Synoptek, LLC v. Synaptek Corp.

309 F. Supp. 3d 825
CourtDistrict Court, C.D. California
DecidedMarch 5, 2018
DocketCase No.: SACV 16–01838–CJC(JCGx)
StatusPublished
Cited by5 cases

This text of 309 F. Supp. 3d 825 (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., 309 F. Supp. 3d 825 (C.D. Cal. 2018).

Opinion

CORMAC J. CARNEY, UNITED STATES DISTRICT JUDGE

I. INTRODUCTION

Plaintiff Synoptek, LLC, filed this action on October 4, 2016, against Defendant Synaptek Corporation for trademark infringement, false designation of origin, unfair competition, and trademark cancellation based on Synaptek's use of the '160 mark "SYNAPTEK." (Dkt. 1 [hereinafter "Compl."].) Synaptek filed a counterclaim against Synoptek on March 20, 2017, for non-infringement of trademark. (Dkt. 43.) Before the Court is Synoptek's motion for partial summary judgment for cancellation of Synaptek's '160 trademark. (Dkt. 52 [hereinafter, "Mot."].) For the following reasons, the motion is GRANTED.

II. BACKGROUND

Synoptek is an IT services company that provides a host of computing services, such as IT operations, IT program management, application management, and cloud and hosting services.1 (Dkt. 59-3 [Complete Separate Statement of Undisputed Facts, hereinafter "SUF"] ¶¶ 1-2, 10-14.) Synoptek serves clients in commercial sectors such as finance, healthcare, and retail, as well as in state, local, and federal government. (Id. ¶ 3.) Synoptek markets its services through internet presence, advertising, press releases, word-of-mouth, and print advertising. (Id. ¶ 16.) Synoptek owns U.S. Trademark Registration No. 3,424,720 ("Synoptek" or "the '720 mark"), which was registered as of May 6, 2008. (Id. ¶¶ 4-5, 7.) The term "Synoptek" is not a recognized word in the English language. (Id. ¶ 8.) The '720 mark is registered in International Class 42 for various computer services.2 (Id. ¶ 11.)

*831Synaptek was incorporated in August 2008, (id . ¶ 58), and is also an IT services company that provides computing services that include systems integration, operations support, program management, application development, and cloud integration, amongst other services,3 (id. ¶¶ 18, 20-21, 25-27). The co-founders of Synaptek were not aware of "Synoptek" at the time they chose their company name. (Id. ¶ 63.) Synaptek is a certified small disadvantaged business ("SBD") and provides IT services to the federal government. (Id. ¶¶ 20-21.) Synaptek maintains a website, but disputes that it sells its services through the site. (Id. ¶ 29.) Synaptek does not dispute that it markets its services through advertising, press releases, word-of-mouth, and print advertising. (Id. ¶ 29.) Synaptek bids on federal government small-business set-aside contracts. (Id. ¶ 70.)

On October 10, 2013, Synaptek filed U.S. Trademark Application No. 80/088,536 ("the '536 application") with the U.S. Patent and Trademark Office ("PTO") seeking a federal registration for the designation "Synaptek." (Id. ¶ 30; Dkt. 52-3 [Declaration of Salil Bali, hereinafter "Bali Decl."] Ex. 7.) The '536 application claimed a date of first use of August 4, 2008, and sought registration in International Class 42 for various IT and computing services. (SUF ¶¶ 23, 30.) On February 23, 2014, the PTO denied the '536 application pursuant to 15 U.S.C. § 1052(d) based on a likelihood of confusion with the marks "Synoptek," "Synetek Solutions" (two marks), and "Synaptyk" (two marks). (Id. ¶ 31; Bali Decl. Ex. 8.) The PTO found that "Synaptek" is the "phonetic equivalent" to all five marks, that the mark owners' services are "identical in part, and otherwise closely related," and noted the "only difference" between "Synaptek" and "Synoptek" was the use of "A" versus "O." (SUF ¶ 32; Bali Decl. Ex. 8.) Synaptek filed a response to the PTO's February 23 denial arguing against the PTO's finding of a likelihood of confusion. (SUF ¶ 33; Bali Decl. Ex. 9.) On September 4, 2014, the PTO issued a final office action denying the '536 application based on a likelihood of confusion between "Synaptek" and the marks "Synoptek" and "Synaptyk" (two marks). (SUF ¶ 34; Bali Decl. Ex. 10.)

The Synaptyk marks, U.S. Trademark Registration Nos. 4,015,160 ("the '160 mark") and 4,015,163, were registered to a company from Plano, Texas. (SUF ¶ 37.) The '160 mark has been registered since 2011 in International Class 42 for various computer services.4 (Id. ¶ 22.) On March 3, 2015, Synaptek filed a Request for Suspension of the prosecution of the '536 application as well as a Petition for Cancellation of the Synaptyk marks. (Id. ¶ 38; Bali Decl. Ex. 13; Dkt. 54 [Declaration of Edward Schewe, hereinafter "Schewe Decl."] Ex. 36.) In July 2015, Synaptek acquired ownership of the Synaptyk marks. (SUF

*832¶ 39.) Synaptek thereafter informed the PTO examiner in connection with the '536 application that it now owned the Synaptyk marks, and the '536 application was reinstated. (Id. ¶ 40.) On July 15, 2015, Synaptek filed a Section 7 request to amend the '160 mark to "reflect an updated spelling of its trademark from SYNAPTYK to SYNAPTEK." (Id. ¶ 41; Bali Decl. Ex. 15.) The PTO denied Synaptek's request that same day in light of the ongoing cancellation proceeding for the '160 mark that Synaptek previously had filed. (SUF ¶ 42; Bali Decl. Ex. 16.) Synaptek thereafter filed a Petitioner's Motion to Dismiss as Moot the cancellation proceeding for the '160 mark as it had acquired the Synaptyk marks, (SUF ¶ 98; Schewe Decl. Ex. 40), and filed a response to the PTO's denial of Synaptek's request to amend the '160 mark, (SUF ¶ 99; Schewe Decl. Ex. 41).

On October 27, 2015, the PTO issued another final office action on the '536 application, rejecting registration of the designation "Synaptek" due to a likelihood of confusion with "Synoptek." (SUF ¶ 43; Bali Decl. Ex. 17.) The PTO specifically held that the "marks are essentially phonetic equivalents and thus sound similar," and while the marks have a different vowel, "the vowels 'A' and 'O' often sound alike and can create words that are phonetically equivalent." (Bali Decl. Ex. 17.) The PTO also held that the two companies' services were "identical in part, and otherwise closely related." (Id. ) On November 12, 2015, the PTO denied Synaptek's July 15, 2015, request for a Section 7 Amendment of the '160 mark because the proposed amendment "would materially alter the character of the mark." (SUF ¶ 44; Bali Decl. Ex. 18.)

On April 20, 2016, Synaptek filed a petition with the PTO Director to accept the Section 7 Amendment of the '160 mark to change "Synaptyk" to "Synaptek." (SUF ¶ 47; Bali Decl. Ex. 20.) Synaptek indicated it had two pending applications for marks, including the '536 application, and attached the PTO's decisions from February 3 and September 4, 2014, on the '536 application. (Bali Decl. Ex. 20.) Synaptek did not attach or mention the PTO's October 27, 2015, final office action rejecting the designation "Synaptek" based on the likelihood of confusion with "Synoptek." (Id. ) On April 27, 2016, Synaptek filed a request for reconsideration of the PTO's October 27 final office action. (SUF ¶ 45; Schewe Decl. Ex. 47.)

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309 F. Supp. 3d 825, Counsel Stack Legal Research, https://law.counselstack.com/opinion/synoptek-llc-v-synaptek-corp-cacd-2018.