United States District Court, E.D. Virginia, Alexandria Division
ANTHONY J. TRENGA, District Judge.
Plaintiff Autodesk, Inc. ("Autodesk") appeals the decision of the United States Patent and Trademark Office (USPTO) to deny trademark registration to the mark "DWG." The case is before the Court on cross-motions for summary judgment. For the reasons stated below, the Defendant's Motion for Summary Judgment is GRANTED, and the Plaintiff's Motion for Summary Judgment is DENIED.
Plaintiff Autodesk is a design software company that since the 1980s has developed computer-aided design (CAD) software that is used by architects and engineers to design and build two- and three-dimensional virtual models of buildings, products and other physical objects. Autodesk's most successful and best known product is AutoCAD, and according to Autodesk, its AutoCAD sales have totaled over $11 billion. "DWG" is Autodesk's name for the digital file format and technology underlying AutoCAD. DWG has become one of the most commonly used design data formats; and companies other than Autodesk have developed software using that format. See, e.g., A119, A123, PTO 1095, PTO 1025.
On April 3, 2006, Autodesk filed an application to register five marks covering computer software: DWG, DWG & DESIGN (a design plus word mark), DWG TRUEVIEW, DWG TRUECONVERT, and DWG EXTREME (collectively, "the DWG Application").
On June 9, 2011, the United States Patent and Trademark Office (USPTO) issued Final Office Actions against Autodesk denying the DWG Application on the ground that "DWG" was descriptive and Autodesk failed to establish acquired distinctiveness. Briefly summarized, the USPTO reasoned that "dwg" is the abbreviation for "drawing" and ".dwg" is the file extension on a type of file Autodesk created but which has come to be used descriptively by others in the industry, and for which Autodesk has disavowed any proprietary rights. For these reasons, the USPTO refused to register the DWG and the other marks unless Autodesk disclaimed exclusive rights to "DWG."
On December 8, 2011, Autodesk filed a notice of appeal to the Trademark Trial and Appeal Board (TTAB), which issued an order affirming the USPTO decision on September 30, 2013. On November 27, 2013, Autodesk filed this action to challenge and reverse the TTAB's September 30, 2013 decision pursuant to Section 21(b) of the U.S. Trademark Act of 1946 ("the Lanham Act"), 15 U.S.C. § 1071(b).
The parties have filed cross motions for summary judgment. They have also stipulated that the Court should resolve any material factual disputes without any further proceeding based on the summary judgment record before the Court, effectively stipulating to a trial upon stipulated facts. See Doc. No. 36. On September 18, 2014, the Court held a hearing on these motions, following which the Court took the motions under advisement.
II. Standard of Review
Autodesk has introduced evidence in addition to that presented in USPTO proceedings. The Court therefore reviews the record de novo and acts as the finder of fact based on the entire record presently before the Court. See Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 156 (4th Cir. 2014) ("where new evidence is presented to the district court on a disputed fact question, a de novo finding will be necessary to take such evidence into account together with the evidence before the board") (internal citation omitted).
Section 2 of the Lanham Act provides that a mark that is descriptive of the goods in connection with which it is used cannot be registered unless the registrant proves that the mark has acquired distinctiveness, also called secondary meaning. 15 U.S.C. § 1052(f); see Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210 (2000). "DWG" is, at best, a descriptive mark. To establish secondary meaning, Autodesk must therefore show that "in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself." Inwood Laboratories, Inc. v. Ives Laboraties, Inc., 456 U.S. 844, 851 n.11 (1982). However, in order to establish its entitlement to trademark registration, Autodesk must make only a "prima facie showing" of distinctiveness, rather than a conclusive showing. See Yamaha Int'l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1576 (Fed. Cir. 1988).
The Fourth Circuit has articulated certain non-exhaustive factors relevant to determining secondary meaning vel non: "(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." Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 125 (4th Cir. 1990). "In assessing the existence of secondary meaning, no single factor is determinative... and every element need not be proved. Each case, therefore, must be resolved by reference to the relevant factual calculus." Dick's Sporting Goods, Inc. v. Dick's Clothing & Sporting Goods, Inc., 188 F.3d 501 at *4 (4th Cir. 1999). Upon review of the facts pertaining to those considerations, the Court finds that Autodesk has not adequately ...