Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1079569
`
`Filing date:
`
`09/03/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92063654
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Skawa Innovation Kft.
`
`THOMAS P Oâ##CONNELL
`Oâ##CONNELL LAW OFFICE
`1026A MASSACHUSETTS AVENUE
`ARLINGTON, MA 02476
`UNITED STATES
`Primary Email: tpo@oconnellusa.com
`Secondary Email(s): diane@oconnellusa.com
`781-643-1845
`
`Submission
`
`Motion for Summary Judgment
`
`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
`
`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 04/22/2021
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Thomas P. O'Connell
`
`tpo@oconnellusa.com
`
`/Thomas P. O'Connell MA Bar 567644/
`
`09/03/2020
`
`92063654_Motion_Summary_Judgment_vf.pdf(149798 bytes )
`92063654_Motion_Summary_Judgment_Exhibits.pdf(839200 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`92/063,654
`Cancellation No.:
`4,766,628
`Registration No.
`07/07/2015
`Registration Date:
`Skawa Innovation Kft.
`Owner:
`Easyling
`Mark:
`International Classes: 035, 041, 042
`
`___________________________________
`
`
`
`
`
`
`}
`SMARTLING, INC.
`
`
`
`}
`Petitioner,
`
`
`}
`
`
`
`
`}
`
`
`
`
`
`
`}
`v.
`
`
`
`
`
`}
`
`
`SKAWA INNOVATION KFT.,
`
`
`}
`
`
`Respondent.
`
`
`}
`___________________________________ }
`
`
`
`SKAWA INNOVATION KFT.’S MOTION FOR SUMMARY JUDGMENT
`
`COMES NOW Respondent Skawa Innovation Kft. (hereinafter “Respondent” or
`
`
`
`“Skawa”) hereby respectfully moving this Honorable Trademark Trial and Appeal Board for an
`
`Order entering summary judgment in Respondent’s favor pursuant to Rule 56 of the Federal
`
`Rules of Civil Procedure and 37 C.F.R. § 2.127 on all grounds alleged in the Amended Petition
`
`for Cancellation of Petitioner Smartling, Inc. (hereinafter “Petitioner” or “Smartling”) and
`
`dismissing the above-identified Cancellation proceeding with prejudice.1
`
`
`
`Petitioner’s claim for cancellation of the same registration for the same mark has already
`
`been litigated to final judgment between the same parties in a United States District Court of
`
`1 Respondent has filed and served its Answer and Affirmative Defenses (31 TTABVUE), and Respondent certifies
`that the parties have held their mandatory settlement and discovery conference in accordance with Fed. R. Civ. P.
`26(f) and 37 C.F.R. § 2.120(a)(1)–(a)(2). It is understood that, “[w]hen any party timely files a potentially
`dispositive motion, including, but not limited to, a motion to dismiss, a motion for judgment on the pleadings, or a
`motion for summary judgment, the case is suspended by the Trademark Trial and Appeal Board with respect to all
`matters not germane to the motion and no party should file any paper which is not germane to the motion except as
`otherwise may be specified in a Board order.” 37 C.F.R. § 2.127(d).
`
`
`
`1
`
`

`

`competent jurisdiction. Petitioner’s claim for cancellation is barred by the doctrines of res
`
`judicata and collateral estoppel, the very essence of which being to prevent such collateral
`
`attacks on prior judgments, to conserve the resources of adjudicative bodies, and to relieve
`
`parties of the cost and vexation of multiple lawsuits. Since relitigation of a previously-litigated
`
`claim is barred, Petitioner’s Amended Petition for Cancellation, which seeks to relitigate a claim
`
`already fully and fairly litigated before a United States District Court, should be dismissed.
`
`
`
`I. Background
`
`On July 24, 2014, Smartling filed Civil Action No. 14-cv-13106-ADB (the “Civil
`
`Action”) in the United States District Court for the District of Massachusetts. Ex. A: USDC-MA
`
`ECF No. 1. On November 4, 2015, Smartling filed a First Amended Complaint where it sought
`
`as Count IV “Cancellation of the Easyling Mark.” Ex. B: USDC-MA ECF No. 25. With Count
`
`IV, “Smartling ask[ed] the Court to cancel the Easyling mark [Registration No. 4,766,628]
`
`pursuant to 15 U.S.C. § 1119 because the Smartling mark is senior to the Easyling mark and the
`
`Defendants’ use of the Easyling mark creates significant consumer confusion.”
`
`After nearly five years of litigation, the Civil Action went to a full trial by jury, and the
`
`jury rendered a verdict against Smartling and in favor of Respondent on all counts. Ex. C:
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`USDC-MA ECF No. 150. Based on the jury’s verdict, the United States District Court entered
`
`the following judgment on June 27, 2019: “Judgment is entered in favor of Defendant Skawa
`
`Innovation Ltd. on all counts.” Ex. D: USDC-MA ECF No. 154 (emphasis supplied).
`
`Respondent Skawa thus prevailed on all counts, including Count IV by which Smartling brought
`
`its claim for cancellation of Registration No. 4,766,628 for the mark EASYLING. No appeal has
`
`been taken. The judgment of the District Court is final.
`
`
`
`2
`
`

`

`Just weeks after losing on its claim for cancellation in the District Court, Smartling filed a
`
`“Motion to Re-Open Proceedings” in this action and then an amended petition for cancellation
`
`seeking again to litigate the claim for cancellation of the EASYLING registration that it had just
`
`lost. 14 and 26 TTABVUE. As in the Civil Action, Smartling seeks the cancellation of Skawa’s
`
`Registration No. 4,766,628 for the EASYLING mark. 1 and 26 TTABVUE. The District Court
`
`concluded, Petitioner now “seeks the same cancellation of Defendant's registration that it sought
`
`in [the District Court] action”. 20 TTABVUE.
`
`With its Amended Petition for Cancellation, Smartling added allegations of “NONUSE,”
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`“ABANDONMENT,” and “NO BONA FIDE INTENT TO USE THE MARK IN
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`CONNECTION WITH ALL LISTED SERVICES” to “LIKELIHOOD OF CONFUSION” in
`
`support of its claim for cancellation. Each such basis either was asserted or could have been
`
`asserted in the Civil Action, including at the time Smartling filed its amended complaint.
`
`
`
`II. The Summary Judgment Standard.
`
`Pursuant to Rule 56 of the Federal Rules of Civil Procedure, summary judgment shall be
`
`granted “if the movant shows that there is no genuine dispute as to any material fact and the
`
`movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). “Summary judgment
`
`procedure is properly regarded, not as a disfavored procedural shortcut, but rather as an integral
`
`part of the Federal Rules as a whole.” Celotex Corp. v. Catrett, 477 U.S. 317, 327 (1986). The
`
`purpose of summary judgment is to promote efficiency and judicial economy. TBMP § 528.01.
`
`“[A]s a general rule, the resolution of Board proceedings by means of summary judgment is to
`
`be encouraged.” Univ. Book Store v. Univ. of Wis., 33 USPQ2d 1385, 1389 (TTAB 1994). In
`
`response to a summary judgment motion, the non-moving party “may not rest on mere denials or
`
`
`
`3
`
`

`

`conclusory assertions, but rather must proffer countering evidence. . . that there is a genuine
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`factual dispute for trial.” TBMP § 528.01, citing Fed. R. Civ. P. 56.
`
`
`
`III. Undisputed Material Facts.
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`There is not a genuine issue to be tried relative to at least the following material facts:
`
`1.
`
`On July 24, 2014, Smartling filed Civil Action No. 14-cv-13106-ADB in the
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`United States District Court for the District of Massachusetts. Ex. A: USDC-MA ECF No. 1;
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`Exhibit I: Affidavit of Counsel.
`
`2.
`
`On November 4, 2015, Smartling filed its First Amended Complaint in the Civil
`
`Action seeking as Count IV “Cancellation of the Easyling Mark.” Ex. B: USDC-MA ECF No.
`
`25.
`
`3.
`
`With Count IV of the Civil Action, Smartling sought “Cancellation of the
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`Easyling Mark,” Respondent’s Registration No. 4,766,628 for the trademark Easyling, pursuant
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`to 15 U.S.C. § 1119. Id.
`
`4.
`
`After nearly five years of litigation, the Civil Action proceeded to trial by jury,
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`and the jury rendered a verdict against Smartling on all counts. Ex. C: USDC-MA ECF No.
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`150.
`
`5.
`
`The United States District Court entered the following judgment on June 27, 2019
`
`for Respondent and against Petitioner: “Judgment is entered in favor of Defendant Skawa
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`Innovation Ltd. on all counts.” Ex. D: USDC-MA ECF No. 154. (Emphasis supplied.)
`
`6.
`
`Count IV for “Cancellation of the Easyling Mark” was one of the “all counts” of
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`the District Court judgment. Exs. C and D.
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`7.
`
`No appeal was taken, and the judgment of the District Court in favor of
`
`
`
`4
`
`

`

`Respondent on “all counts,” including Petitioner’s claim for cancellation, is final.
`
`8.
`
`The District Court found that, with this cancellation proceeding, Smartling now
`
`“seeks the same cancellation of Defendant's registration that it sought in [the District Court]
`
`action”. Ex. E: USDC-MA ECF No. 167.
`
`9.
`
`Registration No. 4,766,628 for the mark Easyling issued on July 7, 2015, roughly
`
`four years before trial in the Civil Action. See, e.g., Ex. C: USDC-MA ECF No. 150 (verdict
`
`entered June 12, 2019).
`
`10.
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` Petitioner had possession of the facts relevant to the registration and use of the
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`Easyling mark in the United States when the parties first litigated Petitioner’s claim for
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`cancellation.
`
`11. The District Court in the Civil Action issued the Pretrial Order of Ex. H on February
`
`21, 2019 permitting the parties to submit “any requested amendments to the pleadings” by May
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`17, 2019. Ex. H, p. 2.
`
`12.
`
`After filing its First Amended Complaint in the Civil Action and despite
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`awareness of the transactional facts relative to the registration and use of the Easyling mark,
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`Petitioner made no effort to amend its complaint in the Civil Action to add bases to support its
`
`claim for cancellation. Ex. F: USDC-MA Docket.
`
`13.
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`Judgment was entered against Smartling on its claim for cancellation just weeks
`
`before Smartling sought reopen this proceeding to relitigate its claim for cancellation. See, e.g.,
`
`14 TTABVUE; Ex. D: USDC-MA ECF No. 154.
`
`14.
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`Smartling had a full and fair opportunity to litigate its claim for cancellation and
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`the bases of that claim of alleged likely confusion, nonuse, abandonment, and lack of a bona fide
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`intent to use in the Civil Action.
`
`
`
`5
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`

`

`15. With this cancellation proceeding, Petitioner seeks to relitigate the claim for
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`cancellation of the same registration for the same mark between the same parties as in the Civil
`
`Action.
`
`
`
`IV. Res judicata and collateral estoppel bar relitigation of previously adjudicated claims and
`issues.
`
`
`“Res judicata, or claim preclusion, protects against re-litigation of a previously
`
`adjudicated claim between the same parties or their privies.” Mayer/Berkshire Corp. v.
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`Berkshire Fashions, Inc., 424 F.3d 1229, 1232 (Fed. Cir. 2005). A second suit is barred by the
`
`doctrine of res judicata where (1) the parties (or their privies) are identical; (2) there has been an
`
`earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set
`
`of transactional facts as the first. Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d
`
`1854, 1856 (Fed. Cir. 2000).
`
`As the Federal Circuit has held, "unlike issue preclusion, which only bars matters actually
`
`litigated in a prior proceeding, claim preclusion forecloses matters that, although never litigated
`
`or even raised, could have been advanced in an earlier suit." Carson v. Dep't of Energy, 398 F.3d
`
`1369, 1375 n.8, reh'g denied (Fed. Cir. 2005); See, also, Pactiv Corp. v. Dow Chemical Co., 449
`
`F.3d 1227, 78 USPQ2d 1939, 1941 (Fed. Cir. 2006). “[I]t is black-letter law that res judicata, by
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`contrast to narrower doctrines of issue preclusion, bars all claims that were or could have been
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`advanced in support of the cause of action on the occasion of its former adjudication.” Nilsen v.
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`Moss Point, 701 F.2d 556, 560 (5th Cir. 1983) (citing Allen v. McCurry, 449 U.S. 90, 94, 101 S.
`
`Ct. 411, 414, 66 L. Ed. 2d 308 (1980) (emphasis supplied)2
`
`. “[T]he doctrine of res judicata
`
`
`2 See, also, Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 1348, 110 U.S.P.Q.2D 1261, 1263, quoting
`C.I.R. v. Sunnen, 333 U.S. 591, 597, 68 S. Ct. 715, (1948) (in turn quoting Cromwell v. Sac Cnty., 94 U.S.
`351, 352, 24 L. Ed. 195 (1876)): “The general rule of res judicata applies to repetitious suits involving the
`
`
`
`6
`
`

`

`means that parties to a suit and their privies are bound by the judgment of the court, not only
`
`with respect to every matter litigated but also with respect to every admissible matter which
`
`might have been offered to sustain or defeat a claim. Toro Co. v. Hardigg Indus., 549 F.2d 785,
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`790 (CCPA 1977). The Supreme Court spoke directly to the issue in Brown v. Felsen, 442 U.S.
`
`127, 131, 99 S. Ct. 2205, 2209, 60 L. Ed. 2d 767, 771 (1979):
`
`“Res judicata ensures the finality of decisions. Under res judicata, ‘a final
`judgment on the merits bars further claims by parties or their privies based on the
`same cause of action.’ Montana v. United States, 440 U.S. 147, 153 (1979). Res
`judicata prevents litigation of all grounds for, or defenses to, recovery that were
`previously available to the parties, regardless of whether they were asserted or
`determined in the prior proceeding.”
`
`(Emphasis supplied.)
`
`The related and at times overlapping doctrine of issue preclusion (also known as
`
`collateral estoppel) bars “the revisiting of ‘issues’ that have been already fully litigated.” Jet,
`
`Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1858-59 (Fed. Cir. 2000). Issue
`
`preclusion requires four preconditions for a second suit to be barred thereby: (1) identity of the
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`issues in a prior proceeding; (2) the issues were actually litigated; (3) the determination of the
`
`issues was necessary to the resulting judgment; and (4) the party defending against preclusion
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`had a full and fair opportunity to litigate the issues. Id. at 1859.
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`The doctrines of res judicata and collateral estoppel are critical to efficient judicial
`
`administration—ensuring the finality of judgments, conserving the resources of the courts, and
`
`
`same cause of action. It rests upon considerations of economy of judicial time and public policy favoring
`the establishment of certainty in legal relations. The rule provides that when a court of competent
`jurisdiction has entered a final judgment on the merits of a cause of action, the parties to the suit and their
`privies are thereafter bound ‘not only as to every matter which was offered and received to sustain or
`defeat the claim or demand, but as to any other admissible matter which might have been offered for that
`purpose.’”
`
`
`
`
`
`7
`
`

`

`protecting against vexatious and wasteful attempts to relitigate claims that have already been
`
`decided. “To preclude parties from contesting matters that they have had a full and fair
`
`opportunity to litigate protects their adversaries from the expense and vexation attending
`
`multiple lawsuits, conserves judicial resources, and fosters reliance on judicial action by
`
`minimizing the possibility of inconsistent decisions.” Montana v. United States, 440 U.S. 147,
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`153-154, 99 S. Ct. 970, 973-974, 59 L. Ed. 2d 210, 217 (1979). “The policy rationale behind res
`
`judicata is to ‘relieve parties of the cost and vexation of multiple lawsuits, conserve judicial
`
`resources, and, by preventing inconsistent decisions, encourage reliance on adjudication.’”
`
`Apparel Art Int'l v. Amertex Enters., 48 F.3d 576, 583 (1st Cir. 1995) (citing Allen v. McCurry,
`
`449 U.S. 90, 94, 66 L. Ed. 2d 308, 101 S. Ct. 411 (1980) and Gonzalez v. Banco Cent. Corp.
`, 27
`
`F.3d 751, 755 (1st Cir. 1994)).
`
`Moreover, it is well settled that a District Court’s decision regarding the right to
`
`registration is binding on the Board. See, e.g., The Seven-Up Cp. V. Bubble Up Co., 136
`
`U.S.P.Q. 210, 214 (C.C.P.A. 1963); see also In re Alfred Dunhill Ltd., 224 U.S.P.Q. 501, 503
`
`(T.T.A.B. 1984); J. Thomas McCarthy, 4 McCarthy on Trademarks and Unfair Competition §
`
`32:94 (4th ed. 2006). Where a civil action in a Federal District Court involves issues in common
`
`with those in a proceeding before the Board, the decision of the Federal district court is binding
`
`upon the Board. See, e.g., B&B Hardware, Inc. v. Hargis Indus., 135 S. Ct. 1293, 1305-1306,
`
`191 L. Ed. 2d 222, 239, 113 U.S.P.Q.2D 2045, 2053 (2015). As the Supreme Court wrote in
`
`B&B Hardware, “[w]
`hen a district court, as part of its judgment, decides an issue that overlaps
`
`with part of the TTAB’s analysis, the TTAB gives preclusive effect to the court’s judgment.”
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`135 S. Ct. at 1305-1306, 191 L. Ed. 2d at 239, 113 U.S.P.Q.2D at 2053; see, also, Goya Foods
`
`Inc. v. Tropicana Prods. Inc., 846 F.2d 848, 6 USPQ2d 1950 (2d Cir. 1988).
`
`
`
`8
`
`

`

`
`
`V. Smartling’s claim for cancellation has already been litigated and is barred by res judicata
`and collateral estoppel.
`
`
`Petitioner’s claim for cancellation has already been decided, and the doctrines of res
`
`judicata and collateral estoppel squarely apply. The parties in the Civil Action and this
`
`proceeding are identical. The identical claim for cancellation of Skawa’s Registration No.
`
`4,766,628 for the EASYLING mark was expressly made by Petitioner in the Civil Action with
`
`“Cancellation of the Easyling Mark” being the entire basis for Count IV of Smartling’s Amended
`
`Complaint. Ex. B: USDC-MA ECF No. 25, Count IV. Based on the jury’s verdict against
`
`Smartling, final judgment was entered by the District Court on all counts, and that judgment is
`
`final. Ex. D: USDC-MA ECF No. 154. The claim for cancellation in this proceeding is based
`
`on the same set of transactional facts as in the Civil Action, which proceeded to trial just a matter
`
`of weeks before Smartling sought to reopen this proceeding and relitigate cancellation. 14 and
`
`26 TTABVUE; Ex. B: USDC-MA ECF No. 25.
`
`Smartling elected the District Court as the forum in which its cause of action for
`
`cancellation would be heard, and, despite Smartling’s dissatisfaction with the result, it was fully
`
`and fairly litigated. Smartling now raises additional legal theories in support of the litigated
`
`claim for cancellation. However, each of these either was offered or readily could have been
`
`offered to sustain or defeat that claim for cancellation in the District Court.
`
`Likelihood of confusion, the first basis for Smartling’s present claim for cancellation, was
`
`at the heart of each of the five counts brought in the Civil Action: federal unfair competition,
`
`false designation of origin and passing off (Count I), trade dress infringement (Count II),
`
`trademark infringement (Count III), cancellation (Count IV), and violation of Chapter 93A of the
`
`Mass. Gen. Laws (Count V). As the court wrote in the Civil Action:
`
`
`
`9
`
`

`

`Plaintiff requested that the Court cancel Defendant's registration pursuant to 15
`U.S.C. § 1119 because Plaintiff believed that Defendant's ‘EASYLING’ mark
`would create significant customer confusion with Plaintiff's "SMARTLING"
`mark [ECF No. [25] 61]. After a jury trial, in which the jury found for Defendant
`on all counts, the Court entered judgment in favor of Defendant on June 27, 2019.
`[ECF No. [154]]. … In its petition, Plaintiff requests that Defendant's registration
`be cancelled because Defendant's "use and registration of the mark EASYLING is
`likely to create confusion, mistake, and deceive the trade and public into
`believing" that Plaintiff and Defendant's services are the same. [ECF No. [166]-1
`at 7]. Plaintiff's petition before the TTAB therefore seeks the same cancellation of
`Defendant's registration that it sought in this action.
`
`As such, not only is Smartling’s likelihood of confusion basis for cancellation barred by res
`
`judicata as one of the bases that was offered or could have been offered to sustain the claim for
`
`cancellation when brought in the District Court, but it is also directly barred by collateral
`
`estoppel. There is identity with respect to the issue—likelihood of confusion. The issue was
`
`actually litigated. Smartling, which was unable to offer a single instance of actual confusion
`
`despite a decade of competition, had all counts finally adjudged against it. With likelihood of
`
`confusion fundamental to each count of the Civil Action, the determination of the issue was
`
`necessary to the court’s judgment against Smartling on all counts. Finally, after five years of
`
`litigation and a full trial by jury, Smartling had a full and fair opportunity to litigate the issue.
`
`Relitigating likelihood of confusion is thus barred both by res judicata as an issue that was raised
`
`or could have been raised to support Smartling’s first claim for cancellation and by collateral
`
`estoppel as an issue that was actually litigated. See, e.g., Jet, Inc., 55 USPQ2d at 1858-59.
`
`Nonuse, the second basis for Smartling’s present claim for cancellation, has already been
`
`found by the Board to be legally futile. It will nonetheless be noted that it too could have been
`
`offered as readily in support of Smartling’s claim for cancellation in the Civil Action as in
`
`support of its claim for cancellation in this proceeding.
`
`Abandonment, Smartling’s third basis offered in support of cancellation, also could have
`
`
`
`10
`
`

`

`been offered in support of Smartling’s claim for cancellation in the Civil Action as readily as it is
`
`here. Pursuant to 15 U.S.C. §1127, “ [a] mark shall be deemed to be ‘abandoned’ … [w]hen
` its
`
`use has been discontinued with intent not to resume such use.” (Emphasis supplied.) “The party
`
`claiming abandonment bears the burden of proof as to both elements.” Emmpresa Cubana Del
`
`Tabaco v. Culbro Corp., 213 F. Supp. 2d 247, 268 (S.D.N.Y. 2002). Abandonment thus occurs
`
`immediately when use of a mark is discontinued with an intent not to resume use. Therefore,
`
`when Smartling first brought its claim for cancellation in the Civil Action in 2015, it could have
`
`alleged, as it does now, the two elements required for abandonment, specifically that use was
`
`discontinued with an intent not to resume such use.
`
`Furthermore, while abandonment could have been alleged based on allegations of
`
`discontinued use coupled with an intent not to resume use, 15 U.S.C. § 1127 separately provides
`
`that “[n]onuse for 3 consecutive years shall be prima facie evidence of abandonment.” Although
`
`nonuse for 3 consecutive years is not required to meet the two elements of abandonment, the
`
`presumption afforded by Section 1127 "eliminates the challenger's burden to establish the intent
`
`element of abandonment as an initial part of its case." Imperial Tobacco Ltd. v. Philip Morris,
`
`Inc., 899 F.2d 1575, 1579 (Fed. Cir. 1990); see, also, Emmpresa Cubana Del Tabaco v. Culbro
`
`Corp., 213 F. Supp. 2d 247, 268 (SDNY 2002). As a result, not only could Smartling have
`
`alleged abandonment, but it also could have sought to rely on prima facie evidence of
`
`abandonment by July 7, 2018—roughly one year before the Civil Action went to trial—thereby
`
`eliminating its burden to establish an intent not to resume use. Bearing in mind that Smartling
`
`first sought to amend its petition for cancellation in this proceeding on September 25, 2019, just
`
`a matter of weeks after the District Court awarded Skawa its costs as the prevailing party in the
`
`
`
`11
`
`

`

`Civil Action3
`
`, it is apparent that there has been no change in transactional facts between
`
`Smartling’s claim for cancellation in the Civil Action and its claim for cancellation in this
`
`proceeding.
`
`In this regard, it will be observed that the Federal Rules of Civil Procedure instruct that,
`
`at any time prior to trial, “[t]he court should give leave [to amend a party’s pleading] when
`
`justice so requires.” Fed. R. Civ. P. 15(a)(2). Rule 15 provides for amendments to the pleadings
`
`even during and after trial. Fed. R. Civ. P. 15(b). In fact, in the Civil Action, the District Court
`
`issued the Pretrial Order of Ex. H on February 21, 2019 (more than 7 months after a presumption
`
`of abandonment could have attached and years after Smartling could have alleged abandonment)
`
`permitting the parties to submit “any requested amendments to the pleadings” by May 17, 2019.
`
`Ex. H, p. 2. Despite abandonment occurring when a party ceases use with an intent not to
`
`resume use, despite the availability of the presumption of abandonment of § 1127 (taking
`
`Smartling’s allegations as true), despite the existence of the same transactional facts now alleged,
`
`despite the liberal rules as to amendments to the pleadings, and despite the District Court’s
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`express allowance of proposed amendments to the pleadings in May of 2019, Smartling took no
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`action to amend or seek to amend its claim for cancellation in the Civil Action. See, e.g., Ex. F:
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`Civil Action Docket. Abandonment, even with the presumption of abandonment referenced in §
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`1127 that would obviate the burden of proving intent not to resume use, could have been offered
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`to support Smartling’s claim for cancellation in the Civil Action and, as such, is barred by the
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`doctrine of res judicata.
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`Finally, with the last count of its present claim for cancellation, Smartling asserts, “at the
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`time Registrant filed its extension of protection in the United States, it did not have a bona fide
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`intent to use the Registered Mark in the United States in connection with the Registered Services
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`3 Ex. G: USDC-MA ECF No. 163.
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`12
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`…” (but somehow that Skawa “had at most a purely speculative plan regarding use of the mark
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`in connection with each of the services listed in such Extension”). Amended Petition, ¶ 53, 54.
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`(Emphasis supplied). To the extent one can differentiate between an “intent to use” and a
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`“speculative plan regarding use,” each would have been measured at the time of filing, which
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`was more than a year before Smartling first amended its complaint in 2015 in the Civil Action to
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`add the claim for cancellation. A lack of an intent to use could have been offered as a basis for
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`cancellation in 2015 when Smartling amended its complaint to add its claim for cancellation and
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`any time during the approximately four years before the date the District Court set for requesting
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`amendments to the pleadings. As such, lack of a bona fide intent to use could have been offered
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`as a basis for Smartling’s claim for cancellation in the Civil Action and is, as a matter of law,
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`barred by res judicata.
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`Petitioner has repeatedly argued that claim preclusion should not apply because “a claim
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`for trademark infringement not is based on the same set of factual allegations as a petition to
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`cancel the defendant's federally registered mark” and “[a]s a cancellation proceeding before the
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`TTAB does not involve the same claims as an action alleging unfair competition and trademark
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`infringement …, no preclusion is inherent in the instant matter.” 24 TTABVUE, p. 5, 6. This
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`line of argument, however, entirely misses the point. The issue here is not whether a claim for
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`trademark infringement or unfair competition bars a claim for cancellation but is instead whether
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`a claim for cancellation bars a claim for cancellation, which it must. The cases relied on by
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`Petitioner for the premise that claims for unfair competition and trademark infringement may not
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`bar a claim for cancellation are of little relevance to a case such as this where Smartling brought
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`not only claims for trademark infringement and unfair competition but also a claim for
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`cancellation in the Civil Action.4 Petitioner further writes, “when a tribunal is faced with a
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`different cause or demand, the principle of res judicata is applied ‘only as to “matters which were
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`actually litigated and determined in the first proceeding.”’”5
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` However, this tribunal is not faced
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`with a different cause or demand; they are identical. The Civil Action exactly did involve a
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`claim for cancellation of the same registration between the same parties. They are the same
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`claims with the same prayers for relief based on the same transactional facts.
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`The res judicata effect of a District Court determination was discussed in the Federal
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`Circuit’s decision in Taser Int'l, Inc. v. Phazzer Elecs., Inc., 754 Fed. Appx. 955, 2018 U.S. App.
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`LEXIS 30197, 2018 WL 5309940 (C.A.F.C. 2018). There, the court noted that even a default
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`judgment in an infringement proceeding can operate as res judicata in a subsequent cancellation
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`proceeding before the TTAB. Noting its decision in Nasalok Coating Corp. v. Nylok Corp., 522
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`F.3d 1320, 1330 (Fed. Cir. 2008), “to hold otherwise would allow ‘success in the cancellation
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`proceeding’ to ‘negate relief secured . . . in the infringement proceeding.’" Taser Int’l, 754 Fed.
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`Appx. At 964 (quoting Nasalok, 522 F.3d at 1329). "Such a collateral attack is barred by claim
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`preclusion." 522 F.3d. at 1330. "Because Nasalok's claim of trademark invalidity, in its petition
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`to cancel the '840 Registration, amounted to a collateral attack on the district court's judgment in
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`the earlier infringement suit, the rules of defendant preclusion are properly applied to bar
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`Nasalok from asserting that claim." Id.
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`The reasoning of the Court of Appeals for the Federal Circuit in Senju Pharm. Co. v.
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`4 In Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229, 1232 (Fed. Cir. 2005), which has
`been relied on by Smartling, a claim for cancellation was not presented (Mayer/Berkshire “had filed suit
`… alleging trademark infringement and unfair competition.” 424 F.3d at 1230). Here, a claim for
`cancellation was in fact presented and finally determined. Speaking directly to such a scenario, the court
`in Mayer/Berkshire wrote, “[r]es judicata, or claim preclusion, protects against re-litigation of a
`previously adjudicated claim between the same parties or their privies.” Id. at 1232.
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`14
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` 5
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` 24 TTABVUE, p. 5.
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`

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`Apotex Inc., 746 F.3d 1344, 1353, 110 U.S.P.Q.2D 1261, 1267, can be paraphrased here:
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`At its core, what [Smartling] seeks is a do-over. Having lost its suit, [Smartling]
`seeks to use [this cancellation proceeding] to obtain a second bite at the apple … .
`But that is exactly what claim preclusion was designed to prevent. Claim
`preclusion "applies to repetitious suits involving the same cause of action." Claim
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`preclusion exists to "encourage[ ] reliance on judicial decisions, bar[ ] vexatious
`litigation, and free[ ] the courts to resolve other disputes."
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`(Internal citations omitted.)
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`This cancellation proceeding, which asserts bases for cancellation that were brought or
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`could have been brought in the Civil Action, is nothing other than an impermissible collateral
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`attack on the final determination of a United States District Court.6
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` Without the application of
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`res judicata, Petitioner would be free to file and refile proceeding after proceeding until running
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`out of bases to allege that the registration should be canceled. Smartling had the full and fair
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`opportunity to litigate its claim for cancellation and lost. Skawa successfully defended against
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`Smartling’s claim for cancellation once and should not be forced to do so again.
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`Based on the express holdings of the Supreme Court, the Court of Appeals for the Federal
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`Circuit, and this Honorable Board, Smartling’s claim for cancellation is barred by its own
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`previous claim for cancellation in the Civil Action. Indeed, the doctrines of res judicata and
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`collateral estoppel were developed exactly to protect litigants against such vexatious and
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`wasteful attempts to relitigate issues and claims already decided and to enable reliance on
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`judicial determinations by courts of competent jurisdiction. To conclude otherwise would render
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`the concept of claim preclusion meaningless and would potentially subject Respondent to endless
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`litigation of the claims set forth herein.
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`6 Indeed, with Smartling