2020 Georgia Code
Title 10 - Commerce and Trade
Chapter 1 - Selling and Other Trade Practices
Article 16 - Trademarks, Service Marks, and Trade Names
Part 1 - Registration and Use of Trademarks and Service Marks
§ 10-1-440. When Trademark or Service Mark Used in State; Definitions

1. As used in this part, the term:
   1. "Applicant" means the person filing an application for registration of a trademark or service mark under this part and the legal representatives, successors, or assigns of the person filing an application for registration of a trademark or service mark under this part.
   2. "Person" means any individual, firm, partnership, corporation, association, union, or other organization.
   3. "Registrant" means the person to whom the registration of a trademark or service mark under this part is issued and the legal representatives, successors, or assigns of the person to whom the registration of a trademark or service mark under this part is issued.
   4. "Service mark" means any word, name, symbol, or device or any combination thereof adopted and used by a person to identify the services of one person and to distinguish them from the services of others.
   5. "Trademark" means any word, name, symbol, or device or any combination thereof adopted and used by a person to identify goods made or sold by him and to distinguish them from goods made or sold by others.
2. For the purposes of this part, a trademark shall be deemed to be "used" in this state when it is placed in any manner on the goods or their containers or on the tags or labels affixed thereto and such goods are sold or otherwise distributed in this state.
3. For the purposes of this part, a service mark shall be deemed to be "used" in this state when it is used to identify the services of one person and to distinguish them from the services of others and such services are sold or otherwise rendered in this state.

(Ga. L. 1952, p. 134, § 6; Ga. L. 1963, p. 463, § 1.)

- For article, "Trademark Monopolies," see 48 Emory L.J. 367 (1999). For article, "Post-Creation Checklist for Georgia Business Entities," see 9 Ga. St. B. J. 24 (2004).

JUDICIAL DECISIONS

"Trademark" distinguished from "trade name".

- Provisions of the law restrict the meaning and function of a trademark to the identification of goods and their manufacturer. However, a trade name primarily identifies the owner or operator of a business and may also be used to identify the goods handled by such owner. Gordy v. Dunwody, 209 Ga. 627, 74 S.E.2d 886 (1953), later appeal, 210 Ga. 810, 83 S.E.2d 7 (1954), commented on in 17 Ga. B.J. 395 (1955).

- Trial court did not err in granting the Georgia Lottery Corporation (GLC) and a company summary judgment in trademark holders' action alleging trademark infringement because Georgia law did not authorize the holders' claims against GLC since the latter used the logo first and extensively on a series of lottery games over ten years when the holders' efforts to market their game were a conspicuous failure, and since there was no likelihood of confusion between the two games; O.C.G.A. § 10-1-440 requires the bona fide use of a trademark to make out a claim concerning the trademark's infringement. Kyle v. Ga. Lottery Corp., 304 Ga. App. 635, 698 S.E.2d 12 (2010).

Court of appeals did not err in affirming an order granting the Georgia Lottery Corporation summary judgment as to a trademark infringement claim on the ground that the trademark holders did not make a "bona fide" use of their mark in commerce sufficient to establish protectable rights in the mark because the court of appeals properly ruled that O.C.G.A. § 10-1-440 required the bona fide use of a trademark to make out a claim concerning the trademark's infringement; interpreting O.C.G.A. § 10-1-440(b) to contain a bona fide use requirement is neither inconsistent with the statutory definition nor does it improperly expand the application of the statute because it merely excludes from the definition of "use" any dishonest or bad faith motives on the part of the person obtaining and using a trademark, a result not inconsistent with the language of the General Assembly. Kyle v. Ga. Lottery Corp., 290 Ga. 87, 718 S.E.2d 801 (2011).

- 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 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).

- Author failed to state a claim for trademark infringement based on the alleged wrongful appropriation of materials from the author's autobiography, wardrobe, and personal history by the creators of a line of perfumes as it was not sufficiently alleged that the consumers were likely to be misled into associating the author and the author's sibling with the perfumes. Mobley v. Fermont-Langlais, F.3d (11th Cir. July 18, 2017)(Unpublished).

Cited in O'Jay Spread Co. v. Hicks, 185 Ga. 507, 195 S.E. 564 (1938); McHugh Fuller Law Group, PLLC v. PruittHealth, Inc., 300 Ga. 140, 794 S.E.2d 150 (2016).

OPINIONS OF THE ATTORNEY GENERAL

"Goods" defined.

- Word "goods" as used in this section is not defined therein, but is used to mean wares, merchandise, and commodities bought and sold by merchants and traders. 1958-59 Op. Att'y Gen. p. 398.

- It has been said by appellate courts in other jurisdictions that a "trademark" consists of the use in trade of a mark placed upon goods manufactured (or sold) by a particular person and placed in market with such marks for sale and trade and does not become a trademark until it is actually stamped on or otherwise becomes affixed to goods to be sold. It may be broadly defined as a mark by which the wares of the owner are known in trade, and its objects are two-fold: first, to protect the party using it from competition of inferior articles; and, second, to protect the public from imposition of fraud, and this latter is one of the basic concepts of all trademark law. 1957 Op. Att'y Gen. p. 330.

- Holding company, owning outright certain corporations and the controlling stocks in others, which manufactures, sells, or distributes for sale no commodity whatsoever may not register as a trademark a word used on a gummed label obviously intended for the applicant's own use and a director of subsidiaries for the applicant and such subsidiaries, when there is no indication, claim, or evidence of any kind that either of the items are sold, offered for sale, or distributed to any one other than subsidiaries and no indication that they pay for them directly or indirectly, and there is no showing that the use of the name on either piece of material is designed to or does protect the manufacturer or the public against inferior goods of others in the marts of trade. 1958-59 Op. Att'y Gen. p. 398.

RESEARCH REFERENCES

Am. Jur. 2d.

- 74 Am. Jur. 2d, Trademarks and Tradenames, § 1 et seq.

23A Am. Jur. Pleading and Practice Forms, Trademarks and Tradenames, § 1.

- 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, §§ 1, 217, 218.

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

Granting of "naked" or unsupervised license to third party as abandonment of trademark, 118 A.L.R. Fed. 211.