Virk Brothers Answer

USDC IN/ND case 1:21-cv-00263-HAB-SLC document 24 filed 09/02/21 page 1 of 22
UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF INDIANA
FORT WAYNE DIVISION
PHOENIX INTANGIBLES HOLDING )

COMPANY and GIANT EAGLE, INC., )
)
Plaintiffs, )
)
vs. ) Case No.: 1:21-CV-263-HAB-SLC
)
VIRK BROTHERS, LLC and )
CHARANJIT SINGH, )
)
Defendants. )
DEFENDANTS VIRK BROTHERS, LLC AND CHARANJIT SINGH S

ANSWER TO PLAINTIFFS AMENDED COMPLAINT
C D ,V B , LLC ( V B ) C S
( S ) ( D ), , A P
Amended Complaint, allege and say 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.
ANSWER: Defendants are without sufficient information to admit or deny the
P 1 P Amended Complaint and, therefore,
deny the same.

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.
allegations P 2 P Amended Complaint and, therefore,
deny the same.
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.
ANSWER: Defendants admit the allegations of rhetorical Paragraph 3 of
P Amended Complaint.
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.
ANSWER: Defendants admit that Singh is a member and registered agent of Virk
Brothers. Defendants deny the remaining allegations of rhetorical Paragraph 4 of
2
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).
Plain Amended Complaint.
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 P w 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
3
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.
ANSWER: P 8 P
Amended Complaint, Defendants admit they are subject to personal jurisdiction in this
Court. Defendants deny the remaining allegations set forth in rhetorical Paragraph 8 of
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.
deny the same.
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.
4
deny the same.
12. T (4) R F ,
Indiana.
deny the same.
13. Since at least March of 2003, Plaintiffs have used the getGo® trademark in
association with convenience store services including fuel.
deny the same.
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):
5
Filing Date/Reg.
Reg. No./
Mark Goods/Services Date
Serial No.
(if applicable)
Class 35: convenience
store January 22, 2004
GETGO 2927502*
services including February 22, 2005
fuel.
Class 35: Retail
convenience store
GETGO September 24, 2014
services featuring 4864242*
& Design December 1, 2015
convenience
store items and fuel.
Class 35: Retail
GETGO CAFE + convenience store
September 24, 2014
MARKET services featuring 4864240*
December 1, 2015
& Design convenience
Class 43: Restaurant December 8, 2014
GETGO 4766055*
services June 30, 2015
GETGO Class 43: Restaurant December 8, 2014
4864437
& Design services December 1, 2015
GETGO CAFE +
Class 43: Restaurant December 8, 2014
MARKET 4864438*
services December 1, 2015
& Design
Class 3: Windshield
washing fluid
Class 4: Motor oil
Class 29: Chicken; cut
fruits; cut
vegetables; soups; April 10, 2015
GETGO 5037377
potato chips. September 6, 2016
Class 30: Sandwiches;
bakery
goods; pepperoni
rolls; coffee;
candy.
Class 3: Windshield
GETGO 5038064 April 8, 2015
washing fluid
Filing Date/Reg.
Reg. No./
Mark Goods/Services Date
Serial No.
(if applicable)
& Design Class 4: Motor oil September 6, 2016
Class 29: Chicken; cut
GETGO CAFE + fruits; cut
April 8, 2015
MARKET vegetables; soups. 5037370
September 6, 2016
& Design Class 30: Sandwiches;
bakery
6
goods; pepperoni rolls;

coffee.
Class 35: Retail
convenience store
GET TO KNOW August 16, 2018
services featuring 5991999
GETGO February 18, 2020
convenience
Class 9: Magnetically
encoded
credit cards for
purchases of
gasoline and related
products.
Class 36: Credit card
March 18, 2020
GETGO services, 6158214
September 22, 2020
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
GETGO March 18, 2020
services, 6158213
& Design September 22, 2020
namely, credit card
payment
processing services for
fleet
purchases of gasoline
and related
products.
deny the same.
7
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.
deny the same.
16. The common law and registered trademark rights referred to above are
referenced G M . T
above are G G S .
deny the same.
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.
deny the same.
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.
8
deny the same.
19. Plaintiffs have spent millions of dollars to advertise, promote and sell their
services using the getGo® Marks. Based on Plainti ,
getGo® Marks have become widely and favorably known and have acquired extensive
goodwill.
allegations in rhetorical Paragraph 19 of Plainti Amended Complaint and, therefore,
deny the same.
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.
deny the same.
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.
9
deny the same.
Defe da I f i gi g Ma k a d Di c i Be ee he Pa ie
22. Subsequent to Pl R ,
Plaintiffs D GET 2
GO in connection with three (3) retail convenience stores located in Fort Wayne, Indiana
(the I M ).
deny the same.
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.
ANSWER: Defendants admit that they are the owners of two U.S. Service Mark
Registrations and that Plaintiffs filed a Petition for Cancellation of the Marks with the
United States Patent and Trademark Office-Trademark Trial and Appeal Board.
D P 23 P
Amended Complaint.
10
24. D GET 2 GO is likely to
cause P -established
rights in its getGo® Marks for use in association with getGo® Goods and Services.
ANSWER: Defendants deny the allegations in rhetorical Paragraph 24 of
25. In February of 2020 and again in April of 2021, Plaintiffs, through counsel,
D , P
getGo®Marks and requesting that Defendants agree to a reasonable phase out period for
the use of the GET 2 GO marks.
ANSWER: With respect to the allegations in rhetorical Paragraph 25 P
Amended Complaint, Defendants admit that Plaintiffs, through counsel, contacted
Defendants with respect to the use of D M . D
remaining allegations in rhetorical Paragraph 25 P Amended Complaint.
26. N P
the likely customer confusion that would result due to the proximity of the getGo® Fort
Wayne D GET 2 GO ,
could not be reached.
ANSWER: With respect to the allegations in rhetorical Parag 26 P
Amended Complaint, Defendants admit that no agreement was reached between the
11
parties. Defendants deny the remaining allegations in rhetorical Paragraph 26 of
27. Defendants, through counsel, indica
business resolution or in discontinuing the use of the Infringing Marks.
ANSWER: P 27 P
Amended Complaint, Defendants admit that the parties did not reach an agreement with
D M . D
P 27 P Amended Complaint.
Defe da C e I f i ge e
28. As of the date of the filing of this Complaint, Defendants have failed to
cease use of the Infringing Marks.
ANSWER: P 28 P
Amended Complaint, Defendants admit that they continue to use their registered
trademarks.
29. Defendants continue to advertise and promote their services through
various mediums, including Facebook.
ANSWER: Defendants admit the allegations in rhetorical Paragraph 29 of
12
30. D the Infringing Marks is a clear
and P G M
symbolized thereby.
ANSWER: Defendants deny the allegations in the rhetorical Paragraph 30 of
31. D G
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.
deny the same.
33. Defendants do not have the authorization or consent of Plaintiffs to use the
Infringing Marks or the getGo® Marks in any capacity.
ANSWER: P 33 P
Amended Complaint, Defendants did not need the authorization of consent of Plaintiffs
13
to use their registered trademarks. Defendants deny the remaining allegations in
P 33 P Amended Complaint.
34. D I M ,
cause mistake, and/or to deceive consumers as to the affiliation, connection, and
association of D P G , ,
sponsorship, and approval of D
Plaintiffs.
COUNT I FEDERAL TRADEMARK INFRINGEMENT

(Lanham Act, 15 U.S.C. § 1114)
35. Plaintiffs restate the preceding paragraphs as if fully incorporated herein.
ANSWER: Defendants incorporate herein the same as set forth in its full answers
P 1 34 P Amended Complaint.
36. Phoenix Intangibles owns all right, title and interest in and to the getGo®
Marks 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.
14
allegations in rhetorical Parag 36 P Amended Complaint and, therefore,
deny the same.
37. D I M ,
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
P / P getGo® locations, and is intended and is likely to cause such
parties to believe in error that the D , ,
approved, endorsed, or licensed by Plaintiffs or getGo®, or that Defendants are in some
way related to or affiliated with Plaintiffs or getGo®.
38. D , ,
registered getGo® Marks in violation of the Lanham Act, including, but not limited to, 15
U.S.C. § 1114.
15
39. D I M , ,
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
P registered getGo® Marks.
40. D P .
41. 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 P G M ,
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).
16
42. T
Section 1117(a).
COUNT II FEDERAL UNFAIR COMPETITION

AND FALSE DESIGNATION OF ORIGIN
(Lanham Act, 15 U.S.C. § 1125(A))
44. D
competition and false designation of origin pursuant to 15 U.S.C. § 1125(a).
45. D I
Marks is likely to cause confusion, mistake, or deception as to the origin, sponsorship, or
approval of D P
of origin in violation of 15 U.S.C. § 1125(a).
Plainti Amended Complaint.
17
46. A D , ,
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
Section 1117(a).
COUNT III COMMON LAW UNFAIR COMPETITION

AND TRADEMARK INFRINGEMENT
18
50. 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.
deny the same.
51. Defendants are not authorized to use the getGo® Marks or any variation
thereof, or any mark confusingly similar to the getGo® Marks.
ANSWER: P 51 P
Amended Complaint, Defendants state that they have not utilized the getGo® Marks or
any variation thereof or any Mark confusingly similar to the getGo® Marks.
52. The getGo® Marks are inherently distinctive.
19
53. Defendants have sold, promoted, and offered for sale their products and
services I M P
rights to the getGo® M P
reputation.
54. D I M
intentional P G M
and is likely to cause confusion, mistake, and deception as to source, affiliation, or
sponsorship with Plaintiffs and/or getGo®.
55. P D .
56. P , D ,
actual damages, treble profits and damages, costs, and reasonable attorne .
20
WHEREFORE, Defendants, Virk Brothers, LLC and Charanjit Singh, by counsel,
pray that the Plaintiffs take nothing by way of their Amended Complaint; that judgment
be entered in favor of Defendants and against Plaintiffs; for the costs of this action; and
for all other just and proper relief in the premises.
AFFIRMATIVE DEFENSES
Come now Defendants, Virk Brothers, LLC and Charanjit Singh, by counsel, and
for their Affirmative Defenses P Amended Complaint, allege and say as
follows:
1. P Amended Complaint is barred by the doctrine of laches.
2. P Amended Complaint is barred under the doctrine of estoppel.
3. P .
4. D M P
prior use as it has been continually used by Defendants from a date prior to the date of
constructive use o P M .
5. A D P M
not willful.
6. T D M I
P Marks.
WHEREFORE, Defendants, Virk Brothers, LLC and Charanjit Singh, by counsel,
pray that the Plaintiffs take nothing by way of their Amended Complaint; that judgment
21
be entered in favor of Defendants and against Plaintiffs; for the costs of this action; and
for all other just and proper relief in the premises.
Respectfully submitted,
CARSON LLP
Larry L. Barnard
Karl J. Veracco #16891-53
Larry L. Barnard #11904-49
Attorneys for Defendants
Virk Brothers, LLC and Charanjit Singh
301 W. Jefferson Blvd., Suite 200

Fort Wayne, IN 46802
(260) 423-9411
veracco@carsonllp.com
barnard@carsonllp.com
CERTIFICATE OF SERVICE
I hereby certify that on the 2nd day of September 2021, a copy of the foregoing
document was filed electronically. Notice of this filing will be sent to the following
C CM/ECF .
Anthony M. Eleftheri, Esq.

Drewry Simmons Vornehm, LLP
736 Hanover Place, Suite 200
Carmel, IN 46032
aeleftheri@dsvlaw.com
Christopher R. Opalinski, Esq.

Eckert Seamans Cherin & Mellott, LLC
600 Grant Street, 44th Floor
Pittsburgh, PA 15219
copalinski@eckertseamans.com
/s/ Larry L. Barnard
22

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USDC IN/ND case 1:21-cv-00263-HAB-SLC document 24 filed 09/02/21 page 1 of 22

UNITED STATES DISTRICT COURT

PHOENIX INTANGIBLES HOLDING )

DEFENDANTS VIRK BROTHERS, LLC AND CHARANJIT SINGH S

Amended Complaint, allege and say as follows:

1. Phoenix Intangibles is a Delaware corporation with its principal place of

ANSWER: Defendants are without sufficient information to admit or deny the

P 1 P Amended Complaint and, therefore,

deny the same.

2. Giant Eagle is a regional supermarket chain with stores in Pennsylvania,

Kappa Drive, Pittsburgh, PA 15238.

ANSWER: Defendants are without sufficient information to admit or deny the

allegations P 2 P Amended Complaint and, therefore,

deny the same.

3. Upon information and belief, Virk Brothers is an Indiana limited liability

ANSWER: Defendants admit the allegations of rhetorical Paragraph 3 of

Brothers. Defendants deny the remaining allegations of rhetorical Paragraph 4 of

JURISDICTION AND VENUE

U.S.C.§§ 1114 and 1125(a), and common law.

ANSWER: Defendants admit the allegations of rhetorical Paragraph 5 of

15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338(b).

ANSWER: Defendants admit the allegations of rhetorical Paragraph 6 of

Plain Amended Complaint.

claims are P w that they form part of the same

case or controversy and derive from a common nucleus of operative facts.

ANSWER: Defendants admit the allegations of rhetorical Paragraph 7 of

8. This Court has personal jurisdiction over Defendants because Defendants

complained of in the Northern District of Indiana.

9. Venue is proper in this district pursuant to 28 U.S.C. § 1391(b).

ANSWER: Defendants admit the allegations of rhetorical Paragraph 9 of

FACTS COMMON TO ALL COUNTS

10. Phoenix Intangibles is an intellectual property holding company that

licenses the getGo® trademark to Giant Eagle.

ANSWER: Defendants are without sufficient information to admit or deny the

P 10 P Amended Complaint and, therefore,

deny the same.

website is www.getgocafe.com. In 2018, Giant Eagle acquired the Rickers convenience

the getGo® banner.

ANSWER: Defendants are without sufficient information to admit or deny the

P 11 P Amended Complaint and, therefore,

deny the same.

ANSWER: Defendants are without sufficient information to admit or deny the

P 12 P Amended Complaint and, therefore,

deny the same.

association with convenience store services including fuel.

ANSWER: Defendants are without sufficient information to admit or deny the

P 13 P Amended Complaint and, therefore,

deny the same.

below (*starred registrations are now incontestable under 15 U.S.C. § 1065):

goods; pepperoni rolls;

ANSWER: Defendants are without sufficient information to admit or deny the

P 14 P Amended Complaint and, therefore,

deny the same.

ANSWER: Defendants are without sufficient information to admit or deny the

P 15 P Amended Complaint and, therefore,

deny the same.

ANSWER: Defendants are without sufficient information to admit or deny the

P 16 P Amended Complaint and, therefore,

deny the same.

the getGo® Goods and Services.

ANSWER: Defendants are without sufficient information to admit or deny the

P 17 P Amended Complaint and, therefore,

deny the same.

ANSWER: Defendants are without sufficient information to admit or deny the