Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1153210
`08/13/2021
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92077459
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Virk Brothers, LLC
`
`AMANDA K. LANDIS
`CARSON LLP
`301 W. JEFFERSON BLVD., STE. 200
`FORT WAYNE, IN 46802
`UNITED STATES
`Primary Email: landis@carsonllp.com
`Secondary Email(s): tmteam@carsonllp.com, martinez@carsonllp.com
`2604239411
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Motion to Reopen
`
`Amanda K. Landis
`
`landis@carsonllp.com
`
`/Amanda K. Landis/
`
`08/13/2021
`
`Attachments
`
`Motion to Reopen Time and Motion to Suspend for Civil Action.pdf(325291 bytes
`
`) M
`
`otion to Reopen Time - Exhibit A.pdf(931124 bytes )
`Motion to Reopen Time - Exhibit B.pdf(131529 bytes )
`
`

`

`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Petitioner,
`
`
`
`PHOENIX INTANGIBLES HOLDING
`COMPANY
`
`
`
`v.
`
`
`
`
`VIRK BROTHERS, LLC,
`
`
`
`
`
`
`Respondent.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Cancellation No. 92077459
`Registration Nos. 5040314 and 5040321
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`RESPONDENT’S MOTION TO REOPEN TIME AND MOTION TO SUSPEND FOR CIVIL
`
`ACTION
`
`
`
`Virk Brothers, LLC (“Virk Brothers”), by and through its attorneys, Carson LLP, requests
`
`that the Trademark Trial and Appeal Board reopen the time for Virk Brothers to file an Answer
`
`in this proceeding and subsequently suspend the proceeding based on a pending civil action.
`
`Motion to Reopen Time
`
`1.
`
`On June 25, 2021, Phoenix Intangibles Holding Company (“Phoenix”) filed its
`
`Petition for Cancellation (“Petition”) of Virk Brothers’ registered trademarks under U.S.
`
`Registration Nos. 5040314 and 5040321.
`
`2.
`
`Phoenix indicated on the Certificate of Service for its Petition that the Trademark
`
`Trial and Appeal Board shall notify Virk Brothers of the proceeding by mailing a copy to 6901
`
`Endicott Dr., Fort Wayne, Indiana 46845 and email a copy to smith@carsonllp.com and
`
`IPTeam@carsonllp.com.
`
`3.
`
`Virk Brothers is no longer located at 6901 Endicott Dr., Fort Wayne, Indiana 46845,
`
`and therefore did not receive a copy of the Petition.
`
`
`
`1
`
`

`

`
`
`
`
`46808.
`
`4.
`
`Virk Brothers is now located at 3212 North Wells Street, Fort Wayne, Indiana
`
`5.
`
`A copy of the Petition was never emailed to smith@carsonllp.com or
`
`IPTeam@carsonllp.com.
`
`6.
`
`The original Time to Answer set forth by the Trademark Trial and Appeal Board
`
`was set for August 7, 2021, which fell on a Saturday. Therefore, the Time to Answer was due by
`
`August 9, 2021.
`
`7.
`
`8.
`
`A Motion for Default Judgment is not pending in this proceeding.
`
`Pursuant to TBMP § 509.01(b)(1), Virk Brothers hereby requests that the time be
`
`reopened for Virk Brothers to answer Phoenix’s Petition.
`
`9.
`
`There will be no prejudice to Phoenix because the delay has not resulted in a loss
`
`or unavailability of evidence or witnesses that otherwise would have been available to Phoenix.
`
`10.
`
`There will be no prejudice to Phoenix because this proceeding should have been
`
`suspended on July 9, 2021 or shortly thereafter, upon proper notification of the pending civil
`
`action, which is provided infra, by which Virk Brothers’ time to answer would have also been
`
`suspended.
`
`11.
`
`The length of the delay will have no impact on judicial proceedings because Virk
`
`Brothers is filing this Motion to Reopen merely four (4) days after the Time to Answer expired.
`
`12.
`
`The delay occurred because Virk Brothers and its counsel did not receive a copy
`
`of the Petition and therefore were not aware an Answer was due.
`
`13.
`
`On August 12, 2021, Virk Brothers’ counsel reached out to Phoenix’s counsel
`
`seeking consent to file this Motion. Phoenix’s counsel has been unresponsive.
`
`
`
`
`
`
`
`2
`
`

`

`
`
`
`
`Motion to Suspend for Civil Action
`
`14.
`
`On July 9, 2021, Phoenix filed a civil action regarding the trademark registrations
`
`at issue in the United States District Court, Northern District of Indiana, Fort Wayne Division
`
`under case number 1:21-cv-00263-HAB-SLC (attached hereto as “Exhibit A”). Form AO 120,
`
`Report on the Filing or Determination of an Action Regarding a Patent or Trademark, was not
`
`filed at this time.
`
`15.
`
`On August 13, 2021, After Virk Brothers’ counsel reached out to Phoenix’s counsel
`
`on August 12, 2021, Phoenix’s counsel filed a Notice of Filing Form AO 120 with the United States
`
`District Court, Northern District of Indiana, Fort Wayne Division, stating that it mailed Form AO
`
`120 to the Director of the U.S. Patent and Trademark Office on August 12, 2021 (attached hereto
`
`as “Exhibit B”).
`
`16.
`
`In the interest of efficiency, Virk Brothers hereby informs the Trademark Trial and
`
`Appeal Board of the pending civil action, and pursuant to 37 C.F.R. § 2.117(a), Virk Brothers
`
`requests that the Trademark Trial and Appeal Board suspend this proceeding until termination
`
`of the civil action.
`
`
`
`WHEREFORE, Virk Brothers requests that its Motion to Reopen Time be granted without
`
`the need for issuance of a new Conference, Discovery, Disclosure and Trial Schedule. Virk
`
`Brothers further requests that its Motion to Suspend for Civil Action be granted and this
`
`proceeding be suspended until termination of the civil action.
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`
`
`
`
`/Amanda K. Landis/
`Amanda K. Landis
`Attorney for Respondent
`CARSON LLP
`301 W. Jefferson Blvd., Suite 200
`Fort Wayne, Indiana 46802
`P. 260-423-9411 | E. landis@carsonllp.com
`
`

`

`
`
`
`
`
`
`
`Certificate of Electronic Filing
`
`
`I hereby certify that in accordance with 37 C.F.R. § 2.119, a true and correct copy of the foregoing
`Notice to Reopen Time and Notice to Suspend for Civil Action was filed electronically with the
`United States Patent and Trademark Office via the Electronic System for Trademark Trial and
`Appeals (“ESTTA”) on the date set forth below.
`
`
`Date: August 13, 2021
`
`
`
`
`
`
`
`
` /Amanda K. Landis/
`Amanda K. Landis
`
`
`
`
`
`
`
`
`
`4
`
`

`

`USDC IN/ND case 1:21-cv-00263-HAB-SLC document 1 filed 07/09/21 page 1 of 12
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTICT OF INDIANA
`FORT WAYNE DIVISION
`
`PHOENIX INTANGIBLES HOLDING
`COMPANY and GIANT EAGLE, INC.,
`
` Case No.
`
`1:21-cv-00263
`
`Plaintiffs,
`
`v.
`
`GET 2 GO, VIRK BROTHERS, LLC,
`AND CHARANJIT SINGH,
`
`Defendants.
`
`COMPLAINT
`
`Phoenix Intangibles Holding Company (“Phoenix Intangibles”) and Giant Eagle, Inc.
`
`(“Giant Eagle”) (collectively, “Plaintiffs”), by their undersigned counsel, bring this Complaint
`
`for trademark infringement and unfair competition against defendant Virk Brothers, LLC (“Virk
`
`Brothers”) and Charanjit Singh (“Singh”) (collectively, “Defendants”) as follows:
`
`PARTIES
`
`1.
`
`Phoenix Intangibles is a Delaware corporation with its principal place of business
`
`located at 2 Greenville Crossing, 4005 Kennett Pike, Suite 220, Greenville Delaware 19807.
`
`2.
`
`Giant Eagle is a regional supermarket chain with stores in Pennsylvania, Ohio,
`
`West Virginia, and Maryland, and a principal place of business located at 101 Kappa Drive,
`
`Pittsburgh, PA 15238.
`
`3.
`
`Upon information and belief, Virk Brothers is an Indiana limited liability
`
`company, with a principal office address of 3212 N. Wells Street, Fort Wayne, Indiana 46808.
`
`100484247.1
`
`

`

`USDC IN/ND case 1:21-cv-00263-HAB-SLC document 1 filed 07/09/21 page 2 of 12
`
`
`4.
`
`Upon information and belief, Singh is the owner, secretary, and registered agent
`
`of Virk Brothers, with an address at 4204 Crawford Road, Fort Wayne, Indiana 46845.
`
`JURISDICTION AND VENUE
`
`5.
`
`This action arises under the trademark and unfair competition laws of the United
`
`States and is brought pursuant to Sections 32 and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114
`
`and 1125(a), and common law.
`
`6.
`
`This Court has jurisdiction over the subject matter of this case pursuant to 15
`
`U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338(b).
`
`7.
`
`This Court has supplemental jurisdiction over the claims in this Complaint that
`
`arise under state common law pursuant to 28 U.S.C. § 1367(a) because these state law claims are
`
`so related to Plaintiffs’ claims under federal law that they form part of the same case or
`
`controversy and derive from a common nucleus of operative facts.
`
`8.
`
`This Court has personal jurisdiction over Defendants because Defendants reside
`
`and are domiciled in, and have been conducting continuous and systematic business within the
`
`State of Indiana and within the boundaries of the Northern District of Indiana by promoting,
`
`advertising, offering for sale, and providing their services. Moreover, Defendants have caused
`
`harm and committed the unlawful acts hereinafter complained of in the Northern District of
`
`Indiana.
`
`9.
`
`Venue is proper in this district pursuant to 28 U.S.C. § 1391(b).
`
`FACTS COMMON TO ALL COUNTS
`
`10.
`
`Phoenix Intangibles is an intellectual property holding company that licenses the
`
`getGo® trademark to Giant Eagle.
`
`
`
`2
`
`100484247.1
`
`

`

`USDC IN/ND case 1:21-cv-00263-HAB-SLC document 1 filed 07/09/21 page 3 of 12
`
`
`11.
`
`In turn, Giant Eagle is the owner of getGo® convenience stores. The getGo®
`
`website is www.getgocafe.com. In 2018, Giant Eagle acquired the Rickers convenience store
`
`chain and, over the course of several years, eventually rebranded those stores under the getGo®
`
`banner.
`
`12.
`
`13.
`
`This rebranding includes four (4) former Ricker’s stores in Fort Wayne, Indiana.
`
`Since at least March of 2003, Plaintiffs have used the getGo® trademark in
`
`association with convenience store services including fuel.
`
`14.
`
`In addition to their significant common law trademark rights in the getGo®
`
`trademark, Plaintiffs have sought and secured federal registration of the getGo® trademark in
`
`multiple variations, including but not limited to those appearing in the chart below (*starred
`
`registrations are now incontestable under 15 U.S.C. § 1065):
`
`Mark
`
`Goods/Services
`
`Class 35: convenience store
`services including fuel.
`Class 35: Retail convenience store
`services featuring convenience
`store items and fuel.
`Class 35: Retail convenience store
`services featuring convenience
`store items and fuel.
`Class 43: Restaurant services
`
`Reg. No./
`Serial No.
`
`2927502*
`
`4864242*
`
`4864240*
`
`4766055*
`
`GETGO
`
`GETGO
`& Design
`
`GETGO CAFE +
`MARKET
`& Design
`GETGO
`
`GETGO
`& Design
`GETGO CAFE +
`MARKET
`& Design
`GETGO
`
`GETGO
`
`
`
`Filing Date/Reg. Date
`(if applicable)
`
`January 22, 2004
`February 22, 2005
`September 24, 2014
`December 1, 2015
`
`September 24, 2014
`December 1, 2015
`
`December 8, 2014
`June 30, 2015
`December 8, 2014
`December 1, 2015
`December 8, 2014
`December 1, 2015
`
`Class 43: Restaurant services
`
`4864437
`
`Class 43: Restaurant services
`
`4864438*
`
`Class 3: Windshield washing fluid
`Class 4: Motor oil
`Class 29: Chicken; cut fruits; cut
`vegetables; soups; potato chips.
`Class 30: Sandwiches; bakery
`goods; pepperoni rolls; coffee;
`candy.
`
`Class 3: Windshield washing fluid
`
`3
`
`5037377
`
`April 10, 2015
`September 6, 2016
`
`5038064
`
`April 8, 2015
`
`100484247.1
`
`

`

`USDC IN/ND case 1:21-cv-00263-HAB-SLC document 1 filed 07/09/21 page 4 of 12
`
`
`Mark
`
`Goods/Services
`
`Reg. No./
`Serial No.
`
`Filing Date/Reg. Date
`(if applicable)
`
`5037370
`
`5991999
`
`6158214
`
`September 6, 2016
`
`April 8, 2015
`September 6, 2016
`
`August 16, 2018
`February 18, 2020
`
`March 18, 2020
`September 22, 2020
`
`6158213
`
`March 18, 2020
`September 22, 2020
`
`Class 4: Motor oil
`
`Class 29: Chicken; cut fruits; cut
`vegetables; soups.
`Class 30: Sandwiches; bakery
`goods; pepperoni rolls; coffee.
`Class 35: Retail convenience store
`services featuring convenience
`store items and fuel.
`Class 9: Magnetically encoded
`credit cards for purchases of
`gasoline and related products.
`Class 36: Credit card services,
`namely, credit card payment
`processing services for fleet
`purchases of gasoline and related
`products.
`
`Class 9: Magnetically encoded
`credit cards for purchases of
`gasoline and related products.
`Class 36: Credit card services,
`namely, credit card payment
`processing services for fleet
`purchases of gasoline and related
`products.
`
`& Design
`
`GETGO CAFE +
`MARKET
`& Design
`
`GET TO KNOW
`GETGO
`
`GETGO
`
`GETGO
`& Design
`
`
`15.
`
`A copy of the pertinent information about each registration from the U.S. Patent
`
`and Trademark Office database showing status and title is attached at Exhibit A.
`
`16.
`
`The common law and registered trademark rights referred to above are referenced
`
`herein collectively as the “getGo® Marks.” The goods and services referred to above are
`
`collectively referenced as the “getGo® Goods and Services.”
`
`17.
`
`Through the extensive, continuous use and promotion of the getGo® Marks, the
`
`getGo® Marks have become associated with getGo® convenience stores and the getGo® Goods
`
`and Services.
`
`18.
`
`As indicated above, several of the getGo® Marks have been in continuous use
`
`since at least 2003 and are now incontestable under 15 U.S.C. § 1065.
`
`
`
`4
`
`100484247.1
`
`

`

`USDC IN/ND case 1:21-cv-00263-HAB-SLC document 1 filed 07/09/21 page 5 of 12
`
`
`19.
`
`Plaintiffs have spent millions of dollars to advertise, promote and sell their
`
`services using the getGo® Marks. Based on Plaintiffs’ consistent and extensive use, the getGo®
`
`Marks have become widely and favorably known and have acquired extensive goodwill.
`
`20.
`
`Plaintiffs have currently, and at all relevant times hereto, have been the exclusive
`
`owner of all property rights in the getGo® Marks, and have licensed the getGo Marks to Giant
`
`Eagle for use in association with the getGo® Goods and Services.
`
`21.
`
`As a result of the promotion and use of the getGo® Marks in connection with the
`
`getGo® Goods and Services, the getGo® Marks and the goodwill associated therewith are of
`
`significant value to Plaintiffs.
`
`Defendants’ Infringing Marks and Discussions Between the Parties
`
`Subsequent to Plaintiffs’ acquisition of the Rickers convenience stores, Plaintiffs
`
`22.
`
`became aware of Defendants’ use of the business names and trademarks GET 2 GO in
`
`connection with three (3) retail convenience stores located in Fort Wayne, Indiana (the
`
`“Infringing Marks”).
`
`23.
`
`Upon investigation, Plaintiffs learned that Defendants are the owners of two U.S.
`
`Service Mark Registrations (Nos. 5,040,314 and 5,040,321) for the word mark “GET 2 GO.”
`
`Contemporaneous with this filing, Phoenix Intangibles has filed a Petition for Cancellation of the
`
`Infringing Marks with the United States Patent and Trademark Office-Trademark Trial and
`
`Appeal Board, at Cancellation Proceeding No. 92077459.
`
`24.
`
`Defendants’ use of its service mark GET 2 GO in its trading area is likely to cause
`
`and may have already caused consumer confusion with Plaintiffs’ long-established rights in its
`
`getGo® Marks for use in association with getGo® Goods and Services.
`
`
`
`5
`
`100484247.1
`
`

`

`USDC IN/ND case 1:21-cv-00263-HAB-SLC document 1 filed 07/09/21 page 6 of 12
`
`
`25.
`
`In February of 2020 and again in April of 2021, Plaintiffs, through counsel,
`
`reached out to Defendants, putting them on notice of Plaintiffs’ rights to the getGo®Marks and
`
`requesting that Defendants agree to a reasonable phase out period for the use of the GET 2 GO
`
`marks.
`
`26.
`
`Notwithstanding Plaintiffs’ efforts to facilitate a business solution to resolve the
`
`likely customer confusion that would result due to the proximity of the getGo® Fort Wayne
`
`locations to the locations of Defendants’ GET 2 GO locations, a business solution could not be
`
`reached.
`
`27.
`
`Defendants, through counsel, indicated that they were “simply not interested” in a
`
`business resolution or in discontinuing the use of the Infringing Marks.
`
`Defendants’ Current Infringement
`
`28.
`
`As of the date of the filing of this Complaint, Defendants have failed to cease use
`
`of the Infringing Marks.
`
`29.
`
`Defendants continue to advertise and promote their services through various
`
`mediums, including Facebook.
`
`30.
`
`Defendants’ adoption and continued use of the Infringing Marks is a clear and
`
`willful attempt to trade on Plaintiffs’ rights to the getGo® Marks and the goodwill symbolized
`
`thereby.
`
`31.
`
`Defendants’ advertising and marketing materials infringe upon the getGo® Marks
`
`and suggest a false connection or association with Plaintiffs.
`
`32.
`
`The goods and services offered by Defendants directly compete with those sold
`
`by Plaintiffs under the getGo® Marks, and the goods and services are sold through overlapping
`
`channels of trade.
`
`
`
`6
`
`100484247.1
`
`

`

`USDC IN/ND case 1:21-cv-00263-HAB-SLC document 1 filed 07/09/21 page 7 of 12
`
`
`33.
`
`Defendants do not have the authorization or consent of Plaintiffs to use the
`
`Infringing Marks or the getGo® Marks in any capacity.
`
`34.
`
`Defendants’ use of the Infringing Marks are likely to cause confusion, to cause
`
`mistake, and/or to deceive consumers as to the affiliation, connection, and association of
`
`Defendants with Plaintiffs’ getGo® properties, and as to the origin, sponsorship, and approval of
`
`Defendants’ services and commercial activities by Plaintiffs.
`
`COUNT I
`FEDERAL TRADEMARK INFRINGEMENT
`(LANHAM ACT, 15 U.S.C. § 1114)
`
`Plaintiffs restate the preceding paragraphs as if fully incorporated herein.
`
`Phoenix Intangibles owns all right, title and interest in and to the getGo® Marks
`
`35.
`
`36.
`
`and holds federal registrations for the getGo® mark. Phoenix Intangibles is the senior registrant
`
`of the getGo® Marks and Giant Eagle, as licensee, is the senior user. Plaintiffs have the right to
`
`enforce the getGo® Marks.
`
`37.
`
`Defendants’ use of the Infringing Marks in connection with the promotion,
`
`advertising, provision, sale, and offering for sale of its services and operation of Defendants and
`
`their services is likely to confuse, mislead, or deceive consumers and the relevant public as to the
`
`origin, source, sponsorship, or affiliation of said services with Plaintiffs and/or Plaintiffs’
`
`getGo® locations, and is intended and is likely to cause such parties to believe in error that the
`
`Defendants’ services have been authorized, sponsored, approved, endorsed, or licensed by
`
`Plaintiffs or getGo®, or that Defendants are in some way related to or affiliated with Plaintiffs or
`
`getGo®.
`
`
`
`7
`
`100484247.1
`
`

`

`USDC IN/ND case 1:21-cv-00263-HAB-SLC document 1 filed 07/09/21 page 8 of 12
`
`
`38.
`
`Defendants’ activities, as described herein, constitute infringement of the
`
`registered getGo® Marks in violation of the Lanham Act, including, but not limited to, 15 U.S.C.
`
`§ 1114.
`
`39.
`
`Defendants’ use of the Infringing Marks with the promotion, advertising, and
`
`provision of their services has been and continues to be willful, deliberate, unfair, false,
`
`deceptive, and is intended to trade upon the goodwill and reputation appurtenant to Plaintiffs’
`
`registered getGo® Marks.
`
`40.
`
`41.
`
`Defendants’ actions have damaged and will continue to damage Plaintiffs.
`
`As a result of these wrongful acts, Plaintiffs are entitled to injunctive relief
`
`prohibiting Defendants from using the Infringing Marks or any variation thereof, or any other
`
`trademarks confusingly similar to Plaintiffs’ registered getGo® Marks, in accordance with 15
`
`U.S.C. § 1116, and to recover all damages that Plaintiffs has sustained and will sustain, and all
`
`gains, profits, and advantages obtained by Defendants as a result of their infringing acts in an
`
`amount not yet known, as well as the costs of this action, pursuant to 15 U.S.C. § 1117(a).
`
`42.
`
`This is an exceptional case justifying the award of attorneys’ fees under Section
`
`1117(a).
`
`43.
`
`44.
`
`COUNT II
`FEDERAL UNFAIR COMPETITION AND
`FALSE DESIGNATION OF ORIGIN
`(LANHAM ACT, 15 U.S.C. § 1125(A))
`
`Plaintiffs restate the preceding paragraphs as if fully incorporated herein.
`
`Defendants’ conduct complained of herein constitutes federal unfair competition
`
`and false designation of origin pursuant to 15 U.S.C. § 1125(a).
`
`45.
`
`Defendants’ intentional and unlawful use in commerce of the Infringing Marks is
`
`likely to cause confusion, mistake, or deception as to the origin, sponsorship, or approval of
`
`
`
`8
`
`100484247.1
`
`

`

`USDC IN/ND case 1:21-cv-00263-HAB-SLC document 1 filed 07/09/21 page 9 of 12
`
`
`Defendants’ services by Plaintiffs and therefore constitutes false designation of origin in
`
`violation of 15 U.S.C. § 1125(a).
`
`46.
`
`As a direct and proximate result of Defendants’ knowing, deliberate, and willful
`
`infringement of the getGo® Marks, Plaintiffs have suffered and will continue to suffer harm to
`
`their business, reputation, and goodwill.
`
`47.
`
`As a result of these wrongful acts, Plaintiffs are entitled to injunctive relief
`
`prohibiting Defendants from using the Infringing Marks and any other marks confusingly similar
`
`to the getGo® Marks, in accordance with 15 U.S.C. § 1116, and to recover all damages that
`
`Plaintiffs have sustained and will sustain, and all gains, profits, and advantages obtained by
`
`Defendants as a result of their infringing acts in an amount not yet known, as well as the costs of
`
`this action, pursuant to 15 U.S.C. § 1117(a).
`
`48.
`
`This is an exceptional case justifying the award of attorneys’ fees under Section
`
`1117(a).
`
`49.
`
`50.
`
`COUNT III
`COMMON LAW UNFAIR COMPETITION
`AND TRADEMARK INFRINGEMENT
`
`Plaintiffs restate the preceding paragraphs as if fully incorporated herein.
`
`Phoenix Intangibles is the owner and senior nationwide user and registrant of the
`
`getGo® Marks. Phoenix Intangibles is the senior registrant of the getGo® Marks and Giant
`
`Eagle, as licensee, is the senior user. Plaintiffs have the right to enforce the getGo® Marks.
`
`51.
`
`Defendants are not authorized to use the getGo® Marks or any variation thereof,
`
`or any mark confusingly similar to the getGo® Marks.
`
`52.
`
`The getGo® Marks are inherently distinctive.
`
`
`
`9
`
`100484247.1
`
`

`

`USDC IN/ND case 1:21-cv-00263-HAB-SLC document 1 filed 07/09/21 page 10 of 12
`
`
`53.
`
`Defendants have sold, promoted, and offered for sale their products and services
`
`using the Infringing Marks in violation of and with knowledge of Plaintiffs’ rights to the getGo®
`
`Marks for the purpose of trading upon Plaintiffs’ goodwill and reputation.
`
`54.
`
`Defendants’ use of the Infringing Marks constitutes a willful and intentional
`
`infringement of Plaintiffs’ common law trademark rights in the getGo® Marks and is likely to
`
`cause confusion, mistake, and deception as to source, affiliation, or sponsorship with Plaintiffs
`
`and/or getGo®.
`
`55.
`
`56.
`
`Plaintiffs have been harmed by Defendants’ wrongful acts.
`
`Plaintiffs are entitled to injunctive relief, recovery of Defendants’ profits, actual
`
`damages, treble profits and damages, costs, and reasonable attorneys’ fees.
`
`WHEREFORE, Phoenix Intangibles and Giant Eagle pray the Court enter judgment in its
`
`favor and against Defendants as follows:
`
`1.
`
`
`
`The issuance of a permanent injunction enjoining and restraining Defendants, their
`associates, agents, servants, employees, officers, members, directors, representatives,
`successors, assigns, attorneys and all persons in active concert or participation with it
`who learn of the injunction through personal service or otherwise:
`
`a.
`
`from using the Infringing Marks, the getGo® Marks, or any marks confusingly
`similar to the getGo® Marks, including but not limited to, as part of a company
`name, domain name, social media account name, or in connection with the
`marketing and sale of any product or service;
`
`from claiming, representing, suggesting, or implying that Defendants’ services are
`in any way sponsored by or associated with Plaintiffs or getGo®;
`
`from representing by words or conduct that Defendants or its services are
`authorized, sponsored, endorsed, or otherwise connected with Plaintiffs or
`getGo®;
`
`from engaging in any other conduct which causes, or is likely to cause, confusion,
`mistake, deception, or misunderstanding as to the source, affiliation, connection
`or association of Defendants or Defendants’ services with Plaintiffs or getGo®.
`
`
`b.
`
`c.
`
`d.
`
`10
`
`100484247.1
`
`

`

`USDC IN/ND case 1:21-cv-00263-HAB-SLC document 1 filed 07/09/21 page 11 of 12
`
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`
`
`b.
`
`c.
`
`An accounting and judgment against Defendants and all others acting concert with them,
`for:
`
`a.
`
`all profits received from the sale of goods or services by Defendants in
`association with the use of the Infringing Marks or any other infringement of the
`getGo® Marks;
`
`damages sustained by Plaintiffs on account of Defendants’ trademark
`infringement, unfair competition, and false designation of origin;
`
`treble damages, where appropriate; and punitive damages to deter such actions in
`the future.
`
`An enhancement of damages to a sum not exceeding three (3) times the profits earned by
`Defendants as a result of their willful and improper use of marks confusingly similar to
`the marks of Plaintiffs.
`
`Damages under 15 U.S.C. § 1117.
`
`Plaintiffs’ costs of this suit, including reasonable attorneys’ fees and expenses, including
`all fees and costs incurred in the collection and enforcement of any judgment
`subsequently obtained, with interest pursuant to 15 U.S.C. § 1117.
`
`All other just and proper relief.
`
`
`
`
`
`Respectfully submitted,
`
`
`s/Anthony M. Eleftheri
`Anthony M. Eleftheri (IN 19336-49)
`DREWRY SIMMONS VORNEHM, LLP
`736 Hanover Place, Suite 200
`Carmel, IN 46032
`(317) 580-4848
`(317) 580-4855 (fax)
`aeleftheri@dsvlaw.com
`
`
`Pro Hac Vice Applications Forthcoming
`
`Christopher R. Opalinski, Esq.
`Pa. I.D. No. 35267
`Audrey K. Kwak, Esq.
`Pa. I.D. No. 200527
`David V. Radack, Esq.
`Pa. I.D. No. 39633
`
`
`11
`
`100484247.1
`
`

`

`USDC IN/ND case 1:21-cv-00263-HAB-SLC document 1 filed 07/09/21 page 12 of 12
`
`
`ECKERT SEAMANS CHERIN & MELLOTT, LLC
`600 Grant Street, 44th Floor
`Pittsburgh, PA 15219
`Phone: 412-566-6000
`copalinski@eckertseamans.com
`akwak@eckertseamans.com
`dradack@eckertseamans.com
`
`Jenna P. Torres, Esq.
`Pa. I.D. No. 318968
`ECKERT SEAMANS CHERIN & MELLOTT, LLC
`Two Liberty Place
`50 S. 16th Street, 22nd Floor
`Philadelphia, PA 19102
`(215) 851-8400
`jtorres@eckertseamans.com
`
`Attorneys for Plaintiffs,
`Phoenix Intangibles Holding Company and
`Giant Eagle, Inc.
`
`
`
`Dated: July 9, 2021
`
`
`
`12
`
`100484247.1
`
`

`

`USDC IN/ND case 1:21-cv-00263-HAB-SLC document 1-1 filed 07/09/21 page 1 of 43
`
`EXHIBIT A
`
`
`
`
`
`

`

`USDC IN/ND case 1:21-cv-00263-HAB-SLC document 1-1 filed 07/09/21 page 2 of 43
`
`Generated on: This page was generated by TSDR on 2021-07-02 10:08:47 EDT
`
`Mark: GETGO
`
`US Serial Number: 76572152
`
`US Registration
`Number:
`
`2927502
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Status: The registration has been renewed.
`
`Status Date: Mar. 19, 2014
`
`Publication Date: Nov. 30, 2004
`
` 
`
`Application Filing
`Date:
`
`Jan. 22, 2004
`
`Registration Date: Feb. 22, 2005
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Mark Information
`
`Mark Literal
`Elements:
`
`GETGO
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Related Properties Information
`
`Claimed Ownership
`of US
`Registrations:
`
`2814781
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Convenience store services, including fuel
`
`International
`Class(es):
`
`035 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 100, 101, 102
`
`First Use: Mar. 10, 2003
`
`Use in Commerce: Mar. 10, 2003
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`

`

`USDC IN/ND case 1:21-cv-00263-HAB-SLC document 1-1 filed 07/09/21 page 3 of 43
`
`Filed No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: PHOENIX INTANGIBLES HOLDING COMPANY
`
`Owner Address: Two Greenville Crossing
`4005 Kennett Pike, Suite 220
`Greenville, DELAWARE UNITED STATES 19807
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney Name: DAVID V. RADACK
`
`Docket Number: 076021-00443
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`dradack@eckertseamans.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`DAVID V. RADACK
`ECKERT SEAMANS CHERIN & MELLOTT, LLC
`600 GRANT STREET, 44TH FLOOR
`U.S. STEEL TOWER
`PITTSBURGH, PENNSYLVANIA UNITED STATES 15219
`
`Phone: 412-566-6777
`
`Fax: 412-566-6099
`
`Correspondent e-
`mail:
`
`dradack@eckertseamans.com ipmail@eckertsea
`mans.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Mar. 19, 2014
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Mar. 19, 2014
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`Mar. 19, 2014
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Feb. 26, 2014
`
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`
`Mar. 19, 2014
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Feb. 26, 2014
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Feb. 26, 2014
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Mar. 08, 2010
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Mar. 08, 2010
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Feb. 22, 2010
`
`TEAS SECTION 8 & 15 RECEIVED
`
`Feb. 22, 2005
`
`REGISTERED-PRINCIPAL REGISTER
`
`Nov. 30, 2004
`
`PUBLISHED FOR OPPOSITION
`
`Nov. 10, 2004
`
`NOTICE OF PUBLICATION
`
`Sep. 30, 2004
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`Sep. 22, 2004
`
`ASSIGNED TO LIE
`
`Sep. 11, 2004
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Sep. 09, 2004
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`Aug. 27, 2004
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Sep. 09, 2004
`
`AMENDMENT FROM APPLICANT ENTERED
`
`Aug. 27, 2004
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Aug. 27, 2004
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`Aug. 13, 2004
`
`NON-FINAL ACTION MAILED
`
`Aug. 12, 2004
`
`ASSIGNED TO EXAMINER
`
`Feb. 11, 2004
`
`NEW APPLICATION ENTERED IN TRAM
`TM Staff and Location Information
`
`TM Staff Information - None
`
`Proceeding
`Number
`
`76533
`
`76533
`
`76533
`
`76533
`
`69934
`
`69934
`
`78413
`
`78413
`
`65864
`
`65864
`
`65864
`
`65864
`
`73708
`
`

`

`USDC IN/ND case 1:21-cv-00263-HAB-SLC document 1-1 filed 07/09/21 page 4 of 43
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Mar. 19, 2014
`
`File Location
`
`Proceedings
`
`Summary
`
`Number of
`Proceedings:
`
`1
`
`Proceeding
`Number:
`
`92077459
`
`Status: Pending
`
`Interlocutory
`Attorney:
`
`ELIZABETH WINTER
`
`Type of Proceeding: Cancellation
`
` 
`
`Filing Date: Jun 25, 2021
`
`Status Date: Jun 28, 2021
`
`Defendant
`
`Name: Virk Brothers, LLC
`
`Correspondent
`Address:
`
`VIRK BROTHERS, LLC
`6901 ENDICOTT DR.
`FORT WAYNE IN UNITED STATES , 46845
`
`Associated marks
`
`Mark
`
`GET 2 GO
`
`GET 2 GO
`
`Application Status
`
`Cancellation Pending
`
`Cancellation Pending
`
`Plaintiff(s)
`
`Serial
`Number
`
`86891530
`
`86891663
`
`Registration
`Number
`
`5040314
`
`5040321
`
`Name: Phoenix Intangibles Holding Company
`
`Correspondent
`Address:
`
`DAVID V. RADACK
`ECKERT SEAMANS CHERIN & MELLOTT, LLC
`600 GRANT STREET, 44TH FLOOR, U.S. STEEL TOWER
`PITTSBURGH PA UNITED STATES , 15219
`
`Correspondent e-
`mail:
`
`dradack@eckertseamans.com , ipmail@eckertseamans.com , jtorres@eckertseamans.com , akwak@eckertseamans.com , copalinski
`@eckertseamans.com
`
`Associated marks
`
`Mark
`
`GETGO FROM GIANT EAGLE
`
`GETGO
`
`GETGO
`
`GETGO
`
`GETGO CAFE + MARKET
`
`GETGO CAFE + MARKET
`
`GETGO
`
`GETGO
`
`GETGO CAFE + MARKET
`
`GETGO
`
`Application Status
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`Registered
`
`Section 8 and 15 - Accepted and Acknowledged
`
`Section 8 and 15 - Accepted and Acknowledged
`
`Section 8 and 15 - Accepted and Acknowledged
`
`Section 8 and 15 - Accepted and Acknowledged
`
`Registered
`
`Registered
`
`Registered
`
`Prosecution History
`
`Serial
`Number
`
`Registration
`Number
`
`76501603
`
`76572152
`
`86473842
`
`86404569
`
`86404534
`
`86473885
`
`86473694
`
`86593175
`
`86590615
`
`86979508
`
`2814781
`
`2927502
`
`4864437
`
`4864242
`
`4864240
`
`4864438
`
`4766055
`
`5037377
`
`5037370
`
`5038064
`
`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TR