Smartling, Inc. v. Skawa Innovation Kft.

Decision Date25 June 2021
Docket Number92063654
PartiesSmartling, Inc. v. Skawa Innovation Kft.
CourtUnited States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board

Smartling, Inc.
Skawa Innovation Kft.

No. 92063654

United States Patent and Trademark Office, Trademark Trial and Appeal Board

June 25, 2021

This Opinion is Not a Precedent of the TTAB

Before Greenbaum, Pologeorgis, and Johnson, Administrative Trademark Judges.

By the Board:

This case comes up on Skawa Innovation Kft.'s ("Respondent") motion for summary judgment on its affirmative defenses that Smartling, Inc.'s ("Petitioner") claims are barred by the doctrines of res judicata and collateral estoppel, alternatively known as claim preclusion and issue preclusion, respectively.[1] The motion is fully briefed.

I. Background

Respondent owns Principal Register Registration No. 4766628 for the standard character mark EASYLING, for the following services in International Classes 35, 41, and 42:

Class 35: Direct marketing services; data processing services; price comparison services; systemization of information into computer databases; compilation of information into computer databases; marketing; on-line advertising on a computer network; outsourcing services business assistance; advertising and marketing; updating of advertising material; advertising; writing of publicity texts; word processing; telemarketing services
Class 41: Language interpreter services; dubbing; information technology training; computer education training; training services concerned with the use of computer software computer based educational services in the field of language translation; translation services; provision of educational examinations and tests
Class 42: Hosting computer web sites; computer software design; duplication of computer programs; computer programming; computer software consultancy; rental of computer software; recovery of computer data; creating and maintaining web sites for others; monitoring of computer systems by remote access; data conversion of computer programs and data not physical conversion; maintenance of computer software; computer system design; digitization of documents by scanning; computer system analysis; information technology IT consulting services; software as a service (SAAS) services featuring non-downloadable software for language translation; web site design services; providing online support services for computer program users; product research and development; designing and implementing network webpages for others; design, creation, hosting and maintenance of websites for others; development of computer software; customization of computer software; constructing an internet platform for electronic commerce; website development for others; consultancy relating to product development; creation of computer programs for data processing; application service provider (ASP) services namely, hosting computer software applications of others preparation of computer programs in respect of data processes; research relating to data processing; research and consultancy services relating to computer software; updating of websites, for others; hosting of digital content, namely online journals and blogs; consultancy in relation to computer software; leasing of computer software; creating electronically stored web pages for online services and the internet; installing web pages on the internet for others; updating of computer programs for third parties; creation, maintenance and adaptation of software; providing temporary use of on-line, non-downloadable software for use in publishing and printing; development of software solutions for internet providers and internet users; engineering services relating to information technology; designing websites for advertising purposes; technological consultation in the technology field of computers; creation of data-processing programs; rental of computer software and hardware; time sharing for computers; computer software engineering; computer code conversion for others; installation and customization of computer applications software; installing, updating and maintaining of computer software.

The registration issued on July 7, 2015, based on a "Madrid application" for a request for an extension of protection under the Madrid Protocol, based on International Registration No. 1230853, under Trademark Act Section 66(a), 15 U.S.C. § 1141(a).

In the amended petition to cancel, Petitioner seeks cancellation of the registration on the following grounds:[2]

● likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d);[3]
● abandonment under Trademark Act Section 45, 15 U.S.C. § 1127;[4] and
● lack of bona fide intent to use the EASYLING mark in commerce pursuant to Trademark Act Section 1(b), 15 U.S.C. § 1051(b).[5]

The likelihood of confusion and lack of bona fide intent claims have been asserted against all of the services in the registration. The abandonment claim has been asserted against all of the services in Classes 35 and 41, and certain services in Class 42.[6]

In support of the likelihood of confusion claim, Petitioner has alleged prior use of the mark SMARTLING for:

translation services, business consulting services, the creation and distribution of educational and informational materials in the form of books, ebooks, newsletters, videos, audio recordings, website translations, website internationalization, website localization, downloadable software for use by translators and for purposes of localization and translation, software as a service for use in translation and localization, mobile/website/software localization services, multimedia services, content authoring and creation, interpretation, international SEO, call center operations, desktop publishing[7]

Respondent, in its answer, denied the salient allegations of likelihood of confusion, abandonment, and lack of bona fide intent to use. In its answer, Respondent also asserted certain affirmative defenses, including the affirmative defenses of res judicata (claim preclusion) and collateral estoppel (issue preclusion) based on the final decision of the United States District Court for the District of Massachusetts in a civil action between the parties involving Respondent's mark and registration (the "Prior Proceeding").

II. The Pleadings

Because the parties' respective claims and affirmative defenses are before us as a result of Respondent's motion for summary judgment, we exercise our discretion to review the parties' pleadings to determine their legal sufficiency. See Fed. R. Civ. P. 56(a); Asian & W. Classics B.V. v. Selkow, 92 U.S.P.Q.2d 1478, 1480 (TTAB 2009).

A. The Amended Petition to Cancel

Petitioner has sufficiently pleaded the claim of likelihood of confusion based on its allegations that Respondent's EASYLING mark for the identified services is likely to cause confusion with Petitioner's previously-used SMARTLING mark for the services specified in the amended petition to cancel. See Trademark Act Section 2(d); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 U.S.P.Q. 40, 43-45 (CCPA 1981); Nike, Inc. v. Palm Beach Crossfit Inc., 116 U.S.P.Q.2d 1025, 1030 (TTAB 2015).

Petitioner, by its allegations of priority and likelihood of confusion, also has pleaded facts, which, if proven, would be sufficient to establish its entitlement to maintain a statutory cause of action.[8] See Threshold.TV, Inc. v. Metronome Enter., Inc., 96 U.S.P.Q.2d 1031, 1036 (TTAB 2010).

The Board previously reviewed the grounds of abandonment and lack of bona fide intent to use the mark when considering Petitioner's motion for leave to file the amended petition to cancel, and determined that these grounds are sufficiently pleaded.[9] The Board further determined, however, that the proposed claim of nonuse was legally futile because the claim is not an available ground for cancellation of a registration that issued under Trademark Act Section 66(a), because an applicant seeking an extension of protection under Section 66(a) is not required to show use in commerce of its mark prior to registration.[10] The Board further stated that "[a]lthough the putative nonuse claim will be given no further consideration as an independent ground for cancellation, the Board will not strike the facts alleged in support of the nonuse claim because they may provide additional factual support for the abandonment and lack of bona fide intent claims."[11]

B. Respondent's Answer and Affirmative Defenses

Respondent's answer is acceptable in that it fairly responds to the allegations in the amended petition to cancel.

In its first and second affirmative defenses, Respondent has sufficiently pleaded the defenses of claim preclusion and issue precision.[12]

In its third and ninth affirmative defenses, Respondent asserts that Petitioner has failed to state a claim upon which relief can be granted, [13] and that Petitioner lacks standing to maintain the cancellation action.[14] Neither is an affirmative defense. See Blackhorse v. Pro Football, Inc., 98 U.S.P.Q.2d 1633, 1637 (TTAB 2011). Accordingly, these putative "affirmative defenses" are stricken. Fed. R. Civ. P 12(f).

In its fourth and sixth affirmative defenses, Respondent asserts that there is no likelihood of confusion because the parties' marks are different and Petitioner's mark is weak and entitled to little or no protection.[15] These are not affirmative defenses, but rather amplifications of Respondent's denials of Petitioner's allegations of likelihood of confusion. Nevertheless, we will allow these "defenses" to remain part of Respondent's pleading because they provide Petitioner with further notice of how Respondent intends to defend the likelihood of confusion claim. Order of Sons of Italy in Am. v. Profumi Fratelli Nostra AG, 36 U.S.P.Q.2d 1221, 1223 (TTAB 1995).

In its fifth affirmative defense, Respondent asserted that Petitioner's claims are "barred by the equitable...

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