Can File Extensions Be Trademarked? (Part 2)


Can you get a trade-mark for .doc, .pdf or other file extensions? To follow up on our earlier post (Can File Extensions be Trade-marked?), in the US, the answer is “No”, as the makers of AutoCAD software discovered in 2009, when they tried to enforce a trade-mark for the file extension .dwg (referring to “drawing”), which is the file format for the AutoCAD software product. There, the Court made it clear that file extensions are functional and thus cannot be enforced as trade-marks. Autodesk has also failed to obtain a registration for the mark DWG at the USPTO because DWG is descriptive of software which assists in the creation of drawings which use a .dwg file extension. So far, their application to register DWG has been denied for these reasons. 

In Canada, the answer is apparently “Yes” since Autodesk has obtained a registered trade-mark for the mark DWG for use in association with “Computer programs and software in the field of computer aided design and instruction manuals sold as a unit.”  Canadian law generally accords with US law on the subject of descriptiveness and functionality.  In the Supreme Court’s famous decision in Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65 (CanLII), (the Lego case), the Court was clear that Lego building blocks are not protectable as trade-marks in Canada, on the grounds that the shape of the blocks is purely functional in nature, and the Trade-marks Act is clear that descriptive marks are not registrable. Why this analysis does not apply to file extensions is not clear, but any attempt by Autodesk to assert a trade-mark infringement claim against a functional or descriptive use of .dwg as a file extension would likely run into that defence.

Calgary – 07:00 MDT
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