"Infringement" defined.

- Infringement upon the real name or trade name of an individual or corporation is such a colorable imitation of the name that the general public, in the exercise of ordinary care, might think that it is the name of the individual or corporation first appropriating the name. Multiple Listing Serv., Inc. v. Metropolitan Multi-List, Inc., 223 Ga. 837, 159 S.E.2d 52 (1968), later appeal, 225 Ga. 129, 166 S.E.2d 356 (1969).

Test for trade name infringement.

- In a suit to enjoin alleged trade name infringement, the test seems to be whether the public is likely to be deceived and a person of ordinary caution misled. Gordy v. Dunwody, 210 Ga. 810, 83 S.E.2d 7 (1954), commented on in 17 Ga. B.J. 395 (1955).

Basis of relief under O.C.G.A. § 10-1-451 is that use of same or similar name by another injures business reputation or dilutes distinctive quality of trade name even in absence of direct competition between parties or of confusion as to source of goods or services. Giant Mart Corp. v. Giant Disct. Foods, Inc., 247 Ga. 775, 279 S.E.2d 683 (1981).

Registration required for relief.

- Registration of a logo as a service mark or trademark is a prerequisite to relief under O.C.G.A. §§ 10-1-450 and10-1-451. Diedrich v. Miller & Meier & Assocs., 254 Ga. 734, 334 S.E.2d 308 (1985).

Limited liability company was entitled to summary judgment on the investment partnership's claims under § 43(a) (15 U.S.C. § 1125(a)) of the Lanham Act and O.C.G.A. §§ 10-1-450 and10-1-451 that the company infringed the trademarks and trade dress associated with three brands because: (1) the trademark was not registered with the Georgia Secretary of State pursuant to §§ 10-1-450 and10-1-451; and (2) there was no evidence to show that the trade dress associated with the products at issue was inherently distinctive as a matter of law and there was no evidence that the mark had secondary meaning identifying the investment partnership as the source of any products. Brown Bark II, L.P. v. Dixie Mills, LLC, 732 F. Supp. 2d 1353 (N.D. Ga. 2010).

Registration cannot deprive another of vested right.

- Provisions as to registration were permissive and not mandatory, and a compliance by one with the provisions thereof cannot operate to deprive another of the use of a trade name or trademark previously acquired, although not thus registered, or to nullify the provisions of former Code 1933, § 37-712, that 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, was a fraud for which equity will grant relief. Womble v. Parker, 208 Ga. 378, 67 S.E.2d 133 (1951).

Long use may give special meaning to words.

- While generic names, geographical names, and names composed of words which are merely descriptive are incapable of exclusive appropriation, words or names which have a primary meaning of their own, such as words descriptive of the goods, service, or place where they are made, or the name of the maker, may nevertheless, by long use in connection with the business of the particular trade, come to be understood by the public as designating the goods, service, or business of a particular trader. Multiple Listing Serv., Inc. v. Metropolitan Multi-List, Inc., 223 Ga. 837, 159 S.E.2d 52 (1968), later appeal, 225 Ga. 129, 166 S.E.2d 356 (1969).

Secondary meaning may attach to generic and geographical names and names composed of merely descriptive words which, by long use in connection with business or trade, come to be understood by public as designating goods, services, or business of a particular trader. Giant Mart Corp. v. Giant Disct. Foods, Inc., 247 Ga. 775, 279 S.E.2d 683 (1981).

Long use may entitle words to protection.

- While geographical names and words which are merely descriptive are not generally the subject of exclusive appropriation as trademarks or trade names, such names and words when used so long and exclusively by a trader, manufacturer, or producer that the names and words are generally understood to designate a particular business or merchandise, may acquire a secondary signification or meaning indicative not only of the place of manufacture, but of the name of the manufacturer or producer, or of the character of the product, so that the name or title thus employed, including the geographical name and descriptive words, may be the subject of protection against unfair competition in trade, and authorize equity to enjoin a newcomer competitor from the appropriation and use of a trade name or trademark bearing such resemblances to those of the pioneer as to be likely to produce uncertainty and confusion, and to pass off the goods or business of one as those of the other. Womble v. Parker, 208 Ga. 378, 67 S.E.2d 133 (1951).

A person by long and exclusive use may acquire a trade name; and when thus acquired, such trade name is as much descriptive of the manufacturer or producer as is the person's own name, and the infringement of such trade name of an individual will be enjoined by a court of equity when a proper case is made. Womble v. Parker, 208 Ga. 378, 67 S.E.2d 133 (1951).

To obtain injunction under O.C.G.A. § 10-1-451, plaintiff must show, first, that trade name sought to be protected is one of such originality as to be capable of exclusive appropriation, or one not capable of exclusive appropriation but which has acquired secondary meaning. Giant Mart Corp. v. Giant Disct. Foods, Inc., 247 Ga. 775, 279 S.E.2d 683 (1981).

Subsequent knowing use of name presumed fraudulent.

- If the person first appropriating and using a name has a clear right to the name's use, the name's subsequent use by another, knowing of the right, is presumed by law to be fraudulent. Womble v. Parker, 208 Ga. 378, 67 S.E.2d 133 (1951).

Direct market competition need not be alleged and shown.

- It is not an essential prerequisite to the granting of equitable relief in an action for infringement of a trade name that the plaintiff allege and show that the alleged infringer is in actual and direct market competition with the plaintiff in the sense that the parties deal in competitive goods or are engaged in a competitive business. Kay Jewelry Co. v. Kapiloff, 204 Ga. 209, 49 S.E.2d 19 (1948), commented on in Ga. B.J. 224 (1948).

Confusingly similar names.

- Plaintiffs made requisite showing for injunction that trade name reacquired upon foreclosure of their security interest had acquired a secondary meaning and that defaulting buyers knowingly had adopted a confusingly similar name, which had in fact confused plaintiffs' former customers. Reis v. Ralls, 250 Ga. 721, 301 S.E.2d 40 (1983).

Trademark owners were entitled to summary judgment on infringement under 15 U.S.C. §§ 1114 and 1125 and O.C.G.A. § 10-1-451 because the mark used by former agents of the owners was decidedly similar, there was a substantial likelihood of consumer confusion, and the agents intended to capitalize on the reputation and to infringe on the market for money orders and money transfers created by the owners. W. Union Holdings, Inc. v. E. Union, Inc., 316 Fed. Appx. 850 (11th Cir. 2008)(Unpublished).

Infringement of trade names

- Chapter 11 debtor was entitled to a preliminary injunction under the Lanham Act, 11 U.S.C. § 1125(a), and O.C.G.A. §§ 10-1-373 and10-1-451, against a competing user of the debtor's trade name "Reliable Heating and Air" because the debtor clearly demonstrated a substantial likelihood of success on the merits of the debtor's claims and demonstrated that the debtor would suffer irreparable harm if an injunction were not issued. Reliable Air, Inc. v. Jape (In re Reliable Air, Inc.), Bankr. (Bankr. N.D. Ga. Sept. 14, 2007).

Liability for use of trade names and labels of comic book characters by singing telegram company established. DC Comics Inc. v. Unlimited Monkey Bus., Inc., 598 F. Supp. 110 (N.D. Ga. 1984).

Internet advertising.

- Because the plaintiff corporation's claim under Georgia's Anti-Dilution Act, O.C.G.A. § 10-1-451, would likely place no greater discovery burdens on the defendant corporation than would the development of the factual record upon the plaintiff's claims alleging that the defendant violated federal trademark laws by contracting with an Internet search engine for a sponsored link to the defendant's website each time an Internet user performed a search for the plaintiff's name, the defendant's motion to dismiss the O.C.G.A. § 10-1-451 claim was denied when the court denied the defendant's motion to dismiss the federal claims on the ground that the novel questions presented in the suit could not be determined as a matter of law at this early stage of the case. Rescuecom Corp. v. Computer Troubleshooters USA, Inc., 464 F. Supp. 2d 1263 (N.D. Ga. 2005).

Corporation was not required to prove actual damages but could seek the award of profits illegally derived by the first purchaser's infringement by showing the first purchaser's gross sales and shifting the burden to the first purchaser to provide an accounting to show which sales, if any, were not derived from the infringement, along with deductible expenses, to show profits derived from the infringement; doing so promoted the statutory intent to make infringement unprofitable, to deprive the infringer of unjust enrichment, and to deter similar activity. DeCelles v. Morgan Cleaners & Laundry, Inc., 261 Ga. App. 690, 583 S.E.2d 462 (2003).

Failure to challenge issue in appellate brief.

- Promoter did not in the promoter's brief challenge the adverse judgment on the promoter's dilution of trademark claim under O.C.G.A. § 10-1-451 which the district court did not base on a likelihood of confusion. Therefore, because the appellate court deemed issues not clearly briefed on appeal to be abandoned, it left the state-law dilution of trademark portion of the judgment undisturbed. Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931 (11th Cir. 2010).

Preliminary injunction granted.

- Tattoo studio owner showed that it had achieved secondary meaning in the name Inkaholics in the metro Atlanta area before the defendants commenced using the similar name Inkaholiks in that area (and evidence of resulting confusion); the trial court did not err in granting the owner a preliminary injunction in the metro Atlanta area. Inkaholiks Luxury Tattoos Georgia, LLC v. Parton, 324 Ga. App. 769, 751 S.E.2d 561 (2013).

Interlocutory injunction properly granted in service mark dispute.

- In a suit alleging, inter alia, the infringement of state registered service marks, the trial court properly granted the plaintiff interlocutory relief because it was undisputed that the plaintiff was the last entity to hold the named pageants prior to the interlocutory injunction hearing, regardless of any issues of registration of service marks or abandonment or assignment by the defendant; thus, the status quo was the plaintiff being the host of the events using the marks. India-American Cultural Ass'n v. iLink Professionals, Inc., 296 Ga. 668, 769 S.E.2d 905 (2015).

Cited in Rolls-Royce Motors, Ltd. v. A & A Fiberglass, Inc., 428 F. Supp. 689 (N.D. Ga. 1977); Scientific Applications, Inc. v. Energy Conservation Corp. of Am., 436 F. Supp. 354 (N.D. Ga. 1977); Robert B. Vance & Assocs. v. Baronet Corp., 487 F. Supp. 790 (N.D. Ga. 1979); Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 489 F. Supp. 174 (N.D. Ga. 1980).

Required showing in dilution claims.

- In order to prevail under a dilution claim in which it is alleged that a defendant has used the same or similar marks in a way that creates an undesirable, unwholesome, or unsavory mental association with the plaintiff's mark, the plaintiff needs to show that the marks in question are similar and that the contested use is likely to injure the plaintiff's commercial reputation or dilute the distinctive quality of the plaintiff's marks. Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F. Supp. 1031 (N.D. Ga. 1986).

Dilution claim evidence held sufficient for preliminary injunction.

- Evidence which included testimony indicating that any association of defendant's "Garbage Pail Kids" with plaintiff's "Cabbage Patch Kids" would disparage the wholesome image plaintiff attempted to present for plaintiff's doll products was sufficient to show that plaintiff was substantially likely to prevail on the merits as to plaintiff's anti-dilution claim for purposes of obtaining a preliminary injunction. Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F. Supp. 1031 (N.D. Ga. 1986).

Am. Jur. 2d.

- 74 Am. Jur. 2d, Trademarks and Tradenames, § 125 et seq.

C.J.S.

- 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, §§ 353 et seq., 364 et seq.

ALR.

- Right to protection against simulation of physical appearance or arrangement of place of business, or vehicle, 17 A.L.R. 784; 28 A.L.R. 114.

Right to protection against use of trademark or trade name beyond the territory in which plaintiff operates, 36 A.L.R. 922.

Right of one to protection of trade name which he does not use, 48 A.L.R. 1257.

Right to enjoin competitor from selling his produce to dealers with whom plaintiff has exclusive contract or in such form as to enable dealers to palm off competitor's produce on customers as that of plaintiff, 84 A.L.R. 472.

Protection of business or trading corporation against use of same or similar name by another corporation, 115 A.L.R. 1241.

Actual competition as necessary element of trademark infringement or unfair competition, 148 A.L.R. 12.

Doctrine of secondary meaning in the law of trademarks and of unfair competition, 150 A.L.R. 1067.

Jurisdiction of state court over actions involving patents, 167 A.L.R. 1114.

Damages recoverable for wrongful registration of trade-mark, 26 A.L.R.2d 1184.

Right of charitable or religious association or corporation to protection against use of same or similar name by another, 37 A.L.R.3d 277.

Use of "family name" by corporation as unfair competition, 72 A.L.R.3d 8.

World wide web domain as violating state trademark protection statute or state unfair trade practices act, 96 A.L.R.5th 1.

"Post-sale confusion" in trademark or trade dress infringement actions under § 43 of the Lanham Trade-Mark Act (15 USCA § 1125), 145 A.L.R. Fed. 407.

When is trade dress "inherently distinctive" for purposes of trade dress infringement actions under § 43(a) of Lanham Act (15 USCA § 1125(a)) - Cases after Two Pesos, 161 A.L.R. Fed. 327.

What constitutes "famous mark" for purposes of federal Trademark Dilution Act, 15 U.S.C.A. § 1125(c), which provides remedies for dilution of famous marks, 165 A.L.R. Fed. 625.

Application of doctrine of "reverse passing off" under Lanham Act, 194 A.L.R. Fed. 175.

Lanham Act trademark infringement actions in internet and website context, 197 A.L.R. Fed. 17.

Construction and Application of Trademark Registration Prohibition on Disparaging Marks Under 15 U.S.C.A. § 1052(a), 15 A.L.R. Fed. 3d 8.

Nominative fair use defense in trademark law, 84 A.L.R. Fed. 2d 217.