Indiana Intellectual Property Law News
Ft. Wayne, Indiana – Phoenix Intangibles Holding Company apparently licenses the getGo® trademark to Giant Eagle, Inc. (together with Phoenix “Giant Eagle” or “Plaintiffs”) for its use in connection with its getGo® Convenience Stores. According to the Complaint, Giant Eagle acquired the Rickers convenience store chain in 2018 and eventually rebranded those stores under the getGo® marks. The acquired stores allegedly include four former Rickers stores in Fort Wayne, Indiana.
Per the Complaint, Plaintiffs have used the getGo® trademark since at least March 2013 and have sought and secured federal trademark registrations for various getGo® trademarks and logos as set forth below (the “getGo® Marks”).
| Mark | U.S. Registration No. |
| GETGO | 2,927,502 |
 |
4,864,242 |
 |
4,864,240 |
| getGo | 4,766,055 |
|
4,864,437 |
|
4,864,438 |
| getGo | 5,037,377 |
|
5,038,064 |
|
5,037,370 |
| Get To Know GetGo | 5,991,999 |
| getGo | 6,158,214 |
|
6,158,213 |
Because several of the getGo® Marks have been in use continuously since at least 2003, and Plaintiffs apparently complied with all further requirements, they are incontestable under 15 U.S.C. § 1065. Further, Giant Eagle claims it has spent millions of dollars to advertise and promote its services using the getGo® Marks.
After acquiring the Fort Wayne Rickers stores, Plaintiffs apparently became aware of Defendants’, Get 2 Go, Virk Brothers, LLC, and Charanjit Singh, use of the name and trademarks GET 2 GO in connection with three retail convenience stores in Fort Wayne (the “Infringing Marks”). Upon investigation, Plaintiffs claim they discovered Defendants own two U.S. Service Mark Registrations, Nos. 5,040,314 and 5,040,321 for the mark “GET 2 GO.” Plaintiffs have also apparently filed a Petition for Cancellation of the Infringing Marks with the U.S. Trademark Trial and Appeal Board under Cancellation Proceeding No. 92077459.
Plaintiffs claim they reached out to Defendants to inform them of the getGo® Marks in February 2020 and April 2021. However, it does not appear a resolution could be reached between the parties and in fact, Plaintiffs claim the Defendants indicated they were “simply not interested” in a resolution or discontinuing use of the allegedly Infringing Marks. Because the Defendants have not ceased their allegedly infringing actions, Plaintiffs are seeking damages for federal trademark infringement in violation of 15 U.S.C. § 1114. Plaintiffs are further claiming Defendants’ actions constitute unfair competition and false designation of origin in violation of 15 U.S.C. § 1125(a). Finally, Plaintiffs are seeking damages for common law unfair competition and trademark infringement.
The case was assigned to Judge Holly A Brady and Magistrate Judge Susan L. Collins in the Northern District of Indiana and assigned Case No. 1:21-cv-00263-HAB-SLC.