358 F. Supp. 3d 124
D.D.C.2019Background
- Smartling (Delaware) and Skawa (Hungary) are competitors in web-based translation services; Smartling sued in 2015 for trademark and trade dress infringement, unfair competition, and Chapter 93A violations; Skawa counterclaimed under Chapter 93A alleging bad-faith litigation and interference.
- Smartling alleges Skawa launched the "Easyling" site in late 2011 after its CEO created a Smartling account (Mar 18, 2011), and that Easyling copied Smartling’s mark, color scheme (orange/blue), speech-bubble logo element, website layout, promotional video elements, button layout, and terms-and-conditions text.
- The parties directly compete, use the same channels (websites, trade shows, publications), and share some customers/partners (e.g., Lionbridge), but there is no documented instance of actual consumer confusion from 2011 onward.
- Procedurally: Skawa moved for summary judgment on all counts; Smartling moved for summary judgment on Skawa’s Chapter 93A counterclaim. Court dismissed Easyling LLC as a non-entity, denied Skawa summary judgment on most counts, granted Skawa summary judgment on Smartling’s Chapter 93A count (jurisdictional nexus), and granted Smartling summary judgment on Skawa’s Chapter 93A counterclaim.
- Key factual disputes left for trial: likelihood of confusion (similarity of marks/trade dress, intent to copy, strength of mark, and temporal overlap of website features); abandonment/continuity of Smartling’s website trade dress.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark infringement / false designation (likelihood of confusion) | Smartling: marks and site presentation are similar ("-ling" structure, color scheme, speech-bubble, placement) and Skawa intentionally copied, so confusion likely | Skawa: no actual confusion despite years of coexistence; purchasers are sophisticated; marks differ in words/sound | Denied summary judgment for both sides — triable issues of fact; no summary disposition on infringement claims |
| Trade dress protection and infringement (distinctiveness, non-functionality, abandonment) | Smartling: identified specific site elements (color scheme, layout, video, font, speech-bubble) that are non-functional and distinctive or have secondary meaning | Skawa: contends trade dress abandoned/not in commerce; lack of direct secondary-meaning evidence | Denied summary judgment — factual disputes on use in commerce, secondary meaning, and likelihood of confusion remain for jury |
| Chapter 93A (plaintiff's claim: center-of-gravity in Massachusetts) | Smartling: harm to business (Lionbridge as major client) ties misconduct to Massachusetts | Skawa: conduct occurred in Hungary; injured customers mostly outside Massachusetts; Lionbridge not confused | Granted summary judgment for Skawa — Smartling failed to show wrongdoing occurred primarily and substantially in Massachusetts |
| Skawa counterclaim under Chapter 93A (abuse of process / disparagement) | Skawa: Smartling filed a baseless suit and allegedly made statements at conferences to harm Skawa | Smartling: suit is colorable; isolated, equivocal statements at a conference do not show extreme misconduct or damages | Granted summary judgment for Smartling — evidence insufficient to prove abuse of process or 93A liability |
Key Cases Cited
- Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1 (1st Cir.) (likelihood-of-confusion standard and marketplace context)
- Int'l Ass'n of Machinists & Aerospace Workers v. Winship Green Nursing Ctr., 103 F.3d 196 (1st Cir.) (intentional copying presumption and Pignons factors)
- Pignons S.A. de Mecanique v. Polaroid Corp., 657 F.2d 482 (1st Cir.) (multi-factor likelihood-of-confusion framework)
- Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (U.S. Supreme Court) (trade dress distinctiveness/secondary meaning rules)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. Supreme Court) (inherently distinctive trade dress doctrine)
- Quaker State Oil Refining Corp. v. Garrity Oil Co., 884 F.2d 1510 (1st Cir.) (bringing a baseless suit can support Chapter 93A theory, but requires the suit to be objectively baseless)