ESTTA Tracking number:
`
`ESTTA1363997
`
`Filing date:
`
`06/10/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91286409
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Grant Street Group, Inc.
`
`THOMAS M. JOSEPH
`JOSEPH-IP LAW, LLC
`P.O. BOX 14789
`PITTSBURGH, PA 15234
`UNITED STATES
`Primary email: tmdjoseph@yahoo.com
`412-780-4061
`
`Motion to Suspend for Civil Action
`
`Thomas M. Joseph
`
`tjoseph@bauerandjoseph.com, tmdjoseph@yahoo.com,
`tom.joseph@grantstreet.com
`
`/Thomas M. Joseph/
`
`06/10/2024
`
`Motion to Suspend.pdf(147554 bytes )
`EXHIBIT 1 - full.pdf(2906429 bytes )
`
`

`

`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`Opposer,
`
`vs.
`
`GRANT STREET GROUP, INC.
`
`
`
`
`
`GOVHUB LLC DBA GOVHUB
`
`
`
`
`
`
`Applicant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`Opposition No. 91286409
`(parent case)
`Ser. No. 97/189,447 – GOVUB
`Filed: 12/24/2021
`
`Opposition No. 91288544
`Serial No. 97-179,061
`Mark: THE GOV HUB
`
`
`OPPOSER’S MOTION TO SUSPEND
`
`
`
`Opposer Grant Street Group, Inc. (“Opposer” or “GSG”), moves for a suspension of the
`
`above-styled opposition proceeding pursuant to Trademark Rule of Practice 2.117(a). See 37
`
`C.F.R. § 2.117(a). The parties to this proceeding are involved in a civil action, Grant Street Group,
`
`Inc. v. GovHub, LLC, Civil Action No. 2:24-cv-00767, which is currently pending in the United
`
`States District Court for the Western District of Pennsylvania, involving the issue of whether
`
`Applicant’s claimed GOVHUB and THE GOV HUB marks infringe Opposer’s U.S. Trademark
`
`Registration Nos. 6,296,368 and 6,789,890. A copy of the complaint is attached hereto
`
`as Exhibit 1.
`
`
`
`These issues are likewise raised by the above-styled consolidated Oppositions, and the civil
`
`action, therefore, may be dispositive of this proceeding. Therefore, Opposer respectfully requests
`
`that the Board suspend these consolidated Opposition proceedings pending termination of the civil
`
`action.
`
`
`
`
`
`
`
`Dated: June 10, 2024
`
`
`Respectfully submitted,
`
`GRANT STREET GROUP, INC.
`By:
`/Thomas M. Joseph/
`Thomas M. Joseph
`PA I.D. No. 87012
`339 Sixth Avenue
`Suite 1400
`
`
`
`1
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Pittsburgh, PA 15222-2517
`Phone: (412) 391-5555, Ext. 1376
`Fax:
`(412) 391-7608
`Email: tom.joseph@grantstreet.com
`
`Alternative Address
`Bauer and Joseph
`9800A McKnight Road
`Suite 307
`Pittsburgh, PA 15237
`
`Phone: (412) 780-4061
`Email: tjoseph@bauerandjoseph.com
` tmdjoseph@yahoo.com
`
`Attorneys for Opposer
`
`
`
`
`
`
`2
`
`

`

`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing OPPOSER’S MOTION TO
`
`SUSPEND has been served on Kristine Miller, Managed Legal Services, 1740 Columbine
`
`Avenue, Boulder, CO 80302 by forwarding said copy on June 10, 2024 via email to
`
`kris@managed-legal-services.com.
`
`
`
`Signature /Thomas M. Joseph/
`
`
`
`Date: June 10, 2024
`
`
`
`3
`
`

`

`EXHIBIT 1
`EXHIBIT 1
`
`

`

`JS 44 (Rev. 12/12)
`
`Case 2:24-cv-00767 Document 1 Filed 05/24/24 Page 1 of 23
` CIVIL COVER SHEET
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
`provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
`purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
`I. (a) PLAINTIFFS
`DEFENDANTS
`Grant Street Group, Inc.
`GovHub, LLC d/b/a GovHub
`
`(b) County of Residence of First Listed Plaintiff
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`(c) Attorneys (Firm Name, Address, and Telephone Number)
`David I. Kelch, Thomas Joseph, 339 Sixth Avenue, #1400, Pittsburgh,
`PA
`
`NOTE:
`
`County of Residence of First Listed Defendant
`(IN U.S. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
` Attorneys (If Known)
`
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`
`’ 1 U.S. Government
`Plaintiff
`
`’ 3 Federal Question
`(U.S. Government Not a Party)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
`(For Diversity Cases Only)
` and One Box for Defendant)
` PTF DEF
` PTF
` DEF
`Incorporated or Principal Place
`Citizen of This State
`’ 1
`’ 1
`’ 4
`’ 4
` of Business In This State
`
`’ 2 U.S. Government
`Defendant
`
`’ 4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`Citizen of Another State
`
`’ 2
`
`’ 2
`
`Incorporated and Principal Place
`of Business In Another State
`
`’ 5
`
`’ 5
`
`Citizen or Subject of a
` Foreign Country
`
`’ 3
`
`’ 3
`
`Foreign Nation
`
`’ 6
`
`’ 6
`
`BANKRUPTCY
`FORFEITURE/PENALTY
`’ 422 Appeal 28 USC 158
`’ 625 Drug Related Seizure
` of Property 21 USC 881 ’ 423 Withdrawal
`’ 690 Other
` 28 USC 157
`
`OTHER STATUTES
`’ 375 False Claims Act
`’ 400 State Reapportionment
`’ 410 Antitrust
`’ 430 Banks and Banking
`’ 450 Commerce
`’ 460 Deportation
`’ 470 Racketeer Influenced and
` Corrupt Organizations
`’ 480 Consumer Credit
`’ 490 Cable/Sat TV
`’ 850 Securities/Commodities/
` Exchange
`’ 890 Other Statutory Actions
`’ 891 Agricultural Acts
`’ 893 Environmental Matters
`’ 895 Freedom of Information
` Act
`’ 896 Arbitration
`’ 899 Administrative Procedure
` Act/Review or Appeal of
` Agency Decision
`’ 950 Constitutionality of
` State Statutes
`
`PROPERTY RIGHTS
`’ 820 Copyrights
`’ 830 Patent
`’ 840 Trademark
`
`SOCIAL SECURITY
`’ 861 HIA (1395ff)
`’ 862 Black Lung (923)
`’ 863 DIWC/DIWW (405(g))
`’ 864 SSID Title XVI
`’ 865 RSI (405(g))
`
`FEDERAL TAX SUITS
`’ 870 Taxes (U.S. Plaintiff
` or Defendant)
`’ 871 IRS—Third Party
` 26 USC 7609
`
`IMMIGRATION
`’ 462 Naturalization Application
`’ 465 Other Immigration
` Actions
`
` REAL PROPERTY
`’ 210 Land Condemnation
`’ 220 Foreclosure
`’ 230 Rent Lease & Ejectment
`’ 240 Torts to Land
`’ 245 Tort Product Liability
`’ 290 All Other Real Property
`
`IV. NATURE OF SUIT (Place an “X” in One Box Only)
`CONTRACT
`TORTS
` PERSONAL INJURY
` PERSONAL INJURY
`’ 110 Insurance
`’ 120 Marine
`’ 310 Airplane
`’ 365 Personal Injury -
`’ 130 Miller Act
`’ 315 Airplane Product
` Product Liability
`’ 140 Negotiable Instrument
` Liability
`’ 367 Health Care/
`’ 150 Recovery of Overpayment ’ 320 Assault, Libel &
` Pharmaceutical
` & Enforcement of Judgment
` Slander
` Personal Injury
`’ 151 Medicare Act
`’ 330 Federal Employers’
` Product Liability
`’ 152 Recovery of Defaulted
` Liability
`’ 368 Asbestos Personal
` Student Loans
`’ 340 Marine
` Injury Product
`LABOR
` (Excludes Veterans)
`’ 345 Marine Product
` Liability
` PERSONAL PROPERTY ’ 710 Fair Labor Standards
`’ 153 Recovery of Overpayment
` Liability
` of Veteran’s Benefits
`’ 350 Motor Vehicle
`’ 370 Other Fraud
` Act
`’ 160 Stockholders’ Suits
`’ 355 Motor Vehicle
`’ 371 Truth in Lending
`’ 720 Labor/Management
`’ 190 Other Contract
` Product Liability
`’ 380 Other Personal
` Relations
`’ 195 Contract Product Liability ’ 360 Other Personal
` Property Damage
`’ 740 Railway Labor Act
`’ 196 Franchise
` Injury
`’ 385 Property Damage
`’ 751 Family and Medical
`’ 362 Personal Injury -
` Product Liability
` Leave Act
` Medical Malpractice
`’ 790 Other Labor Litigation
` CIVIL RIGHTS
` PRISONER PETITIONS ’ 791 Employee Retirement
`Habeas Corpus:
`’ 440 Other Civil Rights
` Income Security Act
`’ 441 Voting
`’ 463 Alien Detainee
`’ 442 Employment
`’ 510 Motions to Vacate
`’ 443 Housing/
` Sentence
` Accommodations
`’ 530 General
`’ 445 Amer. w/Disabilities - ’ 535 Death Penalty
`Other:
` Employment
`’ 446 Amer. w/Disabilities - ’ 540 Mandamus & Other
` Other
`’ 550 Civil Rights
`’ 555 Prison Condition
`’ 448 Education
`’ 560 Civil Detainee -
` Conditions of
` Confinement
`
`V. ORIGIN (Place an “X” in One Box Only)
`’ 1 Original
`’ 2 Removed from
`Proceeding
`State Court
`
`’ 3 Remanded from
`Appellate Court
`
`’ 4 Reinstated or
`Reopened
`
`’ 6 Multidistrict
`Litigation
`
`’ 5 Transferred from
`Another District
`(specify)
`Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
`Trademark Act of 1946, 15 U.S.C. §§ 1051 et seq.
`
`Brief description of cause:
`Trademark Infringement and related causes of action
`DEMAND $
`’ CHECK IF THIS IS A CLASS ACTION
`UNDER RULE 23, F.R.Cv.P.
`
`(See instructions):
`
`JUDGE
`SIGNATURE OF ATTORNEY OF RECORD
`
`DOCKET NUMBER
`
`CHECK YES only if demanded in complaint:
`’ Yes
`’ No
`JURY DEMAND:
`
`VI. CAUSE OF ACTION
`
`VII. REQUESTED IN
` COMPLAINT:
`VIII. RELATED CASE(S)
` IF ANY
`DATE
`
`FOR OFFICE USE ONLY
`
`RECEIPT #
`
`AMOUNT
`
`APPLYING IFP
`
`JUDGE
`
`MAG. JUDGE
`
`

`

`Case 2:24-cv-00767 Document 1 Filed 05/24/24 Page 2 of 23
`
`JS 44AREVISED June, 2009
`IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA
`THIS CASE DESIGNATION SHEET MUST BE COMPLETED
`
`PART A
` Pittsburgh) calendar.
`Johnstown
` Erie
`This case belongs on the (
`1. ERIE CALENDAR - If cause of action arose in the counties of Crawford, Elk, Erie,
`Forest, McKean. Venang or Warren, OR any plaintiff or defendant resides in one of said
`counties.
`2. JOHNSTOWN CALENDAR - If cause of action arose in the counties of Bedford, Blair,
`Cambria, Clearfield or Somerset OR any plaintiff or defendant resides in one of
`said counties.
`3. Complete if on ERIE CALENDAR: I certify that the cause of action arose in
`County and that the
`resides in
`County.
`4. Complete if on JOHNSTOWN CALENDAR: I certify that the cause of action arose in
`County and that the
`resides in
`County.
`PART B (You are to check ONE of the following)
`. Short Caption
`1.
`This case is related to Number
`2.
`This case is not related to a pending or terminated case.
`DEFINlTIONS OF RELATED CASES:
`CIVIL: Civil cases are deemed related when a case filed relates to property included in
`another suit or involves the same issues of fact or it grows out of the same transactions
`as another suit or involves the validity or infringement of a patent involved in another
`suit EMINENT DOMAIN: Cases in contiguous closely located groups and in common ownership
`groups which will lend themselves to consolidation for trial shall be deemed related.
`HABEAS CORPUS & CIVIL RIGHTS: All habeas corpus petitions filed by the same individual
`shall be deemed related. All pro se Civil Rights actions by the same individual shall be
`deemed related.
`PARTC
`I. CIVIL CATEGORY (Select the applicable category).
`1.
`Antitrust and Securities Act Cases
`Labor-Management Relations
`2.
`3.
`Habeas corpus
`Civil Rights
`4.
`5.
`Patent, Copyright, and Trademark
`6.
`Eminent Domain
`7.
`All other federal question cases
`8.
`All personal and property damage tort cases, including maritime, FELA,
`Jones Act, Motor vehicle, products liability, assault, defamation, malicious
` prosecution, and false arrest
` 9. Insurance indemnity, contract and other diversity cases.
`10.
`Government Collection Cases (shall include HEW Student Loans (Education),
`V A 0verpayment, Overpayment of Social Security, Enlistment
`Overpayment (Army, Navy, etc.), HUD Loans, GAO Loans (Misc. Types),
`Mortgage Foreclosures, SBA Loans, Civil Penalties and Coal Mine
`Penalty and Reclamation Fees.)
`
` .
`
`I certify that to the best of my knowledge the entries on this Case Designation
`Sheet are true and correct
`/s/ David I. Kelch
`
`Date:
`
`5/23/2024
`
`ATTORNEY AT LAW
`NOTE: ALL SECTIONS OF BOTH FORMS MUST BE COMPLETED BEFORE CASE CAN BE PROCESSED.
`
`

`

`JS 44 Reverse (Rev. 12/12)
`
`Case 2:24-cv-00767 Document 1 Filed 05/24/24 Page 3 of 23
`
`INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
`Authority For Civil Cover Sheet
`
`The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as
`required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is
`required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of
`Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
`
`I.(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
`only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and
`then the official, giving both name and title.
` (b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
`time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
`condemnation cases, the county of residence of the "defendant" is the location of the tract of land involved.)
` (c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
`in this section "(see attachment)".
`
`II.
`
`Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X"
`in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
`United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
`United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box.
`Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment
`to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes
`precedence, and box 1 or 2 should be marked.
`Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the
`citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity
`cases.)
`
`III. Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this
`section for each principal party.
`
`IV.
`
`V.
`
`Nature of Suit. Place an "X" in the appropriate box. If the nature of suit cannot be determined, be sure the cause of action, in Section VI below, is
`sufficient to enable the deputy clerk or the statistical clerk(s) in the Administrative Office to determine the nature of suit. If the cause fits more than
`one nature of suit, select the most definitive.
`
`Origin. Place an "X" in one of the six boxes.
`Original Proceedings. (1) Cases which originate in the United States district courts.
`Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441.
`When the petition for removal is granted, check this box.
`Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing
`date.
`Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
`Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or
`multidistrict litigation transfers.
`Multidistrict Litigation. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C. Section 1407.
`When this box is checked, do not check (5) above.
`
`VI.
`
`Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
`statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service
`
`VII. Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P.
`Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.
`Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
`
`VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket
`numbers and the corresponding judge names for such cases.
`
`Date and Attorney Signature. Date and sign the civil cover sheet.
`
`

`

`Case 2:24-cv-00767 Document 1 Filed 05/24/24 Page 4 of 23
`
` IN THE UNITED STATES DISTRICT COURT
` FOR THE WESTERN DISTRICT OF PENNSYLVANIA
`
` GRANT STREET GROUP, INC.
`
` Plaintiff,
`
` v.
`
` GOVHUB, LLC d/b/a GOVHUB
`
` Defendant
`
` )
` )
` )
` )
` )
` )
` )
` )
` )
`
` Case No. 2:24-cv-00767
`
` COMPLAINT
`
` Plaintiff Grant Street Group, Inc. (“Grant Street” or “Plaintiff”), by and through its undersigned
`
` counsel, files this Complaint against Defendant GovHub, LLC (“GovHub” or “Defendant”) for
`
` trademark infringement and related claims.
`
` NATURE OF THE ACTION
`
` 1.
`
` This is an action at law and in equity for trademark infringement, false designation of
`
` origin, and cybersquatting, under the Trademark Act of 1946, 15 U.S.C. §§ 1051 et seq. (1994) (the
`
` “Lanham Act”); and unfair competition, trademark infringement, and unjust enrichment under
`
` Pennsylvania state law.
`
` 2.
`
` The Defendant is making an unauthorized and infringing use of Grant Street’s
`
` federally-protected trademarks (and similar domain name) for use in the same trade channels as Grant
`
` Street, namely public procurement trade channels.
`
` PARTIES
`
` 3.
`
` Plaintiff Grant Street is a Pennsylvania corporation with its principal place of business
`
` at 339 Sixth Avenue, Suite 1400, Pittsburgh, Pennsylvania 15222.
`
`

`

`Case 2:24-cv-00767 Document 1 Filed 05/24/24 Page 5 of 23
`
` 4.
`
` Upon information and belief, Defendant GovHub is a Colorado LLC, with an address at
`
` 10563 Westcliff Place, Highlands Ranch, CO 80130.
`
` 5.
`
` Additional investigation and/or discovery may be necessary to identify all of
`
` Defendant’s other identities, addresses, and affiliated companies.
`
` JURISDICTION AND VENUE
`
` 6.
`
` This Court has federal question jurisdiction and subject matter jurisdiction under 28
`
` U.S.C. § 1331 in that Grant Street’s claims against Defendant arises from the laws of the United
`
` States, including the Lanham Act. This Court also has original jurisdiction over the subject matter of
`
` this action under 28 U.S.C. § 1338. This Court also has supplemental jurisdiction over Grant Street’s
`
` related state-law claims under 28 U.S.C. § 1367 because such state law claims are so related to
`
` Plaintiff’s claims under federal law that they form part of the same case or controversy and derive
`
` from a common nucleus of operative facts.
`
` 7.
`
` This Court also has jurisdiction over the action under 15 U.S.C. §§ 1114, 1116, 1117,
`
` 1125 and related statutes and principles of pendent jurisdiction.
`
` 8.
`
` This Court also has diversity subject matter jurisdiction under 28 U.S.C. § 1332
`
` because this action is one between citizens of different states and the amount in controversy exceeds
`
` $75,000.00, exclusive of interests and costs.
`
` 9.
`
` This Court has personal jurisdiction over Defendant pursuant to 42 Pa. Cons. Stat. §
`
` 5322 because, on information and belief, Defendant transacts business in Pennsylvania, and
`
` Defendant’s website www.gov-hub.com is able to be accessed in Pennsylvania, it is commercial in
`
` nature, and provides an interactive means for Pennsylvania residents to engage with the business of
`
` Defendant.
`
` 10.
`
` Personal jurisdiction is also supported by the Defendant’s website because that website
`
` uses an infringing derivative of Plaintiff’s “GovHub” trademark (explained fully below). Upon
`
` 2
`
`

`

`Case 2:24-cv-00767 Document 1 Filed 05/24/24 Page 6 of 23
`
` information and belief, Defendant regularly contracts and does business in this forum. Finally, upon
`
` information and belief, Defendant uses its infringing mark to do business and make sales and/or
`
` contracts in Pennsylvania.
`
` 11.
`
` Venue is proper in this Court under 28 U.S.C. § 1391(b) because a substantial part of
`
` the events or omissions giving rise to Plaintiff’s claim occurred here, and a substantial part of property
`
` that is the subject of the action is situated here. Venue is further proper because Defendant resides in
`
` this judicial district by virtue of its website www.gov-hub.com, the causes of action asserted herein
`
` arose within this judicial district, and Grant Street, which is headquartered in this District, has incurred
`
` the harm caused by Defendant’s wrongful conduct.
`
` 12.
`
` Additionally, on its website www.gov-hub.com Defendant offers “On-Call Traveling &
`
` Virtual Meeting Support.” It states: “Can’t make it to an important customer meeting? Let one of
`
` GovHub’s experts represent your company or join you at your next agency visit.” ( See Exhibit B, a
`
` screenshot of www.gov-hub.com ). Additionally, therefore, this Court has personal jurisdiction over the
`
` Defendant and venue is proper here because, on information and belief, Defendant has traveled to this
`
` District to conduct business meetings and agency visits related to its www.gov-hub.com business.
`
` FACTUAL BACKGROUND
`
` 13.
`
` Grant Street serves government clients. It is a financial technology software company
`
` that provides cloud-based software solutions and related services for government entities for tax
`
` collection, ePayments, and auctions.
`
` 14.
`
` Grant Street’s applications handle the billing, collection, and distribution of taxes, as
`
` well as payment processing and online auctions of financial and legal instruments.
`
` 15.
`
` For example, nearly two-thirds of all property taxes in the state of Florida are collected
`
` using TaxSys, Grant Street’s hosted tax billing and collection software. One-third of online vehicle and
`
` vessel registration renewals in Florida are processed using Grant Street’s RenewExpress software.
`
` 3
`
`

`

`Case 2:24-cv-00767 Document 1 Filed 05/24/24 Page 7 of 23
`
` 16.
`
` Grant Street’s secure e-payments service—PaymentExpress—processes for government
`
` entities over $20 billion in credit card and e-check transactions annually.
`
` 17.
`
` Grant Street is also the world’s largest internet auctioneer. To date, Grant Street has
`
` conducted online auctions of bonds, notes, tax certificates, and other financial and legal instruments
`
` for more than 6,800 government and financial entities, with a value exceeding $13 trillion.
`
` 18.
`
` Grant Street’s government clients range from Miami-Dade County, Florida to the Ohio
`
` Bureau of Motor Vehicles to the State of New Mexico to the City of San Francisco, California.
`
` 19.
`
` Grant Street’s business has been widely associated with government software solutions
`
` for nearly 30 years.
`
` 20.
`
` Grant Street is the owner of all rights, title, and interests in various valuable Marks, and
`
` Grant Street has taken steps to protect its valuable trademark rights in such Marks, including securing
`
` valid and subsisting United States Trademark Registration Nos. 6,296,368 and 6,789,890 on the
`
` Principal Register in the United States Patent and Trademark Office for the trademark GOVHUB
`
` (hereinafter “GOVHUB Marks”) shown below. Attached as Exhibit A are true and correct copies of
`
` the registration certificates for the GOVHUB Marks from the United States Patent and Trademark
`
` Office.
`
` Marks
`
` Reg. No.
`
` Reg. Date
`
` GOVHUB
`
` 6,296,368
`
` Mar. 16, 2021
`
` First Use
` Date
` Nov. 9, 2020
`
` Services
`
` IC 042 - Providing on-line
` non-downloadable software for use
` in the field of government
` operations and administration for
` performing financial transactions,
` business administration,
` communication and messaging,
` invoicing, payment processing, data
` management, personnel
` management, asset management
`
` 4
`
`

`

`Case 2:24-cv-00767 Document 1 Filed 05/24/24 Page 8 of 23
`
` GOVHUB
`
` 6,789,890
`
` Jul. 12, 2022
`
` Apr. 6, 2022
`
` and distribution, and contractor
` management
` IC 036 - Providing an Internet
` website portal for supporting
` government services, namely,
` providing an Internet website portal
` for government entities to process
` credit card, debit card, ACH, and
` tax payments; providing an Internet
` website portal for supporting
` government services, namely,
` providing an Internet website portal
` for government entities to verify
` payments
`
` 21.
`
` Grant Street also owns https://www.govhub.com/ (the “GOVHUB Domain Name”),
`
` which it acquired in 2018.
`
` 22.
`
` Beginning with the acquisition of the GOVHUB Domain Name and the filing of Grant
`
` Street’s first GOVHUB trademark application in 2018, Grant Street initiated a project to improve its
`
` public websites to streamline the workflow for users and to expand the services that it provides to
`
` those users.
`
` Through this project, Grant Street has set up over 100 domains and sub-domains that
`
` either include the trademark GOVHUB within the domain/sub-domain name and/or on a web page
`
` associated with the domain name. ( See, e.g. , govhub.com/sacramento , a screenshot of which is
`
` attached hereto as Exhibit C)
`
` 23.
`
` Through these domains and sub-domains Grant Street provides the public with the
`
` ability to access various government-related services via “one-stop shopping”. Defendant’s illegal use
`
` of Grant Street’s trademarks will interfere with its ability to provide these services, causing confusion
`
` and the erosion of substantial goodwill.
`
` 5
`
`

`

`Case 2:24-cv-00767 Document 1 Filed 05/24/24 Page 9 of 23
`
` ILLEGAL ACTS OF DEFENDANT
`
` 24.
`
` Despite Grant Street’s long standing prior trademark rights, valid, subsisting, and
`
` incontestable trademark registrations, and other related longstanding prior rights in Grant Streets
`
` GOVHUB Marks, Defendant has recently started using the identical mark GOVHUB for services
`
` which are the same as or closely related to those services that have been provided by Grant Street
`
` under Grant Street’s GOVHUB Marks prior to Defendant’s first use of such mark.
`
` 25.
`
` Additionally, Defendant has recently started using the confusingly similar THE GOV
`
` HUB for services which are the same as or closely related to those services that have been provided by
`
` Grant Street under Grant Street’s GOVHUB Marks prior to Defendant’s first use of such mark.
`
` 26.
`
` Upon information and belief, Defendant registered the domain name gov-hub.com on or
`
` about November 11, 2021, seven months after Grant Street obtained U.S. Trademark No. 6,296,368
`
` and over one year after Grant Street’s date of first use. ( See Exhibit D, a screenshot of
`
` www.godaddy.com/whois/results.aspx?itc=dlp_domain_whois&domain=gov-hub.com). Further, Grant
`
` Street applied for that registration in late 2018, so that Grant Street’s priority date is nearly three years
`
` before Defendant registered its domain name.
`
` 27.
`
` Through the gov-hub.com domain, Defendant has set up a webpage that advertises
`
` services under the trademark GOVHUB, which is legally identical to Grant Street’s GOVHUB Marks.
`
` 28.
`
` Upon information and belief, Defendant formed the limited liability company GovHub
`
` LLC on or about November 21, 2021, seven months after Grant Street obtained U.S. Trademark No.
`
` 6,296,368 and over one year after Grant Street’s date of first use. Further, Grant Street applied for that
`
` registration in late 2018, so that Grant Street’s priority date is nearly three years before Defendant
`
` formed its limited liability company. ( See Ex. A, demonstrating Grant’s Street’s December 2018
`
` application for the GOVHUB Mark).
`
` 6
`
`

`

`Case 2:24-cv-00767 Document 1 Filed 05/24/24 Page 10 of 23
`
` 29.
`
` In addition to using a legally identical version of Grant Street’s registered GOVHUB
`
` Mark, Defendant has further started using and are applying for federal registration of the marks
`
` GOVHUB and THE GOV HUB, despite Grant Street’s long standing prior trademark rights in
`
` GOVHUB as set forth herein.
`
` 30.
`
` 31.
`
` Grant Street has opposed both of Defendant’s federal trademark applications.
`
` Defendant’s use of GOVHUB and/or THE GOV HUB as used, advertised, promoted,
`
` marketed, and/or applied for by the Defendant is hereinafter, collectively, referred to as the “Infringing
`
` Mark”.
`
` 32.
`
` The Infringing Mark contains an identical term, i.e. “GovHub” and/or “Gov Hub”, and
`
` is either presented as an infringing word mark or in combination with simple design elements to
`
` provide services relating to contractual relationships with federal, state and local governments, which
`
` do not distinguish Defendant’s Infringing Mark from Grant Street’s GOVHUB Mark. Instead,
`
` Defendant’s prominent use of such identical or confusingly similar terms suggests that goods or
`
` services provided under the Infringing Mark are authorized, sponsored, endorsed, or licensed by Grant
`
` Street, or are otherwise connected with Grant Street.
`
` 33.
`
` Indeed, there is substantial overlap between Grant Street’s description of its services,
`
` i.e. “on-line non-downloadable software for use in the field of government operations and
`
` administration for performing financial transactions, business administration, communication and
`
` messaging,
`
` invoicing,
`
` payment
`
` processing,
`
` data
`
` management,
`
` personnel
`
` management,
`
` asset
`
` management and distribution, and contractor management” and those Defendant says it provides, i.e.
`
` the “advice and assistance to commercial entities relating to the establishment and maintenance of
`
` business and contractual relationships with federal, state and local governments”. ( See Defendant’s
`
` Apr. 20, 2023 U.S. Trademark Application No. 97-179,061).
`
` 7
`
`

`

`Case 2:24-cv-00767 Document 1 Filed 05/24/24 Page 11 of 23
`
` 34.
`
` Defendant’s
`
` website
`
` also
`
` states
`
` that
`
` “Government
`
` Customers
`
` have
`
` complex
`
` requirements, and Industry Solutions Providers have premier solutions.
`
` Our GovHub experts
`
` understand both.” This likewise substantially overlaps with the services Grant Street provides.
`
` 35.
`
` Defendant’s use and application for registration of the Infringing Mark, which is
`
` identical or confusingly similar to Grant Street’s GOVHUB Mark in which the Plaintiff holds long
`
` standing federally-protected rights, is likely to confuse or deceive relevant members of the public and
`
` trade into mistakenly believing that Defendant is affiliated or associated with Grant Street, or that
`
` Grant Street somehow sponsors or endorses Defendant’s goods or services when th