Interview with Arnold van der Weide – Part 3

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Deelip: Tell me more about the settlement with Autodesk regarding DWG.

Arnold: Around the time of the TrustedDWG issue, Autodesk filed cancellation requests with the USPTO for the trademarks held by SolidWorks, Softelec and the ODA. We had the trademark on OpenDWG. That took a life of its own. At that time I was not even thinking about trademarks. I was too busy reorganizing the ODA, saving money, setting up the QA system, etc. Then later SolidWorks got sued by Autodesk and we filed for a suspension because the suit between Autodesk and SolidWorks was about the same thing. So for about 18 months they were fighting it out and we were kept waiting. In the meantime we were internally discussing about the branding. OpenDWG became less and less important because that was the name of a library that we actually stopped developing in the year 2000. We had already change the name of the organization from “The OpenDWG Alliance” to “The OpenDesign Alliance” and the OpenDWG library had morphed into DWGdirect. So the use of OpenDWG was sometimes causing more of a problem than anything else. We could not mention the trademark a lot on our web site because the library was outdated. Besides, OpenDWG was actually confusing a lot of people.

In fact, I had tried to get the OpenDGN trademark because we were thinking of rebranding DWGdirect and DGNDirect to OpenDWG and OpenDGN. But that did not work out.

Deelip: Oh! So you were planning on reverting back to the old names?

Arnold: Yes, Because OpenDWG is a good mark. But since we stopped using it since 2000, if would be difficult for us make our case at the USPTO. So I came to the conclusion that OpenDWG was not worth the trouble anymore. Starting this year SolidWorks and Autodesk settled and at that moment I thought it was time to go and try to settle with Autodesk.

Deelip: So it was you who initiated the settlement with Autodesk?

Arnold: Yes, I called somebody at Autodesk. We had a meeting fairly quickly and we have since settled the dispute.

Deelip: So by settle, you mean that you are giving up rights to the OpenDWG trademark, which gives Autodesk the chance to go ahead and trademark DWG.

Arnold: Yes. Autodesk can now continue the process that they started at the USPTO to trademark DWG.

Deelip: Don’t you think that this will come back to haunt you later on?

Arnold: No. Why should it?

Deelip: I mean, if you are not standing in the way of a company as large and as powerful as Autodesk to trademark a file format which is a major component of your technology, don’t you think that you are doing a disservice to all your members?

Arnold: No. Because a file format cannot be trademarked.

Deelip: Yes. That is what one judge has said. But you never know. Another may come up with another interpretation of the law.

Arnold: Not exactly. That is not what the judge said. Actually there is a document from the USPTO wherein the examiner examining the trademark clearly states that you cannot trademark a file format. And even if you look at the trademark guidelines on the Autodesk site, it clearly states that you can use DWG in the sense of a file format.

Deelip: But it cannot be part of a product name or other branding.

Arnold: No, it cannot.

Deelip: And you are OK with that?

Arnold: Yes. We have changed our branding anyways. So this does not really matter any more.

Deelip: Your members have product names with DWG in them. For example, my company is a member and we have names like “DWG Import for SolidWorks” and similar.

Arnold: I have 1100 members. I don’t know how many products they have and how many of them contain DWG.

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