FALL 2014
IN THIS ISSUE
Court Finds “DWG” Marks Descriptive of Software
Trademark Board Cuts Application For “Cutlery” Mark
Court Finds “DWG” Marks Descriptive of Software
The U.S. District Court for the Eastern District of Virginia recently held that five “DWG” marks are descriptive of computer software from Autodesk, Inc. Autodesk, Inc. v. Lee, No. 1:13-CV-1464 (AJT/JFA), 2014 WL 5500799 (E.D. Va. Oct. 30, 2014). Autodesk is a software company that, since the 1980s, has developed computer-aided design (CAD) software products, the best-known of which is AutoCAD. Autodesk created and uses the digital file extension .dwg (for drawing) with its products.
In 2006 Autodesk filed applications to register the following marks with the U.S. Patent and Trademark Office (USPTO): DWG, DWG and Design, DWG TRUEVIEW, DWG TRUECONVERT, and DWG EXTREME (collectively, Marks). In 2011 the USPTO issued final refusals to register the Marks on the grounds that they are descriptive of the software listed in the applications and Autodesk failed to establish that the Marks have acquired distinctiveness.
Autodesk exercised its option under Section 21(b) of the Trademark Act, 15 U.S.C. § 1071(b), to appeal the USPTO’s decision to a federal district court instead of to the U.S. Court of Appeals for the Federal Circuit. Because Autodesk presented evidence to the district court that went beyond the evidence presented to the USPTO’s Trademark Trial and Appeal Board, the court acted as the finder of fact on the entire record.
The court held that “‘DWG’ is, at best, a descriptive mark” and cannot be registered without “secondary meaning,” i.e., acquired distinctiveness. To determine whether DWG has secondary meaning, the court used the factors the U.S. Court of Appeals for the Fourth Circuit set forth in Perini Corp. v. Perini Construction, Inc., 915 F.2d 121, 125 (4th Cir. 1990): (1) advertising expenditures; (2) consumer studies linking the mark to a source; (3) sales success; (4) unsolicited media coverage of the product; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark's use.
The court noted Autodesk’s advertising, although extensive, used the marks AUTOCAD and AUTODESK to brand the company’s products but used DWG “in a descriptive sense, to indicate software that works on, or is compatible with, [.]dwg formatted files.” The court also noted that Autodesk’s consumer studies showed that the public associates DWG with products that use the .dwg file extension, not necessarily with Autodesk as the source of such products, especially given that other companies also offer software products using the .dwg file extension.
The court found Autodesk’s sales figures unpersuasive for the same reasons explained in connection with the company’s advertising expenditures—the “sold products are not branded with an unadorned DWG label, but rather with branding that incorporates DWG as part of a larger mark or with other designs or marks.” The court also found unpersuasive Autodesk’s evidence of unsolicited media coverage, noting the evidence consisted of the number of online searches for “dwg” which resulted in visits to Autodesk’s websites and not of actual news stories.
With regard to third-party attempts to plagiarize the mark, the court said that Autodesk’s evidence showed only certain third parties had settled trademark disputes with Autodesk concerning “DWG” marks, not that Autodesk had prevailed on the merits of its trademark claims. Finally, with respect to the length and exclusivity of Autodesk’s trademark use of DWG, the court noted Autodesk had submitted evidence of such use and of its licensing to third parties the ability to integrate DWG technology into their products. But the court said Autodesk’s use of DWG as a mark did not prove that DWG has secondary meaning. Likewise, the court also said Autodesk’s licensing of the DWG mark, along with DWG technology, did not show DWG has secondary meaning.
Thus, the court held 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.” Accordingly, the court entered judgment in favor of the USPTO.
Trademark Board Cuts Application For “Cutlery” Mark
In a decision showing that evidence of actual confusion, although relatively rare, can sometimes play a key role in a trademark case, the Trademark Trial and Appeal Board (TTAB) upheld the refusal of the U.S. Patent and Trademark Office to register Dasalla Trading Company’s mark CUTLERYANDBEYOND. Cutlery and More, LLC v. Dasalla Trading Company, Opposition No. 91201666 (October 31, 2014) [not precedential]. The TTAB ruled that Dasalla’s mark is likely to cause confusion with the mark CUTLERYANDMORE.COM and Design owned by Cutlery and More, LLC (CM).
Dasalla applied to register its mark for “retail store and on-line retail store services featuring cutlery and kitchenware,” in International Class 35. CM had registered CUTLERYANDMORE.COM and Design for use with “on-line retail store services featuring cutlery, cookware, kitchen items and accessories thereof,” also in International Class 35.
The TTAB said that the parties’ services were “essentially identical” and therefore their services presumably “move through the same channels of trade and are sold to the same classes of purchasers.” Next the TTAB noted that the word portions of the parties’ marks are similar (especially given that one meaning of “beyond” is “more”), that the stylization and design elements of CM’s registered mark are not “particularly distinctive,” and that greater weight is given to the word portion of a combination mark such as CUTLERYANDMORE.COM and Design than to its design element.
Dasalla argued that because the word CUTLERY is not distinctive for the parties’ services, the TTAB, in considering the issue of similarity or dissimilarity, should treat MORE and BEYOND as the dominant and only inherently distinctive portions of the marks. The TTAB agreed that CUTLERY is not distinctive for the relevant services but added that neither MORE nor BEYOND “is a particularly distinctive term.” The TTAB said, “In view of the ‘run-on’ nature of the two marks before us, we see little reason to designate any component of the marks as a ‘dominant’ component or to give special weight to the words MORE and BEYOND.”
Dasalla submitted copies of 25 third-party registrations for marks that include the word CUTLERY and argued that there are so many “CUTLERY” marks that consumers “will look to other elements beyond the term CUTLERY to distinguish the source of the goods or services, namely the dominant terms MORE and BEYOND.” But the TTAB said the registrations were not proof of use or of how the public would view such marks. (The TTAB did not explain why marks registered on the basis of their use in U.S. interstate commerce—as most marks are—cannot be evidence, even if limited in nature, of such use.)
The TTAB found CM’s evidence of actual confusion, in the form of e-mails and telephone-call transcripts, to be much more persuasive. Although Dasalla objected to the evidence on the grounds of hearsay, the TTAB said that, first, most of the evidence was not offered for the truth of the matter asserted and therefore was not subject to the hearsay rule and, second, the rest could be accepted under the “state of mind” exception to the rule.
The e-mails and transcripts showed that several of CM’s customers thought they had dealt with CM when they actually had ordered goods from Dasalla. Claiming that the amount of actual confusion was de minimis, Dasalla argued that it did not prove there was a likelihood of confusion. But the TTAB noted that “‘[i]n general, evidence of actual confusion is notoriously difficult to come by’” (quoting General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1604 (TTAB 2011)) and that “‘[a] showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion’” (quoting In re Majestic Distilling Co., 65 USPQ2d 1201, 1205 (Fed. Cir. 2003)).
Based on its comparison of the parties’ marks and services and taking into consideration “there is credible evidence of actual confusion,” the TTAB held Dasalla’s mark CUTLERYANDBEYOND “so resembles [CM’s mark CUTLERYANDMORE.COM and Design] as to be likely to give rise to confusion, mistake or deception as to the source of [Dasalla’s] services.” Accordingly, the TTAB affirmed the refusal to register Dasalla’s mark.