Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1020130
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`Filing date:
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`12/04/2019
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`92069472
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`Party
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`Correspondence
`Address
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`Defendant
`Samuel Soonho Lee dba IADI
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`SAMUEL SOONHO LEE
`7468 LAS LUNAS
`SAN DIEGO, CA 92127
`UNITED STATES
`samleedds@gmail.com, drleeseminar@gmail.com
`714-718-3446
`
`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Other Motions/Papers
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`Mark Terry
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`mark@terryfirm.com
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`/Mark Terry/
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`12/04/2019
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`Lee-TTAB-Exhibits.pdf(242591 bytes )
`Request.pdf(21857 bytes )
`
`

`

`
`
`
`
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`
`
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`
`
`
`
`EXHIBIT “A”
`EXHIBIT “A”
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`

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`Case 1:18-cv-23097-CMA Document 68 Entered on FLSD Docket 05/03/2019 Page 1 of 16
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`CASE NO. 18-23097-CIV-ALTONAGA/Goodman
`
`IMPLANT SEMINARS, INC.,
`
`Plaintiff,
`
`v.
`
`SAMUEL SOON HO LEE and
`INTERNATIONAL ACADEMY OF
`DENTAL IMPLANTOLOGY, LLC,
`
`Defendants.
`_______________________________/
`
`ORDER
`
`THIS CAUSE came before the Court on Defendants, Samuel Soon Ho Lee (“Dr. Lee”)
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`and International Academy of Dental Implantology, LLC’s (“International Academy[’s]”)’s
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`Motion to Dismiss for Lack of Personal Jurisdiction, Improper Venue, and Failure to Join a Party,
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`or, Alternatively, Motion to Transfer Venue [ECF No. 60], filed March 27, 2019. Plaintiff, Implant
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`Seminars, Inc., filed an Opposition [ECF No. 61] on April 10, 2019, to which Defendants filed a
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`Reply [ECF No. 63] on April 17, 2019. The Court has carefully reviewed the parties’ written
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`submissions, the First Amended Verified Complaint [ECF No. 26] (“Amended Complaint”), the
`
`record, and applicable law.
`
`I.
`
`BACKGROUND
`
`A. Factual Background
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`Plaintiff, a Florida corporation, owns interests in various marks (“IDIA Family of Marks”)
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`and logos, in connection with dental implant services. (See id. ¶ 16). Plaintiff also offers courses
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`and seminars on dental implant procedure. (See id. ¶ 1).
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`Since 2010, Plaintiff has used its unique logos and marks, which have retained their general
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`

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`CASE NO. 18-23097-CIV-ALTONAGA/Goodman
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`content, style, and form. (See id. ¶¶ 18–26). As a result, the marks and logos have “achieved fame
`
`in the minds of the relevant public, namely providers of dental and periodontal services, and those
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`who market [those services].” (Id. ¶ 30 (alteration added)).
`
`Defendant Dr. Lee is a resident of San Diego, California, with his own private implantology
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`practice in California. (See id. ¶ 11). Dr. Lee also offers educational services relating to dental
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`implants and markets those services online. (See id.). Defendant International Academy is a now-
`
`dissolved California limited liability company, with Dr. Lee as its managing member, and
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`organized under the laws of California. (See id. ¶ 12). Even though it dissolved in 2016,
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`International Academy continues to run a website with Dr. Lee. (See id.).
`
`In October 2011, Defendants created the International Academy of Dental Implantology
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`Logo (“Infringing Logo”) associated with their dental implant services. (See id. ¶ 32). Until 2015,
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`Defendants did not use the Infringing Logo in their promotional materials, except as a profile
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`picture on Facebook. (See id. ¶¶ 35–37).
`
`In early 2015, Defendants started using the Infringing Logo on marketing materials.
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`(See id. ¶ 38). Defendants also distributed items bearing the Infringing Logo to attendees of Dr.
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`Lee’s courses. (See id. ¶ 47). From 2016 through 2018, Defendants continued to use the Infringing
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`Logo, expanding its use for services outside of California to other parts of the United States,
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`including South Florida. (See id. ¶ 39).
`
`The Infringing Logo is similar to the IDIA Family of Marks, incorporating the IDIA Family
`
`of Marks’s original components. (See id. ¶ 43). As both parties offer dental implant educational
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`services, they attract the same consumer base. (See id. ¶ 49).
`
`Defendants’ marketing materials have been distributed to Florida residents.
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`In August
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`2018, Defendants arranged to have posted on Plaintiff’s founder’s Facebook page marketing
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`2
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`

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`Case 1:18-cv-23097-CMA Document 68 Entered on FLSD Docket 05/03/2019 Page 3 of 16
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`CASE NO. 18-23097-CIV-ALTONAGA/Goodman
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`material, hoping to redirect Plaintiff’s customers and interfere with Plaintiff’s business
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`relationships. (See id. ¶ 65). Plaintiff clarifies later, however, that Defendants’ infringing conduct
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`has harmed Plaintiff’s business “in South Florida, the State of Florida, and the United States,
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`specifically,
`
`in
`
`the
`
`same market
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`in which Defendant[s]
`
`seek[]
`
`to operate.”
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`(Id. ¶ 61 (alterations and emphasis added)). At a minimum, Plaintiff operates in the U.S. market,
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`offering live courses in San Francisco, California; Miami, Florida; Washington D.C.; Chicago,
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`Illinois; and New York, New York. (See Exhibit D [ECF No. 26] 69–701).
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`In September 2018, Plaintiff filed the Amended Complaint, accusing Defendants of taking
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`“purposeful steps to mislead practitioners, as well as the general public . . . with regard to the
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`nature of Defendants’ services and the source of origin of said services, as well as goods distributed
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`by Defendants” bearing the Infringing Logo. (Am. Compl. ¶ 50 (alteration added)). Plaintiff
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`alleges Defendants have used the Infringing Logo in their marketing materials on Facebook,
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`YouTube, and on Defendants’ website to deliberately confuse consumers. (See id. ¶¶ 41, 51).
`
`In Count I, Plaintiff sues for trademark infringement under the Lanham Act, 15 U.S.C.
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`section 1125(a). Plaintiff states Defendants have “engaged in infringement of the IDIA Family of
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`Marks individually and in collusion with each other in the period 2016 through 2018.” (Id. ¶ 72).
`
`According to Plaintiff, Defendants’ “deliberate conduct” will “likely [] result in consumers
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`obtaining the Defendants’ services in mistaken belief that it [sic] originates from Plaintiff.” (Id. ¶
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`76 (alteration added)). Plaintiff asks for Defendants’ profits arising out of Defendants’ willful,
`
`malicious, and intentional conduct. (See id. ¶ 85).
`
`In Count II, Plaintiff sues for trademark dilution under the Lanham Act, 15 U.S.C. section
`
`1 The Court uses the pagination generated by the electronic CM/ECF database, which appears on the headers
`of all court filings.
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`3
`
`

`

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`CASE NO. 18-23097-CIV-ALTONAGA/Goodman
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`1125(c). (See id. ¶¶ 87–96). Count II is also based on Defendants’ Infringing Logo (see id. ¶ 91)
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`and alleges Defendants have used the Infringing Logo “knowingly and willfully” (id. ¶ 93).
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`In the remaining counts, Plaintiff asserts trademark and unfair competition claims under
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`Florida law including: dilution under Florida Statute section 495.151 (Count III) (see id. ¶¶ 97–
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`108); trademark and service mark infringement under Florida common law (Counts IV and V)
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`(see id. ¶¶ 109–116; ¶¶ 117–123); unfair competition under Florida common law (Count VI)
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`(see id. ¶¶ 124–131); unfair competition under Florida Statute sections 495.131 and 495.161
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`(Count VII) (see id. ¶¶ 132–139); and for an injunction (Count VIII) (see id. ¶¶ 140–145), which
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`should be pled as a prayer for relief, rather than an independent claim for relief.
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`The Court does not need to venture too deeply into the state-law claims, as they are also
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`based on the Infringing Logo Defendants used to market their services online. As relevant here,
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`the following allegations inform the Court’s forthcoming analysis:
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`(cid:120) Plaintiff recognizes the harm to Plaintiff’s business is pervasive “in Florida and elsewhere
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`worldwide.” (Count III) (Id. ¶ 100 (emphasis added)).
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`(cid:120) Plaintiff notes its continuous use of its logo in “U.S. commerce, including within the state
`
`of Florida.” (Counts IV and V) (Id. ¶¶ 111, 119).
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`(cid:120) Plaintiff acknowledges that the “parties are competing in a similar pool for customers” and
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`Defendants cause confusion by “making unauthorized use in commerce of the Infringing
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`Marks.” (Count VI) (Id. ¶¶ 126–127 (emphasis added)).
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`(cid:120) Plaintiff seeks relief because Defendants’ unauthorized, deliberate and willful use of
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`Plaintiff’s IDIA Family of Marks enables Defendants to compete unfairly by confusing
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`“customers, potential customers, the continuing education travel, and dental industries, and
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`the community at large, as to the origin and/or affiliation of Defendants’ services . . . .”
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`4
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`

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`(Count VII) (Id. ¶ 134 (alteration added)).
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`(cid:120) Plaintiff seeks injunctive relief requiring Defendants “to engage in corrective advertising
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`in publications directed to the dental services and dental continuing education industry
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`throughout the United States, as well as on the Internet.” (Id. 31).
`
`B. Procedural Background
`
`Now that the parties have completed extensive jurisdictional discovery, Defendants move
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`to dismiss the Amended Complaint for lack of personal jurisdiction, improper venue, and failure
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`to join a party, or alternatively, to transfer venue. (See generally Mot.). Because a “transfer of
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`venue in this case would obviate the need to reach” the other bases in Defendants’ Motion, the
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`Court only considers Defendants’ venue argument. C.M.B. Foods, Inc. v. Corral of Middle Ga.,
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`396 F. Supp. 2d 1283, 1285 (M.D. Ala. 2005) (alterations added). While it is common to resolve
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`challenges to personal jurisdiction before addressing venue, “it is not required that courts do so”
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`and courts may instead “address venue applications at the threshold . . . .” Everlast World’s
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`Boxing Headquarters Corp. v. Ringside, Inc., 928 F. Supp. 2d 735, 741 (S.D.N.Y. 2013) (internal
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`quotation marks and citation omitted; alteration added).
`
`Here, the question of venue must be resolved because even if the Court exercised personal
`
`jurisdiction over Defendants, the Court would still transfer the case to the Southern District of
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`California. The parties’ findings during jurisdictional discovery only illuminate the nuanced
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`personal jurisdiction analysis that would be required in this case. Judicial economy therefore
`
`supports the Court’s approach here.
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`While the Court’s disposition does not rest on the parties’ jurisdictional discovery,2 the
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`2 The Court’s disposition on venue would be the same with or without the benefit of the parties’
`jurisdictional discovery.
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`5
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`

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`CASE NO. 18-23097-CIV-ALTONAGA/Goodman
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`discovery does inform the Court’s analysis. See Oppenheimer Fund, Inc. v. Sanders, 437 U.S.
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`340, 351 n.13 (1978) (noting “where issues arise as to jurisdiction or venue, discovery is available
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`to ascertain the facts bearing on such issues.” (citations omitted)). Succinctly stated, the discovery
`
`reveals Defendants targeted Florida consumers, among other consumers; Dr. Lee participated in
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`some seminars and conferences in Florida; and Defendants used a Florida distributor, Front Line
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`Dental Supply, LLC, for some of their marketing efforts in Florida. (See generally Opp.). The
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`discovery also reveals both Plaintiff’s and Defendants’ businesses target a global consumer base;
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`and Defendants adopted the Infringing Logo in California, promoting and marketing their services
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`bearing the Infringing Logo from San Diego. (See generally Mot.; Opp.; Reply).3
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`II.
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`LEGAL STANDARD
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`District courts may transfer a civil case to a different venue “[f]or the convenience of
`
`parties and witnesses, [and] in the interest of justice . . . .” 28 U.S.C. § 1404(a) (alterations added);
`
`see also Nalls v. Coleman Low Fed. Inst., 440 F. App’x 704, 706 (11th Cir. 2011) (citations
`
`omitted). Courts have broad discretion under section 1404(a). See England v. ITT Thompson
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`Indus., Inc., 856 F.2d 1518, 1520 (11th Cir. 1988) (citation omitted).
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`As part of this inquiry, courts apply a two-prong test. See Rothschild Storage Retrieval
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`Innovations, LLC v. Sony Mobile Commc’ns (USA) Inc., No. 14-CIV-22652, 2015 WL 224952, at
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`*2 (S.D. Fla. Jan. 15, 2015) (citations omitted). First, courts look to whether the case could have
`
`been brought in the other venue. See id. (citation omitted). Second, courts evaluate whether
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`“convenience and the interest of justice require transfer.” Id. (internal quotation marks and citation
`
`3 Notably, Plaintiff has not specifically requested
`to conduct discovery regarding venue.
`(See generally Opp.). Nevertheless, the parties’ discovery as to personal jurisdiction was extensive,
`touching on issues relevant to the Court’s venue analysis. But again, the Court does not rely on any findings
`of fact from the jurisdictional discovery. The Court, out of an abundance of caution, has simply reviewed
`the information exchanged in discovery to be assured Plaintiff benefits from a thorough review of the
`relevant issues raised in the parties’ briefing of the Motion.
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`6
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`

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`Case 1:18-cv-23097-CMA Document 68 Entered on FLSD Docket 05/03/2019 Page 7 of 16
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`omitted). Under this second prong, courts “weigh various factors . . . .” Windmere Corp. v.
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`Remington Prods., Inc., 617 F. Supp. 8, 10 (S.D. Fla. 1985) (alteration added; citation omitted).
`
`These private and public interest factors include:
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`(1) the convenience of the witnesses; (2) the location of relevant documents and the
`relative ease of access to sources of proof; (3) the convenience of the parties; (4)
`the locus of operative facts; (5) the availability of process to compel the attendance
`of unwilling witnesses; (6) the relative means of the parties; (7) a forum’s
`familiarity with the governing law; (8) the weight accorded a plaintiff’s choice of
`forum; and (9) trial efficiency and the interests of justice, based on the totality of
`the circumstances.
`
`Manuel v. Convergys Corp., 430 F.3d 1132, 1135 n.1 (11th Cir. 2005) (citation omitted).
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`III.
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`ANALYSIS
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`Applying this test, the Court first addresses whether the case could have been brought in
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`the Southern District of California. The Court then analyzes whether transfer serves the
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`convenience of the parties and the interests of justice. Because Defendants satisfy their burden on
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`both prongs, transfer is required under section 1404(a). The principles compelling this conclusion
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`are explained below.
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`A. Whether the Action Could Have Been Brought in the Transferee Court
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`A case “might have been brought in a transferee district if that district has subject matter
`
`jurisdiction over the action, venue is proper, and the parties are amenable to service of process in
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`the transferee forum.” Game Controller Tech. LLC v. Sony Computer Entm’t Am. LLC, 994 F.
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`Supp. 2d 1268, 1272–73 (S.D. Fla. 2014) (citation omitted). All three requirements are satisfied.
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`First, the parties do not dispute subject matter jurisdiction exists. A federal court in San
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`Diego would have subject matter jurisdiction over the case under 28 U.S.C. section 1321 (the
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`Lanham Act); 28 U.S.C. section 1338(a) (actions arising under an Act of Congress relating to
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`copyrights); 28 U.S.C. section 1331 (federal question); 28 U.S.C. section 1338 (patent, trademark
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`7
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`

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`and copyright); and 28 U.S.C. section 1367 (supplemental jurisdiction). (See Am. Comp. ¶ 6).
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`Second, venue is proper in the Southern District of California under 28 U.S.C. section
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`1391(b)(1), as it is “a judicial district in which any defendant resides, if all defendants are residents
`
`of the State in which the district is located.” Dr. Lee lives in and operates his dental practice out
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`of California. (See Am. Compl. ¶ 11). International Academy was a California limited liability
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`company organized under the laws of California, dissolving in 2016. (See id. ¶ 12). Dr. Lee, a
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`California citizen, was the managing member of International Academy. (See id.).
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`Venue is also proper in the Southern District of California under 28 U.S.C. section
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`1391(b)(2), because it is “a judicial district in which a substantial part of the events or omissions
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`giving rise to the claim occurred.” Id. Defendants promoted their services using the Infringing
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`Logo from online postings made in San Diego, and some consumer confusion allegedly occurred
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`in San Diego.
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`(See Am. Compl. ¶¶ 31–69). The Southern District of California is therefore a
`
`proper venue.
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`Third, the United States District Court for the Southern District of California can exercise
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`personal jurisdiction over Defendants, who are California citizens. (See id. ¶¶ 11–12).
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`Because subject matter jurisdiction would exist over the case, venue would be proper, and
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`Defendants would be amenable to service of process, Plaintiff’s case could have been brought in
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`the Southern District of California. The transferee court is thus an adequate alternative forum, and
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`the Court must turn to the second prong of the section 1404(a) analysis. See Rothschild Storage
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`Retrieval Innovations, LLC v. LG Elecs., Inc., No. 14-cv-22654, 2015 WL 11233067, at *2 (S.D.
`
`Fla. June 3, 2015).
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`8
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`

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`B. The Convenience of the Parties and the Interests of Justice4
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`1. Locus of Operative Facts
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`“The locus of operative facts is a primary factor in determining whether to transfer venue.”
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`CYI, Inc. v. Ja-Ru, Inc., 913 F. Supp. 2d 16, 19 (S.D.N.Y. 2012) (internal quotation marks and
`
`citations omitted). Taking Plaintiff’s allegations as true, as well as all jurisdictional discovery
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`materials supplied by the parties in the light most favorable to Plaintiff, the Court concludes the
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`locus of operative facts factor weighs in favor of transfer.
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`Plaintiff alleges, and Defendants do not dispute, that Defendants, as part of their nationwide
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`effort to attract consumers, advertised and distributed infringing services bearing the Infringing
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`Logo in Florida. (See Am. Compl. ¶¶ 39, 65–67). Plaintiff also recognizes the bulk of Defendants’
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`marketing activity was online, targeting a worldwide consumer base. (See id. ¶¶ 41, 54). The
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`record also reveals Defendants designed and developed the Infringing Logo in San Diego, where
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`they reside. (See id. ¶¶ 32, 38–39).
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`Importantly, Plaintiff provides no support for the proposition that “in-district sales of an
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`allegedly infringing product, standing alone, require a finding that this district is the locus of
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`operative facts despite sales in other districts.” CYI, Inc., 913 F. Supp. 2d at 21. Nor does Plaintiff
`
`allege (or assert) that a substantial fraction of Defendants’ sales took place in the Southern District
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`of Florida. (See generally Am. Compl.). In other words, while some of Defendants’ sales and
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`4 Plaintiff fails to adequately address Defendants’ Motion to transfer the case under section 1404(a). In a
`single footnote, Plaintiff contends “transfer is not warranted because Defendants failed to discuss the public
`and private factors to be considered under Eleventh Circuit guidance.” (Opp. 17 n.10 (citation omitted)).
`Not so. Defendants did analyze the public and private factors under section 1404(a). (See Mot. 18–19).
`
`Plaintiff also makes the conclusory assertion that “the factors would not weigh in favor of transfer because
`they are either neutral or weigh in Plaintiff’s favor and the only factor in Defendants’ favor is their location
`in California.” (Opp. 17 n.10 (citation omitted)). Plaintiff does not guide the Court in any other way as to
`venue, an issue Defendants placed squarely before the Court.
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`9
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`

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`promotions –– and by extension, some consumer confusion –– occurred in the Southern District
`
`of Florida, that in and of itself does not render this District the locus of the operative facts. Indeed,
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`Defendants posted the Infringing Logo online attracting consumers worldwide. (See id. ¶¶ 39–
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`54).
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`Therefore, the Court looks elsewhere for the locus of operative facts. See Enigma Software
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`Grp. USA, LLC v. Malwarebytes Inc., 260 F. Supp. 3d 401, 411 (S.D.N.Y. 2017) (“The Court
`
`declines to find that the location of consumers favors New York where only a small fraction of
`
`consumers of the product at issue bought the product [sic] issue in, or are located in, New York.”);
`
`see also H.B. Sherman Mfg. Co. v. Rain Bird Nat. Sales Corp., 979 F. Supp. 627, 630 (N.D. Ill.
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`1997) (“Although the actual injury in a trademark infringement case occurs where the consumer
`
`is misled . . . here, the parties sell their products in similar markets nationwide. The fact that [the
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`defendant] markets its products in the Northern District does not compel the parties to try the case
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`here.” (alterations added; citation omitted)).
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`Courts in this District have recognized that in trademark infringement cases, “the locus of
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`operative facts . . . is often the headquarters of the allegedly infringing entity, where design and
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`development . . . took place.” Dohler S.A. v. Guru, No. 16-23137-CIV, 2017 WL 4621098, at *8
`
`(S.D. Fla. Oct. 16, 2017) (alterations added; citing cases). This is especially true in trademark
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`infringement cases involving allegations of willfulness, where courts must look to “facts regarding
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`the design and development of the accused products . . . and the knowledge of the employees
`
`involved in that process.” CYI, Inc., 913 F. Supp. 2d at 21 (alterations added).
`
`Here, Defendants’ Infringing Logo was developed and designed in the Southern District of
`
`California. (See Am. Compl. ¶ 32). Defendants marketed their services online from San Diego.
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`(See id. ¶ 41; see also Mot. 19). Every claim in Plaintiff’s Amended Complaint contains an
`
`10
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`

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`element of willfulness, requiring an analysis of Defendants’ and their agents’ intentions in
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`adopting the Infringing Logo. (See generally Am. Compl.).
`
`Because Defendants’ infringing services underlying Plaintiff’s state and federal trademark
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`infringement claims “relate to unfair competition, misrepresentations, or intellectual property
`
`infringement on a widespread scale, the locus of operative facts is the location from which
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`[Defendants] developed or created the allegedly unlawful content.” Blue Buffalo Co. Ltd. v. Nestle
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`Purina PetCare Co., No. 3:14-CV-1665, 2015 WL 13625758, at *4 (D. Conn. Feb. 13, 2015)
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`(alteration added; citations and footnote call number omitted)). The locus of operative facts factor
`
`therefore strongly favors transfer.
`
`2. Plaintiff’s Choice of Forum
`
`Plaintiff is based out of this District and is deserving of deference in its choice of forum.
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`Further, unlike with patent infringement, trademark infringement “only occurs once the allegedly
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`infringing products are injected into the stream of commerce and a likelihood of confusion can be
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`demonstrated,” and thus a “plaintiff’s forum choice [is] afforded some deference.” Par Pharm.,
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`Inc. v. Fleming & Co., Pharm., No. 09cv0001-LAB (JMA), 2009 WL 10672226, at *7 (S.D. Cal.
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`Sept. 18, 2009) (internal quotation marks and citation omitted; alteration added).
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`While the Court affords Plaintiff’s choice of forum this deference, the “operative facts
`
`underlying the cause[s] of action did not occur within the forum chosen by” Plaintiff, and thus “the
`
`choice of forum is entitled to ‘less consideration.’” Trace-Wilco, Inc. v. Symantec Corp., No. 08-
`
`80877-CIV, 2009 WL 455432, at *2 (S.D. Fla. Feb. 23, 2009) (quoting Windmere Corp. v.
`
`Remington Prods., Inc., 617 F. Supp. 8, 10 (S.D. Fla. 1985) (alteration added; other citations
`
`omitted)). Considering the “locus of operative facts” is in California, Plaintiff’s choice of forum
`
`is entitled to some, although not considerable deference. CYI, Inc., 913 F. Supp. 2d at 22
`
`11
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`(concluding plaintiff’s choice of forum is entitled to less weight based “in large part on the . . .
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`analysis regarding the locus of operative facts . . . .” (alterations added)).
`
`3. Convenience of Witnesses and Compulsory Process
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`“The convenience of the witnesses is best served when witnesses are allowed to testify in
`
`the forum where they reside.” Morrissey v. Subaru of Am., Inc., No. 1:15-cv-21106, 2015 WL
`
`9583278, at *3 (S.D. Fla. Dec. 31, 2015) (citation omitted). Defendants and non-parties with
`
`knowledge of the design, development, marketing, and promotion of the Infringing Logo reside in
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`San Diego. (See generally Am. Compl.). Dr. Lee’s assistant, Glory Song, for example, resides in
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`San Diego. (See Deposition of Glory Song [ECF No. 61-5] 5:13–14). Ms. Song prepared the
`
`names of Defendants’ promotional email list, seminar attendance list, and list of individuals
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`purchasing Defendants branded products. (See id. 62–68).
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`These facts support transfer to the Southern District of California. See O-Line Acad., LLC
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`v. NBC Universal, Inc., No. 1:16 CV 90, 2016 WL 2997587, at *2 (N.D. Ohio May 25, 2016)
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`(concluding the Central District of California is the more convenient forum because defendants’
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`employees who “worked on developing the allegedly infringing logo are based in the Central
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`District of California.”); see also Everlast World’s Boxing Headquarters Corp. v. Ringside, Inc.,
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`928 F. Supp. 2d 735, 743 (S.D.N.Y. 2013) (“In a trademark infringement action, the most critical
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`witnesses may be those officers and employees who were involved in sale of the allegedly
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`infringing products.” (internal quotation marks, citation, and alterations in original omitted)).
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`While the Court ordinarily affords substantial weight to this factor, Defendants fail to
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`provide names of specific non-party witnesses and their proposed testimony. (See generally Mot.;
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`Reply). The Court also notes Defendants’ former Florida distributor, Front Line Dental Supply,
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`resides in Florida. (See Affidavit of Heidi Tandy [ECF No. 61-1] ¶¶ 12–14) (“Tandy Aff.”).
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`Considering the totality of the circumstances, this factor only provides “modest support for
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`transfer.” Trafalgar Capital Specialized Inv. Fund (In Liquidation) v. Hartman, 878 F. Supp. 2d
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`1274, 1287 (S.D. Fla. 2012).
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`As to compulsory process, the Court cannot compel any unwilling witness residing outside
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`of Florida to testify. See Bell v. Kerzner Int’l Ltd., No. 10-23755-CIV, 2011 WL 12656691, at *9
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`(S.D. Fla. July 14, 2011), aff’d, 503 F. App’x 669 (11th Cir. 2012); see also Fed. R. Civ. P.
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`45(c)(1).5 Again, based on Plaintiff’s allegations, relevant non-party witnesses are likely
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`California residents and are therefore beyond the Court’s subpoena power.
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`That non-party witnesses in Florida might refuse to testify about consumer confusion, a
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`material element of Plaintiff’s claims, does not materially affect the analysis either. Consumers
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`abound, and appear to be centrally located in California, where Dr. Lee offers most of his classes
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`on dental implant procedure. (See Affidavit of Samuel Soon Ho Lee [ECF No. 60-1] ¶¶ 19–20;
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`58). See AutomationDirect.com, Inc. v. Autotech Techs., L.P, No. 1:05-CV-0961-CC, 2006 WL
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`8432135, at *8 (N.D. Ga. Jan. 12, 2006) (noting availability and cost of obtaining witnesses factor
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`favors transfer where the “infringing catalog and a substantial part of the advertising at issue likely
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`has reached more Illinois consumers than Georgia consumers, [and] there are likewise more non-
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`party witnesses available in or around the Northern District of Illinois to testify regarding
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`consumer confusion issues than there are in or around this District.” (alteration added)).
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`Nevertheless, Defendants fail to supply names of specific non-party witnesses who would
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`be unwilling to testify. Because of this deficiency, “this factor does not add much to Defendants’
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`Motion.” Trafalgar Capital Specialized Inv. Fund, 878 F. Supp. 2d at 1287 (citation omitted). In
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`5 A federal court’s subpoena power is geographically limited under Federal Rule of Civil Procedure 45(c).
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`short, the convenience of witnesses and compulsory process considerations only somewhat support
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`transfer.
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`4. Convenience of the Parties
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`The Southern District of California is the most convenient forum for Defendants. Plaintiff,
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`a Florida citizen, likely chose this forum because it is most convenient for it. As both parties will
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`be required to “engage in similar cross-country travel” wherever this case is litigated, the parties
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`are “in a relatively similar situation.” Advanced Aerodynamics, LLC v. Unmanned Cowboys, LLC,
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`No. 0:15-cv-62679, 2016 WL 8738383, at *4 (S.D. Fla. May 31, 2016). This factor is thus neutral.
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`See id.
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`5. Location of Relevant Documents and Ease of Access to Sources of Proof
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`Defendants note, and Plaintiff does not dispute, that the relevant documentary evidence is
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`in California and none is in Florida. (See Mot. 19). But “[i]n a world with . . . copy machines,
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`email, overnight shipping, and mobile phones that can scan and send documents, the physical
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`location of documents is irrelevant.” Microspherix LLC v. Biocompatibles, Inc., No. 9:11-cv-
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`80813, 2012 WL 243764, at *3 (S.D. Fla. Jan. 25, 2012) (alterations added). This factor somewhat
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`favors transfer. See Trafalgar Capital Specialized Inv. Fund, 878 F. Supp. 2d at 1288 (affording
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`ease of access to sources factor “minimal weight.”).
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`6. Relative Means of the Parties
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`Both parties run businesses and appear ably positioned to litigate this case in either forum.
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`(See generally Am. Compl.). Still, the parties have not extensively addressed their relative means
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`to litigate this case, and “[n]ot much else is known regarding the parties’ financial means and their
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`respective abilities to conduct litigation in a distant forum.” Microspherix LLC, 2012 WL 243764,
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`at *5 (alteration added). As the Court lacks information on the parties’ means, this factor is neutral.
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`7. Forum’s Familiarity with Governing Law
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`Plaintiff brings some claims under Florida law and others under federal trademark law.
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`(See Am. Compl.). A federal judge in San Diego can apply federal trademark law just as
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`competently as the undersigned, and while California federal judges may have less exposure to
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`claims under Florida law than federal judges sitting in Florida do, the state claims here are
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`inextricably linked to the federal trademark claims. This factor is either neutral or weighs
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`somewhat against transfer. See Trans Am. Worldwide, LLC v. JP Superior Sols., LLC, No.
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`4:17cv560, 2018 WL 3090394, at *10 (N.D. Fla. Apr. 30, 2018) (concluding forum’s familiarity
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`with governing law is neutral consideration because “district courts often have little trouble
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`applying the law[s] of other states.” (alteration added; citations omitted)); see also CYI, Inc., 913
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`F. Supp. 2d at 26 (holding that where the plaintiff raised “numerous New York state law causes of
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`action,” the governing law factor “weighs against transfer, albeit not heavily.” (citations omitted)).
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`8. Trial Efficiency and Interests of Justice in Totality
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`In weighing this factor, courts consider “administrative difficulties flowing from court
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`congestion, the local interest in having localized controversies decided at home, the avoidance of
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`unnecessary problems in conflict of laws or application of foreign law, and the unfairness in
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`imposing jury duty on citizens in an unrelated forum.” Rothschild Connected Devices Innov