Trademark Laws: Georgia

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Co-authored this summary of Georgia trademark law, published by the Practical Law Company on May 23, 2013.

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Trademark Laws: Georgia

  1. 1. This Article is published by Practical Law Company onits PLCLaw Department web service athttp://us.practicallaw.com/6-525-6059.Trademark Laws:GeorgiaMichael A. Cicero and Marcy L. Sperry,Womble Carlyle Sandridge & Rice,LLP, with PLC Intellectual Property &TechnologyCopyright © 2013 Practical Law Publishing Limited and Practical Law Company, Inc. All Rights Reserved.Key Substantive Registration RequirementsTypes of Marks CoveredThe statute provides for registration of trademarks and servicemarks (Ga. Code Ann. §§ 10-1-440 and 10-1-442 (2012)).Use Requirements and Intent-to-use ApplicationsA mark must be in use in Georgia to obtain a registration. Thestatute does not permit intent to use applications (Ga. Code Ann.§ 10-1-442(a) (2012)).Statutory Bars to RegistrationGeorgia’s trademark registration statute contains many of thesame statutory bars to registration as does the federal LanhamAct. The Georgia statute bars registration of:„„ Immoral, deceptive or scandalous marks (Ga. Code Ann. § 10-1-441(1) (2012)).„„ Disparaging marks or marks that falsely suggest a connectionwith persons, institutions, beliefs or national symbols (Ga. CodeAnn. § 10-1-441(2) (2012)).„„ Marks consisting of the flag or coat of arms or other insigniaof the United States or of any state, county or municipalityor of any foreign nation with the exception that a county,municipality or board of education may register its own servicemark for its own use (Ga. Code Ann. § 10-1-441(3) (2012)).„„ Marks consisting of the name, signature or portrait of aparticular living individual, except with written consent (Ga.Code Ann. § 10-1-441(4) (2012)).A Q&A guide to Georgia laws protectingtrademarks. This Q&A addresses statelaws governing trademark registration,infringement, dilution, counterfeiting,unfair competition and deceptive tradepractices.State Trademark Registration StatuteStatuteGeorgia’s trademark registration statute is codified in Article 16 ofTitle 10 of the Official Code of Georgia Annotated (Ga. Code Ann.§§ 10-1-440 to 10-1-454 (2012)).State agencyThe Georgia Secretary of State administers Georgia’s trademarkregistration statute. For more information about the trademarkregistration process, see the trademarks section of the GeorgiaSecretary of State website.1. Does your state have a state trademark registrationstatute? If so, please:„„ Identify the statute.„„ Identify the state agency responsible for administeringtrademark applications and registrations.„„ Describe the key substantive state trademarkregistration requirements.„„ Describe the key benefits of state registration.
  2. 2. Trademark Laws: GeorgiaCopyright © 2013 Practical Law Publishing Limited and Practical Law Company, Inc. All Rights Reserved. 2„„ Merely descriptive, deceptively misdescriptive, primarilygeographically descriptive or geographically deceptivelymisdescriptive marks (Ga. Code Ann. § 10-1-441(5) (2012)).„„ Marks that are primarily merely a surname (Ga. Code Ann. §10-1-441(5)(C) (2012)).„„ Marks that resemble another Georgia registered mark ortrade name previously used in Georgia by another and notabandoned and when applied to the applicant’s goods orservices are likely to cause confusion or mistake or to deceive(Ga. Code Ann. § 10-1-441(6) (2012)).„„ Marks that resemble a federally registered mark, which isnot abandoned and when applied to the applicant’s goods orservices are likely to cause confusion or mistake or to deceive.However, an applicant may obtain a registration if the applicantcan prove it is the owner of a concurrent federal registration fora mark covering an area including Georgia (Ga. Code Ann. §10-1-441(7) (2012)).).Other Key Substantive Registration RequirementsTo register a trademark in Georgia, an applicant must:„„ Submit three specimens demonstrating use of the mark.„„ Identify the date the mark was first used anywhere as well asthe date when the mark was first used in Georgia.Key benefits of state registrationProceduralOwnership of a Georgia state trademark registration does notafford any procedural benefits.SubstantiveThe Georgia statute provides for a civil cause of action fortrademark infringement as well as statutory damages (seeQuestion 3).For the text of the Georgia Code, see the Georgia GeneralAssembly website.registration termA Georgia state trademark registration is effective for ten yearsfrom the registration date (Ga. Code Ann. § 10-1-445 (2012)).Renewal RequirementsA Georgia state trademark registration may be renewed every tenyears by filing an application and submitting a renewal fee of $15within six months before the expiration of the current ten-yearterm. The mark must be in current use in Georgia to be eligiblefor renewal. (Ga. Code Ann. § 10-1-445 (2012) and GeorgiaSecretary of State’s Renewal Application Form.)For the text of the Georgia Code, see the Georgia GeneralAssembly website.State Statutory and Common LawTrademark Infringement Causes ofActionElements of the Cause of ActionGeorgia trademark registrants have a cause of action fortrademark infringement against any person who:„„ Uses, without the registrant’s consent, any reproduction,counterfeit, copy or colorable imitation of a state registeredtrademark or service mark in connection with the sale, offeringfor sale or advertising of any goods or services where the use islikely to:„„ cause confusion or mistake; or„„ deceive about the source of origin of such goods or services.„„ Reproduces, counterfeits, copies or colorably imitatesany registered trademark or service mark and applies thereproduction, counterfeit, copy or colorable imitation tolabels, signs, prints, packages, wrappers, receptacles oradvertisements intended to be sold or distributed in Georgiawith the goods or services.(Ga. Code Ann. § 10-1-450 (2012).)RemediesSuccessful plaintiffs in an action for infringement of a registeredstate trademark may recover:„„ Liquidated damages of $10,000 if:„„ the infringement has been committed without consent of theregistered owner; and„„ with knowledge that the mark is registered.„„ Injunctive relief.„„ Damages and profits but only if:„„ liquidated damages are not sought; and„„ the infringing acts were committed with the intent to causeconfusion, mistake or to deceive.„„ Destruction or disposal of counterfeit marks and all goods,articles or other matter bearing the marks.2. Indicate the term of a state trademark registration andthe key registration renewal requirements.3. Does your state have a statute that provides a trademarkinfringement cause of action? If so, describe:„„ The elements of the cause of action.„„ The available remedies.„„ Any statutory defenses or exemptions.
  3. 3. 3 Copyright © 2013 Practical Law Publishing Limited and Practical Law Company, Inc. All Rights Reserved.3State Anti-dilution LawCommon LawThere is no common law cause of action for dilution in Georgia.StatuteGeorgia’s anti-dilution statute is codified in Section 451(b) ofArticle 16 of Title 10 of the Official Code of Georgia Annotated (Ga.Code Ann. § 10-1-451(b) (2012)).Registration RequirementsThe statute protects against dilution of both registered andunregistered trademarks (Giant Mart Corp. v. Giant DiscountFoods, Inc. , 279 S.E.2d 683, 686 (Ga. 1981); U.S. Pharm. Corp.v. Breckenridge Pharm., Inc., No. 1:09–CV–2050–TWT (N.D. Ga.Sept. 16, 2010)).Nature and Types of Dilution RecognizedGeorgia’s anti-dilution statute recognizes dilution by:„„ Blurring (Golden Bear Int’ l, Inc. v. Bear U.S.A., Inc., 969F. Supp. 742, 747-48 (N.D. Ga. 1996); Pepsico, Inc. v. #1Wholesale, LLC, No. 07-cv-367 (N.D. Ga. Jul. 20, 2007)).„„ Tarnishment (Scientific-Atlanta Inc. v. Fenley, No.Civ.1:95CV1584–JEC (N.D. Ga. Jan. 14, 1997); OriginalAppalachian Artworks vs. Topps Chewing Gum, Inc., 642 F.Supp. 1031, 1039-40 (N.D. Ga. 1986)).Distinctiveness, Strength or FameA mark must be distinctive to be protected under Georgia’s anti-dilution statute. To be considered distinctive, the mark must be atleast descriptive with a secondary meaning. The statute does notrequire:„„ The mark to be famous.„„ That the parties be in competition with each other.(Corbitt Mfg. Co. v. GSO Am., Inc., 197 F.Supp. 2d 1368, 1379(S.D. Ga. 2002).)For the text of the Georgia Code, see the Georgia GeneralAssembly website.6. For the anti-dilution law listed in Question 5, please listthe elements of a cause of action, including whether aclaim requires any of:„„ Actual or likelihood of dilution.„„ Likelihood of confusion.„„ Competition between the parties.Common LawThere is no common law cause of action for dilution in Georgia.„„ Seizure of counterfeit goods.(Ga. Code Ann. §§ 10-1-450 and 10-1-451 (2012).)Statutory Defenses or ExemptionsThe Georgia statute does not provide for any defenses orexemptions.For the text of the Georgia Code, see the Georgia GeneralAssembly website.Georgia recognizes a claim for common law trademarkinfringement (SCQuARE Int’l, Ltd., v. BBDO Atlanta, Inc., 455 F.Supp. 2d 1347, 1365 (N.D. Ga. 2006)).Elements of a Cause of ActionTo establish common law trademark infringement, a plaintiffmust prove:„„ The defendant’s use of a mark or name that is the same orconfusingly similar to plaintiff’s mark.„„ Likelihood of confusion.(SCQuARE Int’l, Ltd., at 1365.)Key Lanham Act DistinctionsThe standards governing common law trademark infringementunder Georgia law are similar to those under the federal LanhamAct (Univ. of Ga. Athletic Ass’ n v. Laite, 756 F.2d 1535, 1539(11th Cir. 1985); Gold Kist, Inc. v. Conagra, Inc., 708 F. Supp.1291, 1303 (N.D. Ga. 1989)).4. Does your state recognize a claim for common lawtrademark infringement? If so, describe:„„ The elements of the cause of action.„„ Any significant differences between the statecommon law claim and a claim for infringement of anunregistered mark under Section 43(a) of the LanhamAct.5. Does your state have an anti-dilution statute orrecognize a dilution cause of action under common law? Ifso, please describe for any statute or common law claim:„„ The nature of dilution protected against, includingwhether the law protects against any dilution by blurringor dilution by tarnishment.„„ Any significant differences between the statecommon law claim and a claim for infringement of anunregistered mark under Section 43(a) of the LanhamAct.„„ Whether distinctiveness, strength or fame of thetrademark is required for a mark to be protected in yourjurisdiction.
  4. 4. Trademark Laws: GeorgiaCopyright © 2013 Practical Law Publishing Limited and Practical Law Company, Inc. All Rights Reserved. 4StatuteActual or Likelihood of DilutionGeorgia’s anti-dilution statute imposes liability for use of a markthat is the same or similar to another mark where the use createsa likelihood of dilution (Ga. Code Ann. § 10-1-451(b) (2012)).Likelihood of ConfusionThe statute expressly excludes confusion as a requirement forliability (Ga. Code Ann. § 10-1-451(b) (2012)).Competition between the PartiesThe statute expressly excludes competition between the parties asa requirement for liability (Ga. Code Ann. § 10-1-451(b) (2012)and Question 5).For the text of the Georgia Code, see the Georgia GeneralAssembly website.7. For the anti-dilution law listed in Question 5, pleasedescribe any tests set out in the statute or applied bycourts to assess likely or actual dilution.Common LawThere is no common law cause of action for dilution in Georgia.StatuteDilution by BlurringThere is no test to determine dilution by blurring. However, onecourt stated that dilution by blurring can occur “where the publicsees the mark used widely on all kinds of products” (OriginalAppalachian Artworks, Inc., at 1039).Dilution by TarnishmentTo demonstrate dilution by tarnishment, the plaintiff must show that:„„ Its mark and the mark used by the defendant are similar.„„ The defendant’s use of the mark is likely to injure the plaintiff’scommercial reputation or dilute the distinctive quality of its marks.(Scientific-Atlanta Inc. v. Fenley, No. 1:95-cv-1584 (N.D. Ga. Jan.14, 1997).)8. For the anti-dilution law listed in Question 5, pleasedescribe any available remedies for violations.Common LawThere is no common law cause of action for dilution in Georgia.StatuteGeorgia’s anti-dilution statute provides for injunctive relief (Ga.Code Ann. § 10-1-451(b) (2012); Atl. Nat’l Bank v. Atl. S. Bank,No. CV208-147 (S.D. Ga. Jul. 29, 2010)).For the text of the Georgia Code, see the Georgia GeneralAssembly website.9. For the anti-dilution law listed in Question 5, whatstatutory exemptions or defenses are available to defendagainst these claims?Common LawThere is no common law cause of action for dilution in Georgia.StatuteThe Georgia anti-dilution statute does not set out any exemptionsor defenses. A Georgia federal court interpreting the statutefound that the statute provides First Amendment free-speechprotections. The court stated that tarnishment caused merely byan editorial or artistic parody satirizing a complainant’s product orits image is not actionable. (Smith v. Wal-Mart Stores, Inc., 537 F.Supp. 2d 1302, 1339 (N.D. Ga. 2008).)10. For the anti-dilution law in Question 5, please describeany significant distinctions between the applicable statelaw and the federal Trademark Dilution Revision Act,including differences in the available remedies.Common LawThere is no common law cause of action for dilution in Georgia.StatuteCourts have observed that the analysis of dilution under the stateand federal statutes is similar (Golden Bear Int’l, Inc., at 748).However, contrary to the federal Trademark Dilution Revision Act,Georgia’s anti-dilution statute does not:„„ Require fame.„„ Authorize monetary relief.(Corbitt Mfg. Co., at 1379 and Question 8.)Anti-counterfeiting Statute11. Does your state have a civil anti-counterfeiting statutewith a private right of action? If so, please identify thestatute and describe:„„ Available remedies.„„ Any statutory exemptions or defenses.
  5. 5. 5 Copyright © 2013 Practical Law Publishing Limited and Practical Law Company, Inc. All Rights Reserved.Georgia does not have a specific anti-counterfeiting statute with aprivate right of action. However, state law provides a cause ofaction relating to counterfeits and imitations of marks registeredunder the Georgia registration statute (Ga. Code Ann. § 10-1-450(2012) and Question 3).Standing RequirementsOnly the owner of a mark registered under the Georgia registrationstatute has standing to sue (Ga. Code Ann. § 10-1-450(2) (2012);Diedrich v. Miller & Meier Assocs., 334 S.E.2d 308, 311 (Ga. 1985)).RemediesRemedies available for counterfeiting include:„„ Destruction of goods, articles or other matter bearing thecounterfeit trademarks or service marks.„„ Seizure of the counterfeit goods.(Ga. Code Ann. § 10-1-451(c), (d) (2012).)The remedies available for infringement of a registered trademarkare also available for counterfeiting (see Question 3).Statutory Exemptions or DefensesThe statute does not set out any defenses or exemptions.However, a person who causes the seizure of goods that are notcounterfeits will be held liable for costs and damages proximatelycaused by the seizure (Ga. Code Ann. § 10-1-451(e)(1)(A), (B) (2012)).If the person who caused the seizure acted in bad faith, thatperson will also be liable for expenses, including any attorneys’fees expended in defending against that seizure (Ga. Code Ann. §10-1-451(e)(1)(C) (2012)).For the text of the Georgia Code, see the Georgia GeneralAssembly website.State Unfair Competition andDeceptive Trade Practices Statutes12. Does your state have any unfair competition ordeceptive trade practices statutes with a private right ofaction? If so, please identify the statute(s) and describe for each:„„ The types of acts or practices it prohibits.„„ The standing requirements for a private action.„„ The remedies available for violations.„„ Any statutory exemptions or defenses to private claims.Use of Similar Trademarks, Names or Devices: Ga.Code Ann. § 23-2-55Prohibited ConductThe statute prohibits any:„„ Attempt to encroach upon the business of a trader or otherperson by the use of similar trademarks, names or devices,with the intention of deceiving and misleading the public (Ga.Code Ann. § 23-2-55 (2012)).„„ Conduct the nature and probable tendency and effect ofwhich is to deceive the public so as to “pass off” the goods orbusiness of one person as and for the goods or business ofanother (Ga. Code Ann. § 23-2-55 (2012); Morton B. Katz &Assocs., Ltd. v. Arnold, 333 S.E.2d 115, 116 (Ga. Ct. App. 1985)).If there is an intent to deceive and mislead the public, this statuteprohibits any attempt to encroach on another business by usingtrademarks, names or devices that are similar to the business’trademarks, names or devices (Ga. Code Ann. § 23-2-55 (2012)).Standing Requirements for a Private ActionAny person injured by the prohibited conduct has standing tosue under the statute. The statute does not require any direct oractual market competition between the parties. (Kay Jewelry Co. v.Kapiloff, 49 S.E.2d 19, 20 (Ga. 1948).)RemediesA person injured by conduct prohibited under this statute may seek:„„ Injunctive relief (Giant Mart, at 686).„„ Damages (Diedrich, at 311).Statutory Exemptions or Defenses to Private ClaimsThe statute does not set out any defenses or exemptions.Uniform Deceptive Trade Practices Act: Ga. CodeAnn. §§ 10-1-370 to 10-1-375Prohibited ConductUnder Georgia’s Uniform Deceptive Trade Practices Act(GUDTPA), a person engages in a deceptive trade practice if, inthe course of his business, vocation or occupation, he:„„ Passes off goods or services as those of another.„„ Causes likelihood of confusion or of misunderstanding about:„„ the source, sponsorship, approval or certification of goods orservices; or„„ affiliation, connection or association with or certification byanother.„„ Uses deceptive representations or designations of geographicorigin in connection with goods or services.„„ Represents that goods or services have sponsorship, approval,characteristics, ingredients, uses, benefits or quantities thatthey do not have or that a person has a sponsorship, approval,status, affiliation or connection that he does not have.„„ Represents that goods are original or new if they aredeteriorated, altered, reconditioned, reclaimed, used orsecondhand.
  6. 6. Trademark Laws: GeorgiaCopyright © 2013 Practical Law Publishing Limited and Practical Law Company, Inc. All Rights Reserved. 6„„ Represents that goods or services are of a particular standard,quality or grade or that goods are of a particular style or model,if they are of another.„„ Disparages the goods, services or business of another by falseor misleading representation of fact.„„ Advertises goods or services with intent not to:„„ sell them as advertised; or„„ supply reasonably expectable public demand, unless theadvertisement discloses a limitation of quantity.„„ Makes false or misleading statements of fact concerning thereasons for, existence of or amounts of price reductions.„„ Engages in any other conduct that similarly creates a likelihoodof confusion or of misunderstanding.(Ga. Code Ann. § 10-1-372(a) (2012).)Standing Requirements for a Private ActionTo have standing to seek injunctive relief under the GUDTPA, aplaintiff must show that he is likely to be damaged in the future bysome deceptive trade practice of the defendant (Vie v. WachoviaBank, N.A., No. 1:11-CV-3620 (N.D. Ga. Apr. 6, 2012)).RemediesThe GUDTPA authorizes:„„ Injunctive relief.„„ Costs, unless a court rules otherwise.„„ Attorneys’ fees if:„„ the party complaining of a deceptive trade practice broughtthe action knowing it to be groundless; or„„ the party charged with a deceptive trade practice willfullyengaged in the trade practice knowing it to be deceptive.(Ga. Code Ann. § 10-1-373(b) (2012).)Damages are not recoverable under the GUDTPA.Statutory Exemptions or Defenses to Private ClaimsThe GUDTPA exempts:„„ Conduct in compliance with the orders or rules of a statuteadministered by a federal, state or local governmental agency.„„ Publishers, broadcasters, printers or other persons engaged inthe dissemination of information or reproduction of printed orpictorial matters who publish, broadcast or reproduce materialwithout knowledge of its deceptive character.(Ga. Code Ann. § 10-1-374(a) (2012).)The GUDTPA also exempts from liability the use of a servicemark, trademark, certification mark, collective mark, trade nameor other trade identification that was:„„ Done in a good faith and otherwise lawfully.„„ Used and not abandoned before March 19, 1968.(Ga. Code Ann. § 10-1-374(b) (2012).)For the text of the Georgia Code, see the Georgia GeneralAssembly website.13. For each statute listed in Question 12, please describethe elements of a cause of action.Use of Similar Trademarks, Names or Devices: Ga.Code Ann. § 23-2-55To maintain a claim for trade name use or infringement, a plaintiffmust show:„„ It has a trade name.„„ That defendant did or attempted to encroach on plaintiff’sbusiness through the use of the plaintiff’s trade name.„„ That defendant intended to deceive and mislead the publicthrough the use of plaintiff’s trade name.(Ga. Code Ann. § 23-2-55 (2012).)Intent to deceive may also be presumed. A court will presumeintent to deceive if it is shown that:„„ The defendant was put on notice or had knowledge of theplaintiff’s mark.„„ The similarity in marks is likely to confuse or mislead the public.(Thompson v. Alpine Motor Lodge, Inc., 296 F.2d 497, 500 (5thCir. 1961).)Uniform Deceptive Trade Practices Act: Ga. CodeAnn. §§ 10-1-370 to 10-1-375The elements to sustain a GUDTPA claim generally are the sameas those required to establish trademark infringement under thefederal Lanham Act (Energy Four, Inc. v. Dornier Med. Sys., Inc.,765 F. Supp. 724, 731 (N.D. Ga. 1991)). All that is required is thatthe use of a name causes confusion to others using reasonablecare (Giant Mart, at 686). For more information on federaltrademark claims, see Practice Note, Trademark Infringement andDilutions, Claims and Defenses (www.practicallaw.com/1-508-1019).For the text of the Georgia Code, see the Georgia GeneralAssembly website.14. For each statute listed in Question 12, please describethe statute’s applicability to trademark infringement anddilution claims.Use of Similar Trademarks, Names or Devices: Ga.Code Ann. § 23-2-55Trademark InfringementTrademark infringement in the nature of “passing off” isactionable (Ga. Code Ann. § 23-2-55 (2012); Morton B. Katz &Assocs., at 116 and see Question 12: Use of Similar Trademarks,Names or Devices: Prohibited Conduct).
  7. 7. 7 Copyright © 2013 Practical Law Publishing Limited and Practical Law Company, Inc. All Rights Reserved.Elements of a Common Law unfair competitioncause of actionUnder Georgia law, unfair competition stands for “the doctrinethat one cannot pass off his goods as those of another”(Nationwide Adver. Serv. v. Thompson Recruitment Adver., 359S.E.2d 737, 741 (Ga. App. Ct. 1987)).In Georgia, the test for a common law claim of unfair competitionis whether the defendant has created a likelihood of confusionabout the source or sponsorship of a product (Scientific-AtlantaInc. v. Fenley, No. Civ.1:95CV1584–JEC (N.D. Ga. Jan. 14, 1997)).Key Lanham Act DistinctionsThere are no significant distinctions between unfair competitionclaims under Georgia common law and related claims under thefederal Lanham Act.Other Significant State Statutory andCommon Law Trademark-related Claims16. Please describe any significant statutory or commonlaw causes of action in your state available to trademarkowners that are not already described in the precedingquestions (for example, false advertising and trade libel).StatuteFalse Advertising: Ga. Code Ann. §§ 10-1-420 to 10-1-427Georgia has a false advertising statute that prohibits false orfraudulent statements in advertising (Ga. Code Ann. §§ 10-1-420 to 10-1-427 (2012)). Georgia courts evaluate the state falseadvertising statute under the same standards as a federal LanhamAct false advertising claim (B & F Sys. v. LeBlanc, No. 7:07-CV-192 n.24 (M.D. Ga. Sept. 14, 2011)).To succeed on a claim for false advertising under the Georgia falseadvertising statute, a plaintiff must show:„„ The ads of the opposing party were false or misleading.„„ The ads deceived, or had the capacity to deceive, consumers.„„ The deception had a material effect on purchasing decisions.„„ The misrepresented product or service affects interstatecommerce.„„ The plaintiff has been or is likely to be injured as a result of thefalse advertising.(B & F Sys. v. LeBlanc, No. 7:07-CV-192 (M.D. Ga. Sept. 14, 2011).)Violations of this statute may result in criminal penalties (Ga. CodeAnn. § 10-1-421(c) (2012)).Trade Name InfringementSection 23-2-55 of the Georgia Code is the recognized statutoryprotection against trade name infringement (Corrpro Cos., Inc. v.Meier, No. 3:03-CV-31 (M.D. Ga. Oct. 5, 2007)).DilutionThis statute has not been applied to address dilution, and Georgiahas a separate anti-dilution statute (see Question 5).Uniform Deceptive Trade Practices Act: Ga. CodeAnn. §§ 10-1-370 to 10-1-375Trademark InfringementThe Uniform Deceptive Trade Practices Act also provides relieffor victims of trademark or trade name infringement (see GiantMart, at 685). Analyses of the GUDTPA and of false designationof origin under Section 43(a) of the Lanham Act are “coextensive”(Optimum Techs., Inc. v. Henkel Consumer Adhesives, Inc., 496F.3d 1231, 1248 n.11 (11th Cir. 2007)). This statute prohibitstrademark infringement in the nature of “passing off” and tradename infringement (Giant Mart, at 685; Future Prof’ls, Inc. v.Darby, 470 S.E.2d 644, 646 (Ga. 1996)).Trade Name InfringementGeorgia protects trade names by both common law and statute.The GUDTPA entitles a person to protect a trade name whenanother person’s use of a similar name causes likelihood ofconfusion or of misunderstanding as to the source, sponsorship,approval or certification of goods or services (Future Prof’ls, Inc.,at 646).DilutionThe Georgia Uniform Deceptive Trade Practices Act has not beenapplied to address dilution and Georgia has a separate anti-dilution statute (see Question 5).For the text of the Georgia Code, see the Georgia GeneralAssembly website.15. Please identify the principal common law unfaircompetition causes of action in your state that areavailable to trademark owners and for each cause of actiondescribe:„„ The elements of the cause of action.„„ Any significant distinctions between claims under statecommon law and claims under the Section 43(a) of theLanham Act.
  8. 8. Trademark Laws: GeorgiaCopyright © 2013 Practical Law Publishing Limited and Practical Law Company, Inc. All Rights Reserved. 817. For each statute or common law claim identified inQuestions 3, 4, 5, 11 and 12, identify any applicablestatute of limitations and how it is calculated.Statutory and Common Law Trademark InfringementThere are no specific statutes of limitation for Georgia statutoryand common law trademark infringement claims. However,Georgia recognizes a laches affirmative defense to trademarkinfringement. To establish a laches defense under Georgia law, thedefendant must prove that the plaintiff:„„ Inexcusably delayed enforcing its trademark rights.„„ Caused the defendant undue prejudice.(Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200,1207 (11th Cir. 2008).)Delay for a laches defense is measured from the time at whichthe plaintiff knew or should have known it had a provableinfringement claim and stops when the defendant is notified of theplaintiff’s objections (Kason Indus., at 1206).The US Court of Appeals for the Eleventh Circuit has adopteda doctrine of presumption of laches. Laches is presumed if aplaintiff brings a trademark claim after the expiration of the statuteof limitations period of an analogous statute (Kason Indus., at1204). The Eleventh Circuit has applied the four-year statuteof limitations from a Georgia statute analogous to the GeorgiaUniform Deceptive Trade Practices Act (GUDTPA) and held thatGUDTPA’s presumption of laches period should be four years fortrademark infringement claims (Kason Indus., at 1205).Dilution: Ga. Code Ann. § 10-1-451There is no specific statute of limitations for claims arising underthe Georgia anti-dilution statute. However, a laches defense mayapply to these claims (see Statutory and Common Law TrademarkInfringement).Use of Similar Trademarks, Names or Devices: Ga.Code Ann. § 23-2-55: Ga. Code Ann. § 23-2-55There is no specific statute of limitations for claims arising underthe Georgia anti-dilution statute. However, a laches defense mayapply to these claims (see Statutory and Common Law TrademarkInfringement).Uniform Deceptive Trade Practices Act: Ga. CodeAnn. §§ 10-1-370 to 10-1-375The GUDTPA does not contain a statute of limitations. However,a federal court applied a four-year statute of limitations to claimsunder the GUDTPA (Kason Indus., at 1205).Fair Business Practices Act: Ga. Code Ann. §§ 10-1-390 to 10-1-407Prohibited ConductThis statute prohibits the following trademark-related activities:„„ Passing off goods or services as those of another.„„ Causing actual confusion or actual misunderstanding as to thesource, sponsorship, approval or certification of goods or services.„„ Causing actual confusion or actual misunderstanding as toaffiliation, connection or association with or certification byanother.„„ Using deceptive representations or designations of geographicorigin in connection with goods or services.„„ Representing that goods or services have sponsorship,approval, characteristics, ingredients, uses, benefits orquantities that they do not have or that a person has asponsorship, approval, status, affiliation or connection that heor she does not have.(Ga. Code Ann. § 10-1-393 (2012).)Georgia courts evaluate claims under the Fair Business PracticesAct (FBPA) under the same test as claims under the federalLanham Act (Gold Kist, Inc., at 1303). However, the FBPA wasenacted to provide relief to consumers and not to competitors(Friedlander v. Pdk Labs, 465 S.E.2d 670, 671 (Ga. 1996).)Unlike the federal Lanham Act and the GUDTPA, the FBPArequires a showing of actual confusion (Ga. Code Ann. § 10-1-393(b)(3) (2012); Kason Indus. v. Component Hardware Grp.,120 F.3d 1199, 1204 (11th Cir. 1997)).Unauthorized Use of Certain Names and Emblems:Ga. Code Ann. §§ 10-1-470 to 10-1-472This statute prohibits the unauthorized use of the name, style oremblem, including any colorable imitation, of any benevolent,fraternal, social, humane or charitable organization (Ga. CodeAnn. § 10-1-470 (2012)). Remedies for violations of this statuteinclude injunctive relief (Ga. Code Ann. § 10-1-471 (2012)). Aviolation of this law is also punishable as a misdemeanor (Ga.Code Ann. § 10-1-472 (2012)).Common LawUnjust EnrichmentTo prove a claim of unjust enrichment under Georgia law, aplaintiff must show that:„„ It conferred a benefit on the defendant.„„ Equity requires the defendant to compensate for such benefit.(Schütz Container Sys., Inc. v. Mauser Corp., 1:09-CV-3609 (N.D.Ga. Mar. 28, 2012).)For the text of the Georgia Code, see the Georgia GeneralAssembly website.
  9. 9. 9Computer Systems Protection Act: Ga. Code Ann. §§16-9-90 to 16-9-94This statute prohibits anyone from using a trademark orcopyrighted symbol on the internet without the permissionof the trademark or copyright owner for the purpose of falseidentification (Ga. Code Ann. § 16-9-93.1 ( 2012); SCQuARE Int’l,Ltd., at 1368).A violation of this statute is punishable as a misdemeanor (Ga.Code Ann. § 16-9-93.1(b) (2012)).False Advertising: Ga. Code Ann. §§ 10-1-420 to 10-1-427See Question 16: False Advertising.For the text of the Georgia Code, see the Georgia GeneralAssembly website.Pending Legislation19. Please describe any legislation pending in your statethat would materially impact civil trademark enforcementand protection.There is no relevant pending legislation in Georgia.Contact UsPractical Law Company747 Third Avenue, 36th FloorNew York, NY 10017646.562.3405plcinfo@practicallaw.comwww.practicallaw.comFor the text of the Georgia Code, see the Georgia GeneralAssembly website.State Criminal Trademark Laws18. Does your state have any criminal trademark protectionstatutes? If so, please identify the statute and describe theoffense.Trademark Counterfeiting: Ga. Code Ann. § 10-1-454This statute prohibits any person from:„„ Knowingly and willfully counterfeiting any mark without theconsent of the owner.„„ Knowingly possessing any tool, machine, device or otherreproduction instrument with the intent to reproduce anycounterfeited mark.„„ Selling, reselling, offering for sale or resale, purchasing orpossessing with the intent to sell or resell any goods he knowsor should have known bear a counterfeit trademark.„„ Selling or offering to sell any service that is sold in conjunctionwith a counterfeit service mark, knowing the mark to becounterfeited.(Ga. Code Ann. § 10-1-454(b) (2012).)Counterfeited marks include any mark or design that is identicalto, substantially indistinguishable from or an imitation of atrademark or service mark which is registered:„„ With the Secretary of State.„„ On the Principal Register.„„ Under any state or protected by the federal Amateur Sports Actof 1978.(Ga. Code Ann. § 10-1-454(a) (2012).)A person who violates this statute may be subject to:„„ Misdemeanor charges.„„ Felony charges.„„ Fines up to $200,000 or twice the retail sale value of the goodsor services.(Ga. Code Ann. § 10-1-454(c) (2012).)Unauthorized Use of Certain Names and Emblems:Ga. Code Ann. §§ 10-1-470 to 10-1-472See Question 16: Unauthorized Use of Certain Names andEmblems.Copyright © 2013 Practical Law Publishing Limited and Practical Law Company, Inc. All Rights Reserved.Use of PLC websites and services is subject to the Terms of Use (http://us.practicallaw.com/2-383-6690)and Privacy Policy (http://us.practicallaw.com/8-383-6692).6-13

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