Common Law Trademark Infringement, Common Law Unfair Competition, False Designation of Origin, Federal Trademark Infringement, Federal Unfair Competition, Holly A. Brady, Susan L. Collins
Giant Eagle is the owner of GETGO® convenience stores, with 269 locations, including four (4) stores in Fort Wayne, Indiana that were opened in 2018. Giant Eagle owns several U.S. trademark registrations for GETGO, claiming a date of first use of March 2003 for “Convenience store services, including fuel.”
The Defendants are the owners of three (3) retail convenience stores named GET 2 GO in Fort Wayne, Indiana. The Defendants own two U.S. trademark registrations for the GET 2 GO trademark, claiming a date of first use of June 2011. The Plaintiff has contemporaneously filed a Petition for Cancellation (see below) against the Defendants’ registrations.
The Plaintiffs sent communications to Defendants via counsel in February 2020 and April 2021. Per the Complaint (below), “Defendants, through counsel, indicated that they were ”simply not interested” in a business resolution or in discontinuing the use of the Infringing Marks.”
The Complaint doesn’t mention any instances of actual confusion.
Given the decade-long use of their own trademarks, coexisting peacefully with apparently no instances of consumer confusion, I’m not surprised that the Defendants have opted to stand their ground and not change their name. I’ll be interested to see the affirmative defenses and possibly counterclaims in the Defendants’ Answer. Stay tuned for updates on both the lawsuit and the cancellation proceeding.
Phoenix Intangibles Holding Company et al vs. Virk Brothers, LLC et al
Case Number: 1:21-cv-00263-HAB-SLC
File Date: Friday, July 9, 2021
Plaintiff: Phoenix Intangibles Holding Company, Giant Eagle, Inc.
Plaintiff Counsel: Anthony M. Eleftheri of Drewry Simmons Vornehm, LLC
Defendant: Virk Brothers, LLC, Charanjit Singh
Cause: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, Common Law Unfair Competition, Common Law Trademark Infringement
Court: Northern District of Indiana
Judge: Holly A. Brady
Referred To: Susan L. Collins
Petition for Cancellation: