AESP, Inc. v. Signamax, LLC, 29 F. Supp. 3d 683

Background

AESP (Florida) and its subsidiary Signamax, Inc. claim ownership of the SIGNAMAX CONNECTIVITY SYSTEMS trademark and related copyright, alleging the mark originated with CCCI and transferred to AESP after AESP bought CCCI and later Intelek.
Intelek (Czech) obtained a U.S. trademark registration for SIGNAMAX; plaintiffs say a 2004 transfer of Intelek rights to AESP should have included the U.S. registration, but the written agreement omitted that transfer (alleged scrivener’s error).
In 2005 AESP sold Intelek’s assets to Apron (defendant’s predecessor); Apron/defendant later recorded an assignment of the U.S. trademark to defendant; Czech courts held the sale transferred the mark to Apron/defendant, and that judgment was affirmed on appeal.
Plaintiffs filed a cancellation petition before the PTO’s TTAB (pending and repeatedly suspended) and this federal action seeking cancellation, declaratory relief, injunctive relief, and damages for trademark and copyright violations and related torts.
Jurisdictional facts: defendant is a D.C. LLC formed by a Czech company; defendant sold products abroad through Jetwing Tech to Lynn Electronics (a Pennsylvania nationwide reseller), and Lynn made a few downstream sales to Virginia purchasers (drop shipments). Plaintiffs rely on those sales to assert Virginia personal jurisdiction.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether Virginia courts have personal jurisdiction over defendant under Va. long-arm and due process	The limited number of sales that ended up in Virginia (via Lynn Electronics and downstream resales) show defendant placed products into U.S. stream of commerce and should reasonably expect suit in Virginia	Defendant sold to a U.S. nationwide distributor (Pennsylvania) and did not purposefully direct sales, marketing, or distribution specifically to Virginia or control downstream sales	No personal jurisdiction: placing products into the stream of commerce via a nationwide distributor, without additional purposeful conduct directed at Virginia, is insufficient under Fourth Circuit due process standards
Whether Virginia long-arm statute reaches defendant’s conduct	Plaintiffs rely on the transacting-business long-arm provision as applied to these sales	Defendant contends the statute does not reach defendant absent purposeful Virginia contacts	Court treated Virginia’s statute as coextensive with due process and resolved the issue on constitutional minimum-contacts grounds (no jurisdiction)
Proper governing law for personal jurisdiction analysis	Plaintiffs invoked non-patent precedent; relied on TTAB and other fora	Defendant cited mixed precedent including non-Fourth Circuit authorities	Court applied Fourth Circuit and Supreme Court personal-jurisdiction law (regional circuit controls)
Impact on TTAB proceeding / claim resolution	Plaintiffs sought to litigate ownership here and suspend TTAB	Defendant urged dismissal for lack of jurisdiction, preserving TTAB and Czech rulings	Court dismissed federal suit without prejudice for lack of personal jurisdiction and urged prompt TTAB resolution of trademark ownership

Key Cases Cited

International Shoe Co. v. Washington, 326 U.S. 310 (establishes minimum contacts/due process standard for personal jurisdiction)
Burger King Corp. v. Rudzewicz, 471 U.S. 462 (purposeful availment and fair warning requirements)
World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (stream-of-commerce concept and foreseeability limits)
Asahi Metal Industry Co. v. Superior Court, 480 U.S. 102 (split on stream-of-commerce: additional purposeful conduct vs. awareness)
Lesnick v. Hollingsworth & Vose Co., 35 F.3d 939 (4th Cir. rejects broad foreseeability stream-of-commerce theory; requires purposeful direction)
In re Celotex Corp., 124 F.3d 619 (4th Cir. treatment of stream-of-commerce and purposeful conduct)
Ellicott Machine Corp. v. John Holland Party Ltd., 995 F.2d 474 (two-step Fourth Circuit jurisdictional inquiry)