Synoptek, LLC v. Synaptek Corp.

326 F. Supp. 3d 976
CourtDistrict Court, C.D. California
DecidedMarch 6, 2017
DocketCase No.: SACV 16-01838-CJC(JCGx)
StatusPublished
Cited by3 cases

This text of 326 F. Supp. 3d 976 (Synoptek, LLC v. Synaptek Corp.) is published on Counsel Stack Legal Research, covering District Court, C.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Synoptek, LLC v. Synaptek Corp., 326 F. Supp. 3d 976 (C.D. Cal. 2017).

Opinion

CORMAC J. CARNEY, UNITED STATES DISTRICT JUDGE

I. INTRODUCTION

On October 4, 2016, Plaintiff Synoptek, LLC, filed this action against Defendant Synaptek Corporation. (Dkt. 1 [hereinafter "Compl."].) Synoptek alleged four causes of action: (1) trademark infringement based on Section 32 of the Lanham Act, 15 U.S.C. § 1114, (id. ¶¶ 37-43); (2) false designation of origin and unfair competition based on Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), (id. ¶¶44-49); (3) cancellation of registration for a confusingly similar mark under Sections 14 and 37 of the Lanham Act, 15 U.S.C. §§ 1064, 1119, (id. ¶¶ 50-60); and (4) unfair competition and unfair business practices under California Business & Professions Code §§ 17200 et seq. , (id. ¶¶ 61-66). Before the Court is Synaptek's motion to dismiss for lack of personal jurisdiction and improper venue or, in the alternative, to transfer this action to the Eastern District of Virginia. (Dkt. 17.) For the following reasons, the motion is DENIED.1

II. BACKGROUND

Synoptek is a limited liability company organized and existing under the laws of California and its principal place of business is in Irvine, California. (Compl. ¶ 1.) "Synoptek provides information technology management services and support to organizations worldwide," including "core infrastructure management, management and hosting of cloud services, in-depth security tools and services, using advanced toolsets supported by our 24x7 Enterprise *981Operations Centers, IT consulting, custom development, applications support, business continuity/disaster recovery services and 24x7 end-user service and support." (Id. ¶ 7.) Synoptek is the owner of the SYNOPTEK trademark, U.S. Trademark Registration No. 3,424,720, filed on August 7, 2006, and registered as of May 6, 2008; it began using the mark as early as January 1, 2007. (Id. ¶¶ 8, 10.)

Synaptek is a Virginia corporation with its principal place of business in Reston, Virginia. (Dkt. 16-2 [hereinafter "Jinnah Decl."] ¶ 1.) It provides information technology services including providing wifi installation and support. (Id. ¶¶ 1, 13.) Synaptek primarily works as a government contractor; it was one of several subcontractors to Harris Corporation on a contract to provide wifi services for the Department of Veterans Affairs ("VA") and specifically in the VA's 331 medical centers throughout the United States. (Id. ¶¶ 11-12.) In that capacity, Synaptek field engineers would first perform wireless site surveys "to determine signal penetration throughout the facilities in order to accurately determine the placement of access points to achieve the best wireless coverage." (Dkt. 25 Ex. 1 at 172.) Those surveys were performed onsite. (Id. ) Then, Synaptek employees would take the resulting map of the entire facility offsite, where senior core engineers would review it, process it, and then submit it to Harris Corporation. (Id. at 173.) Harris Corporation, and ultimately the federal government, would review the Synaptek plan for wifi implementation, and return it either with approval or with requested changes. (Id. at 173.) To incorporate changes into the plan, a return to the site could conceivably be necessary. (Id. at 173.) Once a wifi implementation plan is finalized, then Harris Corporation employees will go to the site to install the components; Synaptek core engineers would monitor installation remotely. (Id. at 174.) After installation, there is post-installation validation testing done by Synaptek field engineers; any post-installation modifications were done remotely by core engineers. (Id. at 174-75.) Some final documentation is prepared and delivered to Harris Corporation. (Id. at 176; see also Dkt. 25 Exs. 10, 18-24.)

Synaptek followed this procedure at seven or eight VA medical centers in California, including a facility in Long Beach, California. (Id. at 176; Jinnah Decl. ¶ 14.) Four of Synaptek's former employees reside in California-Mr. Talamantes (who did not work onsite at any VA medical center), Mr. Mowat (a field engineer who worked onsite at VA medical centers inside and outside of California), Mr. Oatham (a principal wireless engineer and later a CORE engineer, overseeing site surveys, designs, and implementation), and Mr. Goecke (employed to support a Washington D.C. customer who was not involved in, nor did he work with, California VA medical centers). (Dkt. 25 Ex. 5 at 9.) In addition, Synaptek was the prime contractor with the Defense Logistics Agency in Philadelphia, Pennsylvania; in that capacity, Synaptek commissioned a subcontractor based in Manteca, CA, to perform electrical services work at a data center in Tracy, California. (Id. at 7.) Finally, fourteen other current or former Synaptek employees are not California residents but likely were called upon and dispatched by Synaptek to support the work at California VA medical centers. (Id. at 4-7; Dkt. 25 Ex. 1 at 131-37.)

During the duration of his employment with Synaptek, Mr. Goecke worked out of his Tracy, California home. (Dkt. 25 Ex. 2 at 21-22.) His offer of employment letter was sent by Synaptek to his home, and it contained both Synaptek's name and logo. (Dkt. 25 Ex. 6.) Synaptek also provided him with business cards containing its name and logo. (Dkt. 25 Ex. 2 at 25.)

*982Finally, Synaptek sent him a jacket with its logo and name embroidered on it. (Id. )

Mr. Oatham received his employment letter by email at his home in San Jose, California. (Dkt. 25 Ex. 3 at 10.) He was recruited by Synaptek and was interviewed twice before being offered employment. (Id. at 10-11.) Synaptek gave him with business cards, when he would arrive at a site he would introduce himself as a Synaptek employee, and he had a Synaptek email address. (Id. at 21, 24-25, 37.) He also had a similar jacket to Mr. Goecke's and he would try to wear it on the first day he worked at a site. (Id. at 45-46, 74.) In general, Mr. Oatham would travel to a site for two weeks and then work from his California home for two weeks. (Id. at 33.) He was given a corporate card to pay for his airfare and hotels; Synaptek paid him a per diem and reimbursed him for other expenses such as his cell phone and internet connection after he filled out a Synaptek reimbursement form. (Id. at 28, 38-39.) Synaptek provided him with a laptop and monitor, shipped to his home via Federal Express, and at least some of his work involved filling out Synaptek-specific forms that had Synaptek's name and logo. (

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Bluebook (online)
326 F. Supp. 3d 976, Counsel Stack Legal Research, https://law.counselstack.com/opinion/synoptek-llc-v-synaptek-corp-cacd-2017.