Trademark Laws: Georgia

This Article is published by Practical Law Company on
its PLC
Law Department web service at
http://us.practicallaw.com/6-525-6059.
Trademark Laws:
Georgia
Michael A. Cicero and Marcy L. Sperry,
Womble Carlyle Sandridge & Rice,
LLP, with PLC Intellectual Property &
Technology
Copyright © 2013 Practical Law Publishing Limited and Practical Law Company, Inc. All Rights Reserved.
Key Substantive Registration Requirements
Types of Marks Covered
The statute provides for registration of trademarks and service
marks (Ga. Code Ann. §§ 10-1-440 and 10-1-442 (2012)).
Use Requirements and Intent-to-use Applications
A mark must be in use in Georgia to obtain a registration. The
statute does not permit intent to use applications (Ga. Code Ann.
§ 10-1-442(a) (2012)).
Statutory Bars to Registration
Georgia’s trademark registration statute contains many of the
same statutory bars to registration as does the federal Lanham
Act. 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 connection
with persons, institutions, beliefs or national symbols (Ga. Code
Ann. § 10-1-441(2) (2012)).
„„ Marks consisting of the flag or coat of arms or other insignia
of the United States or of any state, county or municipality
or of any foreign nation with the exception that a county,
municipality or board of education may register its own service
mark for its own use (Ga. Code Ann. § 10-1-441(3) (2012)).
„„ Marks consisting of the name, signature or portrait of a
particular living individual, except with written consent (Ga.
Code Ann. § 10-1-441(4) (2012)).
A Q&A guide to Georgia laws protecting
trademarks. This Q&A addresses state
laws governing trademark registration,
infringement, dilution, counterfeiting,
unfair competition and deceptive trade
practices.
State Trademark Registration Statute
Statute
Georgia’s trademark registration statute is codified in Article 16 of
Title 10 of the Official Code of Georgia Annotated (Ga. Code Ann.
§§ 10-1-440 to 10-1-454 (2012)).
State agency
The Georgia Secretary of State administers Georgia’s trademark
registration statute. For more information about the trademark
registration process, see the trademarks section of the Georgia
Secretary of State website.
1. Does your state have a state trademark registration
statute? If so, please:
„„ Identify the statute.
„„ Identify the state agency responsible for administering
trademark applications and registrations.
„„ Describe the key substantive state trademark
registration requirements.
„„ Describe the key benefits of state registration.

Trademark Laws: Georgia
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„„ Merely descriptive, deceptively misdescriptive, primarily
geographically descriptive or geographically deceptively
misdescriptive 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 or
trade name previously used in Georgia by another and not
abandoned and when applied to the applicant’s goods or
services 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 is
not abandoned and when applied to the applicant’s goods or
services are likely to cause confusion or mistake or to deceive.
However, an applicant may obtain a registration if the applicant
can prove it is the owner of a concurrent federal registration for
a mark covering an area including Georgia (Ga. Code Ann. §
10-1-441(7) (2012)).).
Other Key Substantive Registration Requirements
To 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 as
the date when the mark was first used in Georgia.
Key benefits of state registration
Procedural
Ownership of a Georgia state trademark registration does not
afford any procedural benefits.
Substantive
The Georgia statute provides for a civil cause of action for
trademark infringement as well as statutory damages (see
Question 3).
For the text of the Georgia Code, see the Georgia General
Assembly website.
registration term
A Georgia state trademark registration is effective for ten years
from the registration date (Ga. Code Ann. § 10-1-445 (2012)).
Renewal Requirements
A Georgia state trademark registration may be renewed every ten
years by filing an application and submitting a renewal fee of $15
within six months before the expiration of the current ten-year
term. The mark must be in current use in Georgia to be eligible
for renewal. (Ga. Code Ann. § 10-1-445 (2012) and Georgia
Secretary of State’s Renewal Application Form.)
Assembly website.
State Statutory and Common Law
Trademark Infringement Causes of
Action
Elements of the Cause of Action
Georgia trademark registrants have a cause of action for
trademark infringement against any person who:
„„ Uses, without the registrant’s consent, any reproduction,
counterfeit, copy or colorable imitation of a state registered
trademark or service mark in connection with the sale, offering
for sale or advertising of any goods or services where the use is
likely to:
„„ cause confusion or mistake; or
„„ deceive about the source of origin of such goods or services.
„„ Reproduces, counterfeits, copies or colorably imitates
any registered trademark or service mark and applies the
reproduction, counterfeit, copy or colorable imitation to
labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be sold or distributed in Georgia
with the goods or services.
(Ga. Code Ann. § 10-1-450 (2012).)
Remedies
Successful plaintiffs in an action for infringement of a registered
state trademark may recover:
„„ Liquidated damages of $10,000 if:
„„ the infringement has been committed without consent of the
registered 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 cause
confusion, 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 and
the key registration renewal requirements.
3. Does your state have a statute that provides a trademark
infringement cause of action? If so, describe:
„„ The elements of the cause of action.
„„ The available remedies.
„„ Any statutory defenses or exemptions.

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State Anti-dilution Law
Common Law
There is no common law cause of action for dilution in Georgia.
Statute
Georgia’s anti-dilution statute is codified in Section 451(b) of
Article 16 of Title 10 of the Official Code of Georgia Annotated (Ga.
Code Ann. § 10-1-451(b) (2012)).
Registration Requirements
The statute protects against dilution of both registered and
unregistered trademarks (Giant Mart Corp. v. Giant Discount
Foods, 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 Recognized
Georgia’s anti-dilution statute recognizes dilution by:
„„ Blurring (Golden Bear Int’ l, Inc. v. Bear U.S.A., Inc., 969
F. Supp. 742, 747-48 (N.D. Ga. 1996); Pepsico, Inc. v. #1
Wholesale, 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); Original
Appalachian Artworks vs. Topps Chewing Gum, Inc., 642 F.
Supp. 1031, 1039-40 (N.D. Ga. 1986)).
Distinctiveness, Strength or Fame
A mark must be distinctive to be protected under Georgia’s anti-
dilution statute. To be considered distinctive, the mark must be at
least descriptive with a secondary meaning. The statute does not
require:
„„ 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).)
Assembly website.
6. For the anti-dilution law listed in Question 5, please list
the elements of a cause of action, including whether a
claim requires any of:
„„ Actual or likelihood of dilution.
„„ Likelihood of confusion.
„„ Competition between the parties.
Common Law
„„ Seizure of counterfeit goods.
(Ga. Code Ann. §§ 10-1-450 and 10-1-451 (2012).)
Statutory Defenses or Exemptions
The Georgia statute does not provide for any defenses or
exemptions.
Assembly website.
Georgia recognizes a claim for common law trademark
infringement (SCQuARE Int’l, Ltd., v. BBDO Atlanta, Inc., 455 F.
Supp. 2d 1347, 1365 (N.D. Ga. 2006)).
Elements of a Cause of Action
To establish common law trademark infringement, a plaintiff
must prove:
„„ The defendant’s use of a mark or name that is the same or
confusingly similar to plaintiff’s mark.
„„ Likelihood of confusion.
(SCQuARE Int’l, Ltd., at 1365.)
Key Lanham Act Distinctions
The standards governing common law trademark infringement
under Georgia law are similar to those under the federal Lanham
Act (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 law
trademark infringement? If so, describe:
„„ Any significant differences between the state
common law claim and a claim for infringement of an
unregistered mark under Section 43(a) of the Lanham
Act.
5. Does your state have an anti-dilution statute or
recognize a dilution cause of action under common law? If
so, please describe for any statute or common law claim:
„„ The nature of dilution protected against, including
whether the law protects against any dilution by blurring
or dilution by tarnishment.
„„ Any significant differences between the state
common law claim and a claim for infringement of an
unregistered mark under Section 43(a) of the Lanham
Act.
„„ Whether distinctiveness, strength or fame of the
trademark is required for a mark to be protected in your
jurisdiction.

Statute
Actual or Likelihood of Dilution
Georgia’s anti-dilution statute imposes liability for use of a mark
that is the same or similar to another mark where the use creates
a likelihood of dilution (Ga. Code Ann. § 10-1-451(b) (2012)).
Likelihood of Confusion
The statute expressly excludes confusion as a requirement for
liability (Ga. Code Ann. § 10-1-451(b) (2012)).
Competition between the Parties
The statute expressly excludes competition between the parties as
a requirement for liability (Ga. Code Ann. § 10-1-451(b) (2012)
and Question 5).
Assembly website.
7. For the anti-dilution law listed in Question 5, please
describe any tests set out in the statute or applied by
courts to assess likely or actual dilution.
Common Law
Statute
Dilution by Blurring
There is no test to determine dilution by blurring. However, one
court stated that dilution by blurring can occur “where the public
sees the mark used widely on all kinds of products” (Original
Appalachian Artworks, Inc., at 1039).
Dilution by Tarnishment
To 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’s
commercial 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, please
describe any available remedies for violations.
Common Law
Statute
Georgia’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)).
Assembly website.
9. For the anti-dilution law listed in Question 5, what
statutory exemptions or defenses are available to defend
against these claims?
Common Law
Statute
The Georgia anti-dilution statute does not set out any exemptions
or defenses. A Georgia federal court interpreting the statute
found that the statute provides First Amendment free-speech
protections. The court stated that tarnishment caused merely by
an editorial or artistic parody satirizing a complainant’s product or
its 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 describe
any significant distinctions between the applicable state
law and the federal Trademark Dilution Revision Act,
including differences in the available remedies.
Common Law
Statute
Courts have observed that the analysis of dilution under the state
and 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 Statute
11. Does your state have a civil anti-counterfeiting statute
with a private right of action? If so, please identify the
statute and describe:
„„ Available remedies.
„„ Any statutory exemptions or defenses.

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Georgia does not have a specific anti-counterfeiting statute with a
private right of action. However, state law provides a cause of
action relating to counterfeits and imitations of marks registered
under the Georgia registration statute (Ga. Code Ann. § 10-1-450
(2012) and Question 3).
Standing Requirements
Only the owner of a mark registered under the Georgia registration
statute 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)).
Remedies
Remedies available for counterfeiting include:
„„ Destruction of goods, articles or other matter bearing the
counterfeit 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 trademark
are also available for counterfeiting (see Question 3).
Statutory Exemptions or Defenses
The statute does not set out any defenses or exemptions.
However, a person who causes the seizure of goods that are not
counterfeits will be held liable for costs and damages proximately
caused 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, that
person 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)).
Assembly website.
State Unfair Competition and
Deceptive Trade Practices Statutes
12. Does your state have any unfair competition or
deceptive trade practices statutes with a private right of
action? 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. § 23-2-55
Prohibited Conduct
The statute prohibits any:
„„ Attempt to encroach upon the business of a trader or other
person 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 of
which is to deceive the public so as to “pass off” the goods or
business of one person as and for the goods or business of
another (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 statute
prohibits any attempt to encroach on another business by using
trademarks, 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 Action
Any person injured by the prohibited conduct has standing to
sue under the statute. The statute does not require any direct or
actual market competition between the parties. (Kay Jewelry Co. v.
Kapiloff, 49 S.E.2d 19, 20 (Ga. 1948).)
Remedies
A 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 Claims
The statute does not set out any defenses or exemptions.
Uniform Deceptive Trade Practices Act: Ga. Code
Ann. §§ 10-1-370 to 10-1-375
Prohibited Conduct
Under Georgia’s Uniform Deceptive Trade Practices Act
(GUDTPA), a person engages in a deceptive trade practice if, in
the 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 or
services; or
„„ affiliation, connection or association with or certification by
another.
„„ Uses deceptive representations or designations of geographic
origin in connection with goods or services.
„„ Represents that goods or services have sponsorship, approval,
characteristics, ingredients, uses, benefits or quantities that
they 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 are
deteriorated, altered, reconditioned, reclaimed, used or
secondhand.

„„ 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 false
or misleading representation of fact.
„„ Advertises goods or services with intent not to:
„„ sell them as advertised; or
„„ supply reasonably expectable public demand, unless the
advertisement discloses a limitation of quantity.
„„ Makes false or misleading statements of fact concerning the
reasons for, existence of or amounts of price reductions.
„„ Engages in any other conduct that similarly creates a likelihood
of confusion or of misunderstanding.
(Ga. Code Ann. § 10-1-372(a) (2012).)
Standing Requirements for a Private Action
To have standing to seek injunctive relief under the GUDTPA, a
plaintiff must show that he is likely to be damaged in the future by
some deceptive trade practice of the defendant (Vie v. Wachovia
Bank, N.A., No. 1:11-CV-3620 (N.D. Ga. Apr. 6, 2012)).
Remedies
The GUDTPA authorizes:
„„ Injunctive relief.
„„ Costs, unless a court rules otherwise.
„„ Attorneys’ fees if:
„„ the party complaining of a deceptive trade practice brought
the action knowing it to be groundless; or
„„ the party charged with a deceptive trade practice willfully
engaged 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 Claims
The GUDTPA exempts:
„„ Conduct in compliance with the orders or rules of a statute
administered by a federal, state or local governmental agency.
„„ Publishers, broadcasters, printers or other persons engaged in
the dissemination of information or reproduction of printed or
pictorial matters who publish, broadcast or reproduce material
without knowledge of its deceptive character.
(Ga. Code Ann. § 10-1-374(a) (2012).)
The GUDTPA also exempts from liability the use of a service
mark, trademark, certification mark, collective mark, trade name
or 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).)
Assembly website.
13. For each statute listed in Question 12, please describe
the elements of a cause of action.
Code Ann. § 23-2-55
To maintain a claim for trade name use or infringement, a plaintiff
must show:
„„ It has a trade name.
„„ That defendant did or attempted to encroach on plaintiff’s
business through the use of the plaintiff’s trade name.
„„ That defendant intended to deceive and mislead the public
through the use of plaintiff’s trade name.
(Ga. Code Ann. § 23-2-55 (2012).)
Intent to deceive may also be presumed. A court will presume
intent to deceive if it is shown that:
„„ The defendant was put on notice or had knowledge of the
plaintiff’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 (5th
Cir. 1961).)
Ann. §§ 10-1-370 to 10-1-375
The elements to sustain a GUDTPA claim generally are the same
as those required to establish trademark infringement under the
federal Lanham Act (Energy Four, Inc. v. Dornier Med. Sys., Inc.,
765 F. Supp. 724, 731 (N.D. Ga. 1991)). All that is required is that
the use of a name causes confusion to others using reasonable
care (Giant Mart, at 686). For more information on federal
trademark claims, see Practice Note, Trademark Infringement and
Dilutions, Claims and Defenses (www.practicallaw.com/1-508-1019).
Assembly website.
14. For each statute listed in Question 12, please describe
the statute’s applicability to trademark infringement and
dilution claims.
Code Ann. § 23-2-55
Trademark Infringement
Trademark infringement in the nature of “passing off” is
actionable (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).

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Elements of a Common Law unfair competition
cause of action
Under Georgia law, unfair competition stands for “the doctrine
that one cannot pass off his goods as those of another”
(Nationwide Adver. Serv. v. Thompson Recruitment Adver., 359
S.E.2d 737, 741 (Ga. App. Ct. 1987)).
In Georgia, the test for a common law claim of unfair competition
is whether the defendant has created a likelihood of confusion
about the source or sponsorship of a product (Scientific-Atlanta
Inc. v. Fenley, No. Civ.1:95CV1584–JEC (N.D. Ga. Jan. 14, 1997)).
Key Lanham Act Distinctions
There are no significant distinctions between unfair competition
claims under Georgia common law and related claims under the
federal Lanham Act.
Other Significant State Statutory and
Common Law Trademark-related Claims
16. Please describe any significant statutory or common
law causes of action in your state available to trademark
owners that are not already described in the preceding
questions (for example, false advertising and trade libel).
Statute
False Advertising: Ga. Code Ann. §§ 10-1-420 to 10-1-427
Georgia has a false advertising statute that prohibits false or
fraudulent statements in advertising (Ga. Code Ann. §§ 10-1-
420 to 10-1-427 (2012)). Georgia courts evaluate the state false
advertising statute under the same standards as a federal Lanham
Act 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 false
advertising 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 interstate
commerce.
„„ The plaintiff has been or is likely to be injured as a result of the
false 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. Code
Ann. § 10-1-421(c) (2012)).
Trade Name Infringement
Section 23-2-55 of the Georgia Code is the recognized statutory
protection against trade name infringement (Corrpro Cos., Inc. v.
Meier, No. 3:03-CV-31 (M.D. Ga. Oct. 5, 2007)).
Dilution
This statute has not been applied to address dilution, and Georgia
has a separate anti-dilution statute (see Question 5).
Ann. §§ 10-1-370 to 10-1-375
Trademark Infringement
The Uniform Deceptive Trade Practices Act also provides relief
for victims of trademark or trade name infringement (see Giant
Mart, at 685). Analyses of the GUDTPA and of false designation
of origin under Section 43(a) of the Lanham Act are “coextensive”
(Optimum Techs., Inc. v. Henkel Consumer Adhesives, Inc., 496
F.3d 1231, 1248 n.11 (11th Cir. 2007)). This statute prohibits
trademark infringement in the nature of “passing off” and trade
name infringement (Giant Mart, at 685; Future Prof’ls, Inc. v.
Darby, 470 S.E.2d 644, 646 (Ga. 1996)).
Trade Name Infringement
Georgia protects trade names by both common law and statute.
The GUDTPA entitles a person to protect a trade name when
another person’s use of a similar name causes likelihood of
confusion or of misunderstanding as to the source, sponsorship,
approval or certification of goods or services (Future Prof’ls, Inc.,
at 646).
Dilution
The Georgia Uniform Deceptive Trade Practices Act has not been
applied to address dilution and Georgia has a separate anti-
dilution statute (see Question 5).
Assembly website.
15. Please identify the principal common law unfair
competition causes of action in your state that are
available to trademark owners and for each cause of action
describe:
„„ Any significant distinctions between claims under state
common law and claims under the Section 43(a) of the
Lanham Act.

17. For each statute or common law claim identified in
Questions 3, 4, 5, 11 and 12, identify any applicable
statute of limitations and how it is calculated.
Statutory and Common Law Trademark Infringement
There are no specific statutes of limitation for Georgia statutory
and common law trademark infringement claims. However,
Georgia recognizes a laches affirmative defense to trademark
infringement. To establish a laches defense under Georgia law, the
defendant 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 which
the plaintiff knew or should have known it had a provable
infringement claim and stops when the defendant is notified of the
plaintiff’s objections (Kason Indus., at 1206).
The US Court of Appeals for the Eleventh Circuit has adopted
a doctrine of presumption of laches. Laches is presumed if a
plaintiff brings a trademark claim after the expiration of the statute
of limitations period of an analogous statute (Kason Indus., at
1204). The Eleventh Circuit has applied the four-year statute
of limitations from a Georgia statute analogous to the Georgia
Uniform Deceptive Trade Practices Act (GUDTPA) and held that
GUDTPA’s presumption of laches period should be four years for
trademark infringement claims (Kason Indus., at 1205).
Dilution: Ga. Code Ann. § 10-1-451
There is no specific statute of limitations for claims arising under
the Georgia anti-dilution statute. However, a laches defense may
apply to these claims (see Statutory and Common Law Trademark
Infringement).
Code Ann. § 23-2-55: Ga. Code Ann. § 23-2-55
There is no specific statute of limitations for claims arising under
the Georgia anti-dilution statute. However, a laches defense may
apply to these claims (see Statutory and Common Law Trademark
Infringement).
Ann. §§ 10-1-370 to 10-1-375
The GUDTPA does not contain a statute of limitations. However,
a federal court applied a four-year statute of limitations to claims
under the GUDTPA (Kason Indus., at 1205).
Fair Business Practices Act: Ga. Code Ann. §§ 10-1-
390 to 10-1-407
Prohibited Conduct
This statute prohibits the following trademark-related activities:
„„ Passing off goods or services as those of another.
„„ Causing actual confusion or actual misunderstanding as to the
source, sponsorship, approval or certification of goods or services.
„„ Causing actual confusion or actual misunderstanding as to
affiliation, connection or association with or certification by
another.
„„ Using deceptive representations or designations of geographic
origin in connection with goods or services.
„„ Representing that goods or services have sponsorship,
approval, characteristics, ingredients, uses, benefits or
quantities that they do not have or that a person has a
sponsorship, approval, status, affiliation or connection that he
or she does not have.
(Ga. Code Ann. § 10-1-393 (2012).)
Georgia courts evaluate claims under the Fair Business Practices
Act (FBPA) under the same test as claims under the federal
Lanham Act (Gold Kist, Inc., at 1303). However, the FBPA was
enacted 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 FBPA
requires 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 10-1-472
This statute prohibits the unauthorized use of the name, style or
emblem, including any colorable imitation, of any benevolent,
fraternal, social, humane or charitable organization (Ga. Code
Ann. § 10-1-470 (2012)). Remedies for violations of this statute
include injunctive relief (Ga. Code Ann. § 10-1-471 (2012)). A
violation of this law is also punishable as a misdemeanor (Ga.
Code Ann. § 10-1-472 (2012)).
Common Law
Unjust Enrichment
To prove a claim of unjust enrichment under Georgia law, a
plaintiff 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).)
Assembly website.

9
Computer Systems Protection Act: Ga. Code Ann. §§
16-9-90 to 16-9-94
This statute prohibits anyone from using a trademark or
copyrighted symbol on the internet without the permission
of the trademark or copyright owner for the purpose of false
identification (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-
427
See Question 16: False Advertising.
Assembly website.
Pending Legislation
19. Please describe any legislation pending in your state
that would materially impact civil trademark enforcement
and protection.
There is no relevant pending legislation in Georgia.
Contact Us
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747 Third Avenue, 36th Floor
New York, NY 10017
646.562.3405
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www.practicallaw.com
Assembly website.
State Criminal Trademark Laws
18. Does your state have any criminal trademark protection
statutes? If so, please identify the statute and describe the
offense.
Trademark Counterfeiting: Ga. Code Ann. § 10-1-454
This statute prohibits any person from:
„„ Knowingly and willfully counterfeiting any mark without the
consent of the owner.
„„ Knowingly possessing any tool, machine, device or other
reproduction instrument with the intent to reproduce any
counterfeited mark.
„„ Selling, reselling, offering for sale or resale, purchasing or
possessing with the intent to sell or resell any goods he knows
or should have known bear a counterfeit trademark.
„„ Selling or offering to sell any service that is sold in conjunction
with a counterfeit service mark, knowing the mark to be
counterfeited.
(Ga. Code Ann. § 10-1-454(b) (2012).)
Counterfeited marks include any mark or design that is identical
to, substantially indistinguishable from or an imitation of a
trademark 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 Act
of 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 goods
or services.
(Ga. Code Ann. § 10-1-454(c) (2012).)
Unauthorized Use of Certain Names and Emblems:
Ga. Code Ann. §§ 10-1-470 to 10-1-472
See Question 16: Unauthorized Use of Certain Names and
Emblems.
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