Hub Group, Inc. v. SPL Group Inc.

CBG
March 17, 2026
Opposition No. 91263984
Hub Group, Inc.
v.
SPL Group Inc.
Before Greenbaum, Dunn and Casagrande,
Administrative Trademark Judges.
By the Board:
As background, and as the Board’s February 4, 2026 scheduling order recounts,
83 TTABVUE, the Board issued a final decision on August 2, 2023 dismissing the
opposition against Serial No. 88823756 (“Application” or “SHIPHUB Application”).
79 TTABVUE. Opposer Hub Group, Inc. filed a civil action challenging the Board’s
decision under 15 U.S.C. § 1071(b) with the U.S. District Court for the Southern
District of New York on October 4, 2023, captioned Hub Group, Inc. v. SPL Group,
Inc., Civil Action No. 23-cv-0828 (“Civil Action”). 81 TTABVUE.
On December 16, 2025, it came to the Board’s attention that Judge Koeltl issued
an order in the Civil Action on October 21, 2025, granting the parties’ joint motion to
remand their August 12, 2025 Joint Motion for Entry of Final Judgment on Consent
(“August 12, 2025 Joint Motion”) “so that they may request that the TTAB vacate its
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov

Opposition No. 91263984
2
earlier decision[,]” and staying all deadlines in the civil litigation “until fourteen days
after the TTAB’s decision on the parties’ anticipated motion to vacate.” 82 TTABVUE
1.
Because more than three months had passed since Judge Koeltl issued this order,
and the parties had filed no motion for vacatur with the Board, the Board issued a
scheduling order on February 4, 2026, allowing the parties time to file the
“anticipated motion to vacate” under Fed. R. Civ. P. 60(b). 83 TTABVUE 2. The
parties have done so.1
This case now comes up on the parties’ March 6, 2026 “Joint Motion to Amend
Application Serial No. 88/823,756 and Vacate Final Judgement.” 88 TTABVUE
(“Joint Motion”). In the Joint Motion, the parties state they have “entered into a
confidential, written settlement agreement that conditionally resolve[s] their dispute,
the Civil Action, and the Opposition.” Id. at 3 (“Settlement Agreement”).
The parties state that the Settlement Agreement
includes three points relevant to the TTAB. First, as a required
condition to settlement the Parties require that the TTAB Decision be
vacated. Accordingly, vacatur of the TTAB Decision is a necessary
condition of the Parties’ confidential settlement. Second, conditioned
upon the TTAB vacating the TTAB Decision, the Parties agree to jointly
request that the TTAB amend the identification of services of the
SHIPHUB Application … [Opposer] consents to this amendment. Third,
as an additional required element of settlement, the parties jointly
request that upon the vacatur of the TTAB Decision and the amendment
of the SHIPHUB Application, that the Opposition be dismissed and the
SHIPHUB Application, as amended, be allowed to proceed to
registration. Id. at 3.
1 The new powers of attorney and changes of correspondence addresses have been entered for
both parties. 84-87 TTABVUE.

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Accordingly, the parties jointly ask the Board to: (1) vacate, under Fed. R. Civ. P.
60(b), the Board’s August 2, 2023 final decision dismissing the opposition; (2)
“[c]onditioned upon the TTAB Decision being amended, to simultaneously amend the
identification of services of the SHIPHUB Application” in International Class 42 from
“software as a service (SaaS) services featuring software for shipping management”
to “software as a service (SaaS) services featuring software for shipping management
use as a rate shopping tool to choose a third-party courier for the shipment
of small parcels” (amendment in bold); and (3) dismiss the opposition and allow the
amended application to proceed to registration. Id. at 10.
The Joint Motion is granted pursuant to the terms of the Settlement Agreement
as described in the Joint Motion. Specifically:
The August 2, 2023 Final Decision is vacated; the amendment to the Application
is approved and entered because it is limiting in nature, as Trademark 2.71(a)
requires, and Opposer consents thereto, see Trademark Rule 2.133(a); and the
opposition is dismissed in accordance with the Settlement Agreement.
The Board cannot give effect to this order until the Civil Action is dismissed and
the matter is remanded to the Board. After jurisdiction is restored to the Board, the
Board will take the actions described above and the Application will proceed as
amended. The parties are directed to notify the Board of the dismissal of the Civil
Action within fourteen (14) days of the district court taking such action.