Smartling, Inc. v. Skawa Innovation Kft.

This Opinion Is Not a
Precedent of the TTAB
Mailed: December 1, 2025
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Smartling, Inc.
v.
Skawa Innovation Kft.
_____
Cancellation No. 92063654
_____
Heidi Howard Tandy, of Berger Singerman LLP, for Smartling, Inc.
Thomas P. O’Connell, of O’Connell Law Office, for Skawa Innovation Kft.
_____
Before Heasley, Thurmon and Brock, Administrative Trademark Judges.
Opinion by Thurmon, Administrative Trademark Judge:
Smartling, Inc. (Petitioner) is the owner of a Principal Register registration for
the mark SMARTLING, in standard characters, for “Nondownloadable software as a
service (SAAS) namely, software for use by others for enabling multi-language
translation of content,” in International Class 42.1 Petitioner also asserts common
1 Registration No. 4968464 was issued on May 31, 2016. The registration is based on an
application filed October 9, 2015, under Trademark Act Section 1(a), 15 U.S.C. § 1051(a),
alleging October 2009, as the date of first use anywhere and in commerce. Because no specific
date of first use was asserted in the application, we treat the asserted first use date as
October 31, 2009, the last day of the month given in the application. TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 903.06 (Nov. 2025) (“When a month and year are given

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law rights in the same mark. Skawa Innovation Kft. (Respondent) owns a Principal
Register registration for the mark EASYLING, in standard characters, for
“information technology training; computer education training; training services
concerned with the use of computer software,” in International Class 41 and “creating
and maintaining web sites for others; information technology IT consulting services;
software as a service (SAAS) services featuring non-downloadable software for
language translation; web site design services; website development for others;
updating of websites, for others; creating electronically stored web pages for online
services and the internet; installing web pages on the internet for others;
technological consultation in the technology field of computers,” in International
Class 42.2
Petitioner alleges priority and likelihood of confusion under Section 2(d) of the
Act, 15 U.S.C. § 1052(d), based on its registration and its asserted common law rights
in the SMARTLING mark, which Petitioner alleges is likely to be confused with
Respondent’s EASYLING mark. Respondent asserted certain affirmative defenses,
but did not pursue any defense at trial, resulting in the waiver or forfeiture of these
defenses. In re Google Tech. Holdings LLC, 980 F.3d 858, 862-63 (Fed. Cir. 2020)
(holding that arguments not presented to the Patent Trial and Appeal Board were
forfeited, while noting that the loss of such rights has been identified as “waiver” in
without a specified day, the date presumed for purposes of examination is the last day of the
month.”).
2 Registration No. 4766628 was issued on July 7, 2015. The registration is based on an
International Registration of the mark under Trademark Act Section 66(a), 15 U.S.C.
§ 1141(f). A Section 71 declaration was accepted on April 14, 2025.

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prior decisions); see also Peterson v. Awshucks SC, LLC, 2020 TTAB LEXIS 520, *2-
3 at n.3 (party “did not present any evidence or argument with respect to these
asserted defenses at trial, so they are deemed waived”). Petitioner’s Section 2(d) claim
is, therefore, the sole claim before us.3 We deny the petition to cancel because
Petitioner has failed to prove a likelihood of confusion.
I. The Record
The record consists of the pleadings and, pursuant to Trademark Rule 2.122(b)(1),
the prosecution file for Respondent’s subject registration. The record also includes
evidence submitted by the parties. Petitioner submitted the following:
• A testimonial declaration of John L. Welde, Jr., the founder and president
of Petitioner, with exhibits;4
• A Notice of Reliance with a wide variety of evidence;5
• A Confidential Notice of Reliance, with another wide variety of evidence;6
3 The parties were engaged in district court litigation that resulted in suspension of this
proceeding. Respondent prevailed in that litigation and moved for summary judgment based
on the outcome of the court proceeding. Petitioner expressly sought cancellation of
Respondent’s mark (Count IV in the amended complaint in the civil action), so this
proceeding is a second bite at the cancellation apple for Petitioner. 32 TTABVUE 44-45.
Respondent moved for summary judgment on all Petitioner’s claims on the basis of res
judicata and collateral estoppel. Id. Summary judgment, based on claim preclusion, was
granted as to Petitioner’s claims of a lack of bona fide intent to use the mark in commerce
and the claim of abandonment. 35 TTABVUE 17, 20. Summary judgment was denied as to
Petitioner’s Section 2(d) claim. Id. at 21. A denial of a motion for summary judgment is not a
final judgment on the claims or defenses raised by the motion.
4 84 TTABVUE.
5 85 TTABVUE (Notice of Reliance with exhibits A – E); 86 TTABVUE (exhibits F – I); 87
TTABVUE (exhibits K – DD); 95 TTABVUE (exhibit J, with videos); 96 TTABVUE (exhibit
EE, with videos). This notice of reliance included almost 2,400 pages.
6 88 TTABVUE (Confidential Notice of Reliance with exhibits AA – part of exhibit HH); 89
TTABVUE (redacted confidential Notice of Reliance); 91 TTABVUE (more of exhibit HH, all
confidential); 92 TTABVUE (the remainder of exhibit HH, all confidential). This notice of
reliance included over 3,000 pages, all of it filed under seal.

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• A testimonial declaration of Petitioner’s counsel regarding the terms and
conditions of Respondent’s website;7
• A rebuttal Notice of Reliance, with a variety of evidence;8
• A rebuttal testimonial declaration of Petitioner’s counsel regarding traffic
to Respondent’s website;9
• A second rebuttal Notice of Reliance with various evidence submitted to
rebut testimony of a witness of Respondent;10 and,
• A second rebuttal testimonial declaration of Petitioner’s counsel concerning
Respondent’s discovery obligations.
Respondent submitted the following evidence:
• A Notice of Reliance with third-party registration and use evidence and a
variety of other evidence.11
Before we move on to an analysis of Petitioner’s entitlement to bring this action
and the substance of its Section 2(d) claim, we feel compelled to comment on the
record before us. Petitioner submitted almost 7,000 pages of evidence, much of it
repetitive and most of it through Notices of Reliance that provide little helpful
explanation of the evidence. The result leaves this Board with a relatively large
record and almost no guidance on what parts of it are supposed to prove specific parts
of Petitioner’s claims. This practice should be avoided.
By way of example, Petitioner submitted copies of a professional trade magazine,
Multilingual, but gave no clear explanation of why.12 We found the magazine helpful
7 93 TTABVUE.
8 115 TTABVUE.
9 116 TTABVUE (original); 117 TTABVUE (substitute with minor change to original).
10 118 TTABVUE.
11 99 (public)/100 (confidential) TTABVUE.
12 See, e.g., 84 TTABVUE 11 (Welde declaration) (“Smartling and Skawa regularly advertise
in and are profiled by the same industry publications, journals, and websites, including
Multilingual Magazine and Slator.”). This is the only explanation of the relevance of this

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to understand the market in which the parties operate, but Petitioner submitted
certain editions as many as three times. The January/February 2015 edition, for
example, was submitted, in full, as an exhibit to Mr. Welde’s declaration, though he
said very little about the magazine in his declaration.13 The same edition of this
magazine was presented a second time with Petitioner’s Notice of Reliance, again in
full.14 Petitioner submitted the same edition a third time, this time as a confidential
exhibit filed under seal, with its Confidential Notice of Reliance.15 Many other
documents are repeated two and three times, as well.
One exhibit (HH to Petitioner’s Confidential Notice of Reliance) contains almost
3,000 pages of evidence, much of it a repeat of submissions in Petitioner’s
nonconfidential Notice of Reliance. According to the Notice, this exhibit contains
“documents entered as evidence during [a court case involving the same parties].”16
As best we can tell, Petitioner submitted the entire evidentiary record from a court
case, all of it under seal, as a single exhibit, with no specific explanation of the
relevance of any part of it. Again, such a practice is unhelpful and forces the Board to
spend an undue amount of time reviewing the record.
But that is not all. In its Confidential Notice of Reliance, Petitioner identifies
exhibits A – HH. The evidence with this Notice, however, begins with exhibit AA. The
publication, despite the fact that copies of editions of the Multilingual magazine were also
provided with the notices of reliance Petitioner submitted.
13 84 TTABVUE 11, 22-89.
14 86 TTABVUE 382-449.
15 88 TTABVUE 768-64 (only the first 64 of 68 total pages).
16 Id. at 16.

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other twenty-six exhibits are described in the Notice, but are missing. Petitioner,
however, did include with the massive exhibit HH a copy of an expert report of Neil
J. Zoltowski, a damages expert, whose testimony this Board twice ordered Petitioner
not to submit.17 As there are no monetary claims before us, and because we granted
two separate motions to exclude this testimony, we have not considered it.
And now we come to Petitioner’s objections to the evidence submitted by
Respondent. In its Trial Brief, Petitioner makes vague objections to the third-party
registration evidence submitted by Respondent “to the extent they were not properly
made of record.”18 No specific objectionable registration evidence is identified.
Petitioner then objected to twelve exhibits that consist of Internet webpage
screenshots “because they are not accurate or complete versions of such pages.”19 We
reject these objections as far too vague and lacking in merit to exclude any of the
evidence Respondent submitted.
Petitioner then submitted, with its Rebuttal Brief, eleven pages of highly-detailed
objections to specific evidence submitted by Respondent during its trial period.20 We
deny all of these objections as untimely in the extreme. Evidentiary objections are not
a gotcha tool, but rather a tool to provide notice to the party offering the evidence that
it may need to cure or fix some problem to ensure the evidence is considered.
17 92 TTABVUE 1160-94. To be fair, Respondent also submitted this expert report, for reasons
we also cannot comprehend. 100 TTABVUE (confidential) 454-67.
18 121 TTABVUE 44.
19 Id.
20 126 TTABVUE 28-38.

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Objections are a means to an end, and the desired end is a record with admissible
evidence so that the dispute may be resolved on the merits. It is wholly improper to
wait until the last brief that may be filed under our rules to submit a detailed list of
objections to materials that were submitted almost one year earlier.21 Grote Inds.,
Inc. v. Truck-Lite Co., LLC, 2018 LEXIS 105, *5-6 (TTAB 2018) (“Objections raised
for the first time in a reply brief are untimely because they effectively foreclose the
adverse party from responding to the objections.”).
II. Entitlement to a Statutory Cause of Action
Entitlement to a statutory cause of action must be established in every inter
partes case. Curtin v. United Trademark Holdings, Inc., 137 F.4th 1359, 1364 (Fed.
Cir. 2025); see also Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1303 (Fed. Cir.
2020). A party in the position of plaintiff may petition to cancel a registration when
it demonstrates (i) an interest falling within the zone of interests protected by the
statute, 15 U.S.C. §§ 1063 & 1064, and (ii) a reasonable belief in damage that is
proximately caused by registration of the mark. Corcamore, 978 F.3d 1303 (citing
Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 120-37 (2014));
id. at 1305 (applying Lexmark to inter partes TTAB cases).
In this case, Petitioner relies upon common law rights in its SMARTLING mark
and asserts a Section 2(d) claim (priority and likelihood of confusion) as the basis for
cancelling Respondent’s registration of its EASYLING mark. Petitioner has shown
21 Respondent submitted its Notice of Reliance on August 22, 2024. Petitioner filed its
Rebuttal Brief on August 15, 2025.

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uses of its SMARTLING mark in commerce and the likelihood of confusion claim is
not specious. Double Coin Holdings Ltd. v. Tru Dev., 2019 LEXIS 347, *13-14 (TTAB
2019) (entitlement to bring and maintain likelihood of confusion claim may be
established based on prior common-law use of a similar mark); Giersch v. Scripps
Networks, Inc., 2009 LEXIS 72, *9-10 (TTAB 2009) (finding standing – now referred
to as entitlement – based on common law use); MyMeta Software, Inc. v. Meta
Platforms, Inc., 2024 LEXIS 153, *9 (TTAB 2024). Petitioner has made a sufficient
showing to establish its entitlement to bring this action, a point Respondent does not
dispute.22
III. Priority
Petitioner asserts both its registration and alleged common law rights in the
SMARTLING mark, but does not claim priority based on its registration.23
Respondent does not address the priority issue in its Trial Brief, but the record shows
that Petitioner does not have priority based on its registration. Petitioner filed its
application to register the SMARTLING mark on October 9, 2015, and obtained its
registration on May 31, 2016.24 Respondent filed its application to register the
EASYLING mark on August 15, 2014, and obtained its registration on July 7, 2015.
Under the Act, registration priority is based on the filing date, and Respondent’s
application was filed over a year before Petitioner’s application. Trademark Act
22 125 TTABVUE. Respondent makes no mention in its Trial Brief of Petitioner’s entitlement
to bring this action.
23 121 TTABVUE 21-23 (arguing priority based on common law rights alone).
24 Registration 4968464.

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Section 7(c), 15 U.S.C. § 1057(c), (filing date of application to register constitutes
constructive use and confers a right of priority as against another person who has not
used the mark prior to such filing).
Petitioner, however, claims common law rights in the SMARTLING mark, and
has submitted unrebutted evidence of use dating back to 2009.25 Respondent’s
earliest uses of the EASYLING mark occurred in 2011.26 It is not clear whether
Respondent’s first uses occurred in the United States, but as the evidence appears to
show the earliest uses of the EASYLING mark occurred in 2011, Petitioner’s common
law priority is established.
IV. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) involves an analysis of all
of the probative evidence of record bearing on a likelihood of confusion. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “DuPont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003). A likelihood of confusion analysis
often focuses on the similarities between the marks and the similarities between the
goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
1103 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
25 84 TTABVUE 4 (testimony of Welde). This shows that Petitioner was incorporated in 2009,
and obtained the domain names smartling.com and smartling.net in 2009. Mr. Welde further
testified that Petitioner began using the SMARTLING mark on its website in 2009 in
connection with “translation proxy services,” which are some of the same services Petitioner
provides today.
26 91 TTABVUE 499-505 (emails relating to a seedcamp program that involved Respondent
in 2011), 510-11 (emails regarding Respondent’s participation in a how-to-web event in 2011).

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cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017).
A. DuPont Factors Two and Three – The Similarity of the Services
and Trade Channels
We begin with DuPont factors two and three because our analysis of these factors
explore the nature of the services, which in this case are highly technical. This
analysis will define the relevant consumer group--those consumers who make
purchasing decisions regarding the services the parties offer. This analysis also
allows us to explain what related services are used with those directly provided by
the parties. These points will be important in our evaluation of other DuPont factors.
The parties are competitors and offer effectively identical services. The specific
services offered by each party likely differ in certain technical respects, but the record
makes it clear that the parties compete to provide the same type of services to the
same customers. Indeed, there is evidence that Petitioner has lost some customers to
Respondent, which is clear evidence that the parties compete.27 Respondent does not
dispute this fact, noting that the parties are “Operating in the same field of
translation ….”28 When the parties offer competing services, the risk of confusion
27 91 TTABVUE 681-94 (discussing Control4 moving its business from Petitioner to
Respondent, via Lionbridge, a Language Services Provider); 695-98 (Moravia, a large
language services provider considering Respondent as an alternative to Petitioner); 706-08
(lasvegas.com moved its business, provided through Lionbridge, from Petitioner to
Respondent).
28 125 TTABVUE 32.

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increases. In re Majestic Distilling Co., 315 F.3d 1311, 1316 (Fed. Cir.
2003) (Likelihood of confusion established where products were competing). The
second DuPont factor, therefore, weighs in favor of a finding that confusion is likely.
Not surprisingly, the parties offer their services through the same trade channels,
another fact that is not in dispute. Respondent notes that the parties “invariably
operate in the same channels….”29 This overlap increases relevant consumers’
exposure to both marks in the same or similar settings, and therefore increases the
risk of confusion. The third DuPont factor, therefore, also weighs in favor of a finding
that confusion is likely.
The parties translate the original content of a website into many different
languages. This can be accomplished using computer aided translation (CAT)
technology, which has been around for many years, but has become much more
accurate and reliable because of the increasing use of Artificial Intelligence (AI) in
this process.30 A machine-based translation can be performed very quickly, but it may
not be sufficiently accurate in all cases. For that reason, the parties also use
professional translation services, sometimes to check the CAT results and sometimes
to translate original materials.31
29 Id.
30 84 TTABVUE 49-51 (Multilingual magazine article about the use of machine translation
and the cloud); Id. at 55 (Multilingual magazine article about translation technologies, that
explains the use of freelance translators and use of the cloud); 99 TTABVUE 239-40
(marketing materials touting use of AI in translation services); Id. at 289-90 (another
translation management services provider touting “AI-enhanced speech and translation
tools”).
31 85 TTABVUE 558 (Internet article about Smartling that states, “Smartling’s language
services match professional translators with your content who are experienced with your

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Translated versions of the website in many different languages are maintained by
parties like those involved in this dispute, and these translated versions of the
website can then be provided to a user in her preferred language almost
instantaneously.32 The services provided by these parties operate in the background,
meaning an Internet user who obtains a website in a desired language is “using” the
services, but is rarely aware of what has happened to provide the website in the user’s
local language or who has provided this service.33 It is easy to see how important this
type of service can be as Internet-based services become increasingly global. But it is
also important, for our purposes, to understand who the relevant consumers are for
these services. End Internet users are not typically within the relevant consumer
group.
Rather, large companies and others who rely heavily on the Internet are the target
customers of these services.34 While these organizations are the relevant purchasers
of these services, a highly-specialized IT professional, or a team of such professionals,
industry, manages their schedule, and ensures the quality and timeliness of delivery always
meets your expectations.”).
32 85 TTABVUE 526-27 (Tech Crunch article from 2010 explaining how Smartling combines
“professional translators, machine translations, and crowdsourced translations,” all
managed through Smartling’s software). In some cases, the translated content is stored on a
server of the client of the Petitioner or Respondent. In either scenario, the translated content
is stored and then presented to end Internet users as needed.
33 84 TTABVUE 6-7 (Welde testimony explaining, in general terms, how the parties’ services
operate); 85 TTABVUE 620 (Nimdzi article on Translations Management Systems, stating
“With the reality of continuous translated content delivery, there exist consumers and clients
who don’t want to know (or who don’t care to know) how their products get localized into
multiple languages. They just want to see it get done - and the sooner, the better.”).
34 85 TTABVUE 555 (Internet article stating, “Smartling is a leading provider of translation
management software that aids brands in enhancing their global presence by adapting their
content for international markets.”).

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are likely the ones making the decisions concerning these services. The relevant
consumers, that is, the persons making the purchasing decisions, are highly-
specialized IT professionals with a background in translation services.35 We will
discuss this point more as we consider DuPont factor four in the next section of this
decision.
B. The Sophistication of the Relevant Consumers – the Fourth
DuPont Factor
It has long been recognized that “confusion is less likely where goods are expensive
and are purchased after careful consideration than where they are inexpensive and
are purchased casually.” Magnaflux Corp. v. Sonoflux Corp., 231 F.2d 669, 671 (1956).
See also Checkpoint Sys. v. Check Point Software Techs., Inc., 269 F.3d 270, 284 (3d
Cir. 2001) (“When consumers exercise heightened care in evaluating the relevant
products before making purchasing decisions, courts have found there is not a strong
likelihood of confusion. Where the relevant products are expensive, or the buyer class
consists of sophisticated or professional purchasers, courts have generally not found
Lanham Act violations.”); Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d
713, 718 (Fed. Cir. 1992).
As we explained above when defining the relevant consumer, the services offered
by these parties are highly technical in nature and the purchasers likely exercise
35 85 TTABVUE 624 (Nimdzi article stating “even the most technically minded members of a
localization team may feel they’re not qualified enough to efficiently evaluate and compare
all of the different integrations, supported workflows, etc., available in a range of TMS
solutions.”); Id. at 555 (Internet article explaining that it takes a few months to implement a
new TMS option and may take six to nine months to transition to a new option).

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great care in making buying decisions. Petitioner’s SMARTLING services have been
quoted as reaching “well beyond $100,000 per year” for large “enterprise-grade
requirements.”36 Deciding which translation management system to adopt can be an
extremely complex process that likely takes weeks or months to complete.37
This case is not like Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 1325 (Fed. Cir. 2014), where the investment services at issue were purchased
by both sophisticated investors and ordinary consumers. When the goods or services
are offered to a range of consumers, as in the Stone Lion case, the Board must focus
on the degree of care exercised by the least sophisticated potential purchaser. Id.
This case is more like Magnaflux Corp., 231 F.2d at 671, where both parties
offered “a device for detecting flaws in magnetic bodies by magnetizing the bodies and
applying to them a finely divided magnetic material which is caused to assume a form
corresponding to any defect in the body.” Id. at 670. Such goods were “relatively
expensive and [were] sold to discriminating purchasers ….” Id. at 671. The same is
clearly true in this case, where the relevant consumers are not only highly-specialized
professionals, but typically engage in a prolonged process of working closely with the
representatives of the translation management system they are evaluating or
purchasing.38 There is no evidence of a mixed market here, where less sophisticated
36 85 TTABVUE 558.
37 Id. at 624 (Internet article about Petitioner’s services stating, “Evaluating and migrating
between technologies is a lot of work and there are always reasons not to do it. It might be
the complexity of moving away from a familiar infrastructure, even if it isn’t fit for the
purpose, or the prospect of time, technical work, and costs involved.”).
38 Petitioner makes the argument that because Respondent provides free trials to some
prospective customers, there can be little care exercised, suggesting that free services equal

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purchasers are also involved. 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.
C. Strength or Weakness of Petitioner’s SMARTLING mark – the
Fifth and Sixth DuPont Factors
When evaluating the strength or weakness of a mark, we look at the mark’s
inherent strength based on the nature of the term itself and its commercial strength
in the marketplace. In re Chippendales USA, Inc., 622 F.3d 1346, 1353-54 (Fed. Cir.
2010) (measuring both conceptual and marketplace strength); see also DuPont, 476
F.2d at 1361. “[T]he strength of a mark is not a binary factor, but varies along a
spectrum from very strong to very weak.” In re Coors Brewing Co., 343 F.3d 1340,
1344 (Fed. Cir. 2003). See also Joseph Phelps Vineyards, LLC v. Fairmont Holdings,
857 F.3d 1323, 1325 (Fed. Cir. 2017); Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1374-75 (Fed. Cir. 2005).
1. Market Strength of Petitioner’s SMARTLING Mark
Petitioner’s SMARTLING mark has been in use for about fifteen years. Petitioner
has won awards within its market segment and was ranked the fifth most “heard of”
less care or sophistication. 121 TTABVUE 35-36; 126 TTABVUE 21 (“There’s no
sophistication for freebies.”). This argument completely ignores reality and the record. Free
trials may be offered, but these trials are offered to highly specialized prospective purchasers
as part of a lengthy evaluation process. Much of the evidence we cited above concerning the
sophistication of the relevant consumers comes from Petitioner’s own evidence, which clearly
refutes this argument.

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translation management system in a survey conducted by a trade group.39 Petitioner
markets its SMARTLING software and services in trade publications, at trade shows
and through its website.40 Petitioner has not shown that the SMARTLING mark is
famous and has provided little direct evidence of its market strength. Despite the
somewhat thin record on this issue, we find the evidence shows that Petitioner’s
SMARTLING mark has achieved at least a moderate level of consumer recognition
withing its market segment. The market strength of the SMARTLING mark weighs
slightly in favor of a likelihood of confusion finding.
2. Conceptual Strength of Petitioner’s SMARTLING Mark
Conceptual strength is a measure of a mark’s distinctiveness and may be placed
“in categories of generally increasing distinctiveness: . . . (1) generic; (2) descriptive;
(3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos, Inc. v. Taco Cabana, Inc., 505
U.S. 763, 768 (1992). Respondent does not argue that the SMARTLING mark is
descriptive, but does argue that the “ling” portion of the SMARTLING mark is generic
or descriptive and commonly-used within the relevant market.41
Mr. Welde, Petitioner’s principal witness, testified that the SMARTLING mark
“is, conceptually, evocative of a diminutive that a parent, a teacher, or a friend might
call another person for doing well in school or doing something smart.”42 There is
39 84 TTABVUE 3-4 (Welde testimony of awards won by Petitioner); 85 TTABVUE 621
(Nimdzi survey finding that 66% of respondents had heard of Smartling).
40 84 TTABVUE 4-5.
41 125 TTABVUE 23-24.
42 84 TTABVUE 4.

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dictionary evidence that the term “ling,” when used as a suffix, can refer to a small
or diminutive person, such as a hireling or underling.43 The meaning of the
SMARTLING mark proposed by Petitioner, however, runs contrary to the evidence
from the relevant market segment.
The parties offer competitive translation services, part of a broader field of
linguistics. The term ling. is an abbreviation for linguistics.44 Multilingual is the
name of a leading trade publication, one that has featured ads by both parties in this
dispute.45 The articles and ads within this magazine routinely refer to linguistics and
language translation. Indeed, the title of the publication, Multilingual, is likely
understood within the relevant market as a reference to translation services. When
we consider the market context in which Petitioner’s SMARTLING mark is used, the
meaning of the “ling” portion of the mark is clear. It is a reference to linguistics, the
very field in which Petitioner operates. The mark, as a whole, is suggestive of a
translation management system that is smart.
Respondent presented evidence of third-party registrations and Internet uses of
marks that contain the “ling” term or variants of that term. Such evidence can help
us understand the meaning of a mark, or a part of a mark, in a manner similar to
dictionary evidence. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-
39 (Fed. Cir. 2015); Jack Wolfskin Ausrustung Fur Draussen GmbH v. New
43 99 TTABVUE 174.
44 Id. at 177.
45 84 TTABVUE 11; id. at 58 (EASYLING ad on p.37 of a Multilingual magazine); 59
(SMARTLING ad in Multilingual magazine at p.38 of the publication).

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Millennium Sports, S.L.U., 797 F.2d 1363, 1373 (Fed. Cir. 2015). We find the third-
party evidence is compelling and confirms that the term “ling” when used in marks
within the relevant market is a reference to linguistics or language, the very field of
services offered by the parties. The term, therefore, is descriptive of the parties’
services, and many related services within the broader translation services market.
Respondent provided active federal trademark registrations of the following
marks, all for translation services in International Class 41 or 42:
• MULTILING46
• ILING47
• LINGQ48
• WORLDLINGO49
• inlingua50
• LINGPERFECT51
• LINGVO52
• AMERILING53
46 99 TTABVUE 91 (Registration 3094863). This registration provides a first use date from
1988.
47 Id. at 95 (Registration 5211282).
48 Id. at 98 (Registration 3767876).
49 Id. at 101 (Registration 2511796).
50 Id. at 104 (Registration 1099859). This registration provides a first use date from 1972.
51 Id. at 107 (Registration 4755098).
52 Id. at 110 (Registration 4089352).
53 Id. at 113 (Registration 6141867).

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• ILINGO2.COM54
• LINGTECH.55
In addition to the third-party registrations, Respondent also offered Internet
screenshots showing uses of the following marks for translation services:
• POWERLING56
• LINGARCH57
• LINGSOFT58
• LINGSOM59
• LINGVANEX.60
In addition to these uses, the record contains an edition of the Multilingual
magazine showing uses of the following trademarks or trade names for professional
translation services that use the term “ling” or a variant:61
• LingoTM62
54 Id. at 126 (Registration 5479478).
55 Id. at 138 (Registration 6996398). This registration is owned by the same entity that owns
the registration of the LINGPERFECT mark, shown above.
56 Id. at 48-51 (the evidence shows versions of a POWERLING website from 2009, 2013 and
2023).
57 Id. at 268-70.
58 Id. at 280-81.
59 Id. at 284-85.
60 Id. at 289-91.
61 We rely on these listings only for what is shown on the face of the exhibits, not for the truth
of any matters asserted in connection with these trademark uses.
62 84 TTABVUE 38 (this business provides a translation memory (TM) software product).

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• Lingotek63
• Medilingua64
• Lingualinx65
• Lingvistica66
• Afrolingo67
• Eurolingo68
• Prolinguo69
Given this evidence, it is clear that the term “ling” and its variants are used within
the relevant market segment as a reference to linguistics, which is perhaps the
broadest term that encompasses the range of translation services offered with the
relevant market.70 Not all these uses are of the term “ling” as suffixes, as it is used in
both the SMARTLING and EASYLING marks. But the varied uses are telling,
63 Id. at 39. This is not the same business that owns the registration of LINGTECH.
64 Id. at 68 (providing medical translation services).
65 Id. at 85.
66 Id. at 213 (translation dictionary and grammar checking software).
67 Id. at 224.
68 Id. at 226.
69 Id. at 230.
70 While the professional translation service providers are not direct competitors with the
parties in this proceeding, professional translators are involved in the process used by the
parties. Some of the uses listed above provide localization services, one core service provided
by both parties in this dispute. 84 TTABVUE 78 (Multilingual magazine article from the
January/February 2015 edition, with “Basic Terms,” defining “localization” as “the process of
adapting a product or software to a specific international language or culture so that it seems
natural to that particular region. True localization considers language, culture, customs and
the characteristics of the target locale.”); id. at 164 (a Multiligual magazine listing
SMARTLING as a “localization tool”).

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because this record shows a pattern in which many parties make reference to
linguistics in a descriptive manner. In each of these examples, even those showing
marks with “lingua” or “lingo,” the root “ling” is present and conveys the message that
the services or software offered involve the field of linguistics. Indeed, it is partly the
breadth of the uses of these terms that makes it so clear that they are all descriptive
references to the linguistics field, and in particular, to the translation services field,
in which these varied businesses operate.
Petitioner’s SMARTLING mark will convey the same meaning within the relevant
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. In this context, the word “smart” conveys its ordinary meaning,
of clever or intelligent.71 The term “ling” within Petitioner’s mark conveys a
descriptive message about the field in which Petitioner operates. The professionals
within this market will immediately understand this meaning.
Petitioner complains that Respondent is improperly dissecting the SMARTLING
mark when it focuses on the term “ling.”72 We disagree. While Petitioner’s mark is a
single word, it is a compound word that contains two terms that have established
meanings. In such a situation, it can be appropriate to consider each term to help
understand the meaning of the mark as a whole. Minn. Mining & Mfg. v.
Addressograph-Multigraph Corp., 1967 LEXIS 152, at *5 (TTAB 1967) (“It is almost
71 99 TTABVUE 142-43.
72 126 TTABVUE 10-11.

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too well established to cite cases for the proposition that an otherwise merely
descriptive term is not made any less so by merely omitting spaces between the
words….”). Moreover, the only common element of the parties’ marks is the term
“ling,” showing the importance of considering whether this term has an established
meaning within the relevant market. See, e.g., Jack Wolfskin, 797 F.2d at 1374
(noting that third-party evidence may show that “some segment that is common to
both parties’ marks may have a normally understood and well-recognized descriptive
or suggestive meaning, leading to the conclusion that that segment is relatively weak
….”) (internal quotations omitted). That is precisely what we find here. The “ling”
segment of the parties’ marks has a well-recognized descriptive meaning within the
relevant market, and, therefore, this segment of Petitioner’s mark is weak.
Petitioner’s mark is SMARTLING, a mark that we find suggestive, taken as a
whole. Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 17 F.4th 129, 146 (Fed.
Cir. 2021) (a mark registered on the Principal Register without a showing of acquired
distinctiveness is presumed to be inherently distinctive). But the “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.

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D. The Similarity of the Marks – The First DuPont Factor
Under the first DuPont factor, we determine the similarity or dissimilarity of
Petitioner’s and Respondent’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 476 F.2d at
1361. “[S]imilarity is not a binary factor but is a matter of degree.” In re St. Helena
Hosp., 774 F.3d 747, 752 (Fed. Cir. 2014) (citation omitted). “The proper test is not a
side-by-side comparison of the marks, but instead whether the marks are sufficiently
similar in terms of their commercial impression such that persons who encounter the
marks would be likely to assume a connection between the parties.” i.am.symbolic,
866 F.3d at 1323 (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 1368 (Fed. Cir. 2012) (internal quotation marks omitted)).
The marks are not similar. They do not appear similar, sound similar or have
similar meanings. The only point of similarity is the common use of the term “ling”
as the second part (or suffix) of each mark. But as we explained above when
evaluating the conceptual strength of the SMARTLING mark, the term “ling,” when
used in the relevant market, is a common reference to linguistics. The parties are
competitors in the translation management system market, and the services the
parties provide involve linguistics. 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. In re Detroit Athletic Co., 903 F.3d
1297, 1305 (Fed. Cir.) (“[T]here is nothing improper in stating that, for rational

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reasons, more or less weight has been given to a particular feature of a mark, provided
the ultimate conclusion rests on consideration of the marks in their entireties.”).73
We find these marks are likely to create different commercial impressions within
the relevant market. 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.74 This is particularly true in this case, where the
purchasers are highly sophisticated.
Because the marks are not similar, the first DuPont factor weighs heavily against
a finding the confusion is likely.
E. Actual Confusion or the Lack Thereof – The Seventh and Eighth
DuPont Factors
Petitioner argues that there has been actual confusion, but the evidence it relies
upon does not support its argument.75 Petitioner’s primary piece of evidence comes
from a 2019 blog post about a professional translation provider conference held in
73 Petitioner focuses on the shared “ling” element when it argues the marks are similar, an
approach at odds with Petitioner’s complaints about Respondent’s focus on the “ling” element
when evaluating the conceptual strength of the SMARTLING mark. 121 TTABVUE 26
(“Confusion is likely as Opposer’s [Petitioner’s] and Applicant’s [Respondent’s] marks each
have the suffix ‘-LING’ ….”). But it is not improper dissection of a mark to note that one
element of a mark is more distinctive than another.
74 99 TTABVUE 142-52 (definitions of “smart”), 158-63 (definitions of “easy”).
75 121 TTABVUE 37-38.

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Amsterdam.76 David Grunwald, a consultant in the translation services field,
attended the conference and posted the blog about it.77 At one point in the blog, Mr.
Grunwald discussed a panel on enterprise and ecommerce localization, which is one
of the services provided by both parties’ translation management systems. Balazas
Benedek, of Easyling, was a member of this panel, together with representatives of
Nike, Bose and Kayak.78 This part of the blog correctly identified Mr. Benedek with
Respondent Easyling.
In a later part of the blog, Mr. Grunwald stated that he “connected in a meaningful
way with [Mr. Benedek] and Peter Farago of Smartling due to the Hungarian
connection (my Mother was born in Budapest and Hungarian was my first language
as a baby).”79 The blog was corrected when Mr. Grunwald was informed of his
mistaken reference to Smartling in this part of the blog post, so the current version
correctly refers to Mr. Benedek and Mr. Farago as being with Easyling.80 Mr.
Grunwald testified that he was not confused, but simply made a mistake in the initial
version of the blog.81
It is clear from the record that Mr. Grunwald made a mistake, but was never
confused. He had previously connected Mr. Benedek correctly with Easyling, a
76 99 TTABVUE 20-27. Petitioner also submitted evidence of the blog post, but Respondent
provided a declaration by the author of the post. We cite to the Respondent’s submission here
because it provides a more complete account of what happened.
77 Id. at 20-21.
78 Id. at 26.
79 Id. at 21.
80 Id. (Grunwald declaration); Id. at 27 (current corrected version of the blog).
81 Id. at 21.

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business in Budapest, Hungary. He later referred to this location, but mistakenly
connected the Easyling representatives with Petitioner, Smartling. And while Mr.
Grunwald has explained his mistaken reference to Smartling, rather than Easyling
in this part of the blog, readers of the blog post might have been confused. But such
readers would have seen both the correct reference to Easling in connection with the
panel discussion and the later incorrect reference to Smartling. What would relevant
consumers make of this post? We have no evidence showing how many persons
accessed this post or whether it led to any actual confusion in the market. On balance,
this evidence appears to show a simple mistake, not actual confusion.
Petitioner’s other example of alleged actual confusion was also a mistake. A Mr.
Zydron was assisting Respondent with the marketing of its EASYLING services.82 In
one draft marketing release, Mr. Zydron referred to SMARTLING, when talking
about Respondent’s services.83 This error was corrected and the erroneous email was
never sent.84
While neither of these two incidents reflects an actually confused consumer, the
mistakes likely occurred because the SMARTLING and EASYLING marks have some
similarity. It is worth noting that in making these mistakes, neither person referred
to a competing business with a completely different trademark. So, while this
evidence does not show actual confusion, it does show mistakes that are likely due to
82 Id. at 18-19 (Benedek declaration).
83 Id.
84 Id.

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the similar part of these two marks. This fact is probative of some risk that others in
the market might make the same mistake, but we cannot take this point too far.
These parties have been direct competitors in the relevant market for about fifteen
years. They have run ads on consecutive pages in a leading industry publication.85
And the blog post with the mistaken reference to Smartling also shows that Mr.
Benedek of Respondent was a member of a panel discussion that included
representatives of Nike, Bose and Kayak.86 Given such a long period of direct
competition, one would have expected some actual confusion to have occurred if
confusion is likely.
Petitioner tries to avoid this obvious conclusion by contending that Respondent
has a small presence in the market.87 The evidence, however, refutes this contention.
Respondent has taken customers like General Mills, Discovery card, and
lasvegas.com away from Petitioner.88 Petitioner argues that Respondent’s services
are white-labeled, meaning Respondent’s EASYLING mark is not presented when
the services are running.89 But this point is a red herring. We explained above that
these parties’ services benefit Internet end users, but such users are not the relevant
consumers. The IT professionals with the businesses that select such services are the
85 84 TTABVUE 58 (SMARTLING ad in Multilingual magazine), 59 (EASYLING ad in the
same publication).
86 99 TTABVUE 26.
87 121 TTABVUE 39-40.
88 99 TTABVUE 14 (Benedek declaration); see also Id. at 471 (confidential).
89 121 TTABVUE 17, 39-40.

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relevant consumers. And these professionals know which party is providing their
services.
There is evidence, for example, that after Petitioner lost the lasvegas.com
business, it communicated with this former customer and made direct statements
(mostly derogatory) about Respondent’s EASYLING services.90 Petitioner cannot
credibly contend that customers (e.g., like lasvegas.com) are unaware that they are
using Respondent’s EASYLING services, when Petitioner directly notes this fact in
its own communications with such customers. The record makes it clear that these
parties have been competing for many years for the same customers. These are
exactly the sort of circumstances in which actual confusion could have occurred.
CDOC, Inc. v. Liberty Bankers Life Ins. Co., 844 F. App’x 357, 363 (Fed. Cir. 2021)
(when we “determine if the absence of actual confusion is indicative of the likelihood
of confusion, the fact finder looks to real market conditions to evaluate consumer
exposure to the marks at issue, assessing the length of time of any concurrent use;
the similarity of the services, customers, and trade channels.”).
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.
90 92 TTABVUE 877-85. Mr. Welde, then CEO of Petitioner, stated in one email, “I believe
Lionbridge has misled you into thinking that Easyling is an acceptable replacement for
Smartling.” Id. at 884.

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F. Weighing the DuPont Factors
When we consider the overall impact of the DuPont factors, it is clear that
Petitioner has failed to prove a likelihood of confusion. While the parties are
competitors and operate in the same trade channels, the marks, taken in their
entireties, are not similar. In addition, this case involves a highly-sophisticated class
of relevant purchasers, a buying process that takes weeks or months, and expensive
services. Finally, the parties have competed for about fifteen years without any real
actual confusion. 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.
Decision: The petition to cancel is denied.