TTAB Denies SMARTLING/EASYLING Cancellation Petition for Translation Software Due to Differences in Marks, Purchaser Sophistication, and Lack of Actual Confusion

In this nine-year-old proceeding, the Board denied Smartling, Inc.'s petition for cancellation of a registration for the mark EASYLING (standard characters) for translation software, finding confusion unlikely with the registered and common law mark SMARTLING for overlapping goods. In an earlier skirmish, Respondent Skawa moved for summary judgment on the grounds of claim preclusion and issue preclusion based on its successful defeat of a unfair competition lawsuit brought by Smartling. [TTABlogged here]. The Board there agreed that claim preclusion applied to Smartling's claims of abandonment and lack of bona fide intent, which claims could have been brought in the civil action, but denied any preclusion vis-a-vis its likelihood of confusion claim due to the differences in transactional facts and the lack of any specific finding in the jury's conclusion regarding likelihood of confusion. Smartling, Inc. v. Skawa Innovation Kft., Cancellation No. 92063654 (December 1, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

Large companies and others who rely heavily on the Internet are the target customers of the parties' services: translating versions of a website into many different languages so that a visitor to the website may see the content in her or his preferred language almost instantaneously. However, the end user is not the relevant consumer; but rather highly specialized professionals with a background in translation services.

We are dealing with a case of highly sophisticated purchasers and a careful, protracted purchasing process. Such circumstances greatly reduce the risk of confusion, as this Board and the courts have consistently held. The fourth DuPont factor, therefore, weighs very heavily against a finding that confusion is likely.

As to the strength of Smartling's mark, the Board found that the term “ling” is a reference to linguistics or language. "The term, therefore, is descriptive of the parties’ services, and many related services within the broader translation services market." "To the highly sophisticated translation professionals within this market, who knows Petitioner’s services, Petitioner’s mark will suggest a translation management system that is smart."

[T]he “ling” segment of this mark is weak and will not be viewed as a distinctive source-identifying element of the mark. It is only the mark as a whole that has some conceptual strength. Given this marginal conceptual strength, we find the sixth DuPont factor is neutral, but we do so with the express reservation that the “ling” segment of Petitioner’s mark is not distinctive.

The Board found the marks to be "not similar." "Given that the only shared element of the marks is descriptive of the parties’ services, that element will have minimal source-identifying impact on the relevant purchasers."

The SMARTLING mark likely suggests a smart translation management system, one that performs complex functions for its users. The EASYLING mark, on the other hand, suggests an easier-to-use translation management system. The words “smart” and “easy” have wholly distinct meanings, and when used in these marks, lead to different meanings and commercial impressions for each mark. This is particularly true in this case, where the purchasers are highly sophisticated.

Therefore, the first DuPont factor "weighed heavily" against a finding that confusion is likely.

Finally, the Board noted that the parties have been in direct competition for more than 15 years. "Given such a long period of direct competition, one would have expected some actual confusion to have occurred if confusion is likely." "The absence of probative actual confusion evidence, therefore, suggests that the relevant purchasers were never confused by these two marks. The seventh and eighth DuPont factors, taken together, weigh somewhat against a finding that confusion is likely."

We place great weight on the dissimilarity of the marks (DuPont Factor One) and the purchasing conditions (DuPont Factor Four), which together easily outweigh the fact that the parties compete. Petitioner may have lost business to Respondent, but the record shows that is a result of competition, not because of confusion in the market.

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TTABlogger comment: Hat-tip to Bostonian Tom O'Connell, a fellow patent/trademark attorney.

Text Copyright John L. Welch 2025.