For those who are wondering what this new noise between Autodesk and the OpenDesign Alliance is all about, here are some quick details. Autodesk has sought to cancel all six of the ODA’s trademarks and service marks for “OPENDWG” and “OPENDWG and Design” in various categories citing the following reasons:
1) Autodesk has been using the term DWG since the 1980’s
2) The ODA changed it’s name from OpenDWG to OpenDesign in October 2003.
3) The ODA obtained the marks fraudulently.
The first two reasons do not need an explanation. However, the third one does. We all know that the ODA’s entire business revolves around DWG. So how could they have possibly obtained a trademark for “OpenDWG” (the name of their libraries at that time) fraudulently?
Autodesk claims these reasons for fraud:
1) The ODA never used the mark in commerce as of the claimed date of first use.
2) The specimen of the mark submitted by the ODA was a photocopy of a CD. Autodesk claims that the ODA never distributed any CD’s since all their software was available as a download only.
2) The ODA never used the mark for the claimed services: “providing multiple-user access to a global computer information network for the transfer and dissemination of a wide range of information“.
There are a few other reasons as well. The first two reasons do not need an explanation. However, the third one sounds interesting. According to some Trademark Manual, “providing multiple-user access to a global computer information network for the transfer and dissemination of a wide range of information” refers to the service of Internet Service Providers and the ODA is certainly not an ISP. So why did the ODA register it’s marks as an ISP? I have absolutely no clue. But it certainly seems like this one is going to come back to bite them.
Autodesk points to an earlier case where the judge observed that “if fraud can be shown in the procurement of a registration, the entire resulting registration is void“.
So has the ODA shot itself in the foot?