acquired distinctiveness.
Decision: The examining attorney’s finding that the
Section 2(f) showing is insufficient in application Serial
No. 78852798 is affirmed. The requirements for disclaimers
of DWG in application Serial Nos. 78852808, 78852813,
78852822 and 78852843 are also affirmed.
Application Serial Nos. 78852798, 78852808, 78852813,
78852822 and 78852843 are all refused registration.
However, the disclaimer requirements will be set aside
if, within thirty (30) days of the mailing date of this
decision, applicant submits to the Board a proper
disclaimer of the term “DWG” in each of application Serial
Nos. 78852808, 78852813, 78852822 and 78852843. See
Trademark Rule 2.142(g), 37 U.S.C. § 2.142(g); and TBMP
§ 1218 (3d ed. rev.2, June 2013). A proper disclaimer
should state as follows:
No claim is made to the exclusive right to use
the term “DWG” apart from the mark as shown.