================================================================== SOURCE-PROVENANCE HEADER (added on capture; statute text follows below the rule) Citation: O.C.G.A. Title 10, Chapter 1, Article 16 (Trademarks, Service Marks, and Trade Names), 10-1-440 through 10-1-493 Article/coverage: Trademarks & service marks (Part 1, 10-1-440..454); fraternal/charitable names & emblems (Part 2, 10-1-470..472); trade-name registration (Part 3, 10-1-490..493). NOTE: in the r73 codification these provisions carry the article label 'Article 16'; some editions label the trademark part 'Article 15'. Section citations (10-1-440 et seq., 10-1-490 et seq.) are unchanged. Jurisdiction: Georgia - Official Code of Georgia Annotated (O.C.G.A.) Source: law.resource.org public-domain OCGA machine-readable release https://law.resource.org/pub/us/code/ga/gov.ga.ocga.2019.08.21.release.73.zip (OCGA Release 73, 2019-08-21; per-title ODT extracted from the full-code release zip) Extracted from: gov.ga.ocga.2019.08.21.r73.title.10.odt (content.xml -> plain text) Currency: 2019 codification (Release 73). Post-2019 amendments NOT reflected. Public-domain basis: Georgia v. Public.Resource.Org, 590 U.S. 255 (2020). Retrieved: 2026-07-10 ================================================================== TITLE 10 COMMERCE AND TRADE ARTICLE 16 TRADEMARKS, SERVICE MARKS, AND TRADE NAMES Annotations Cross references. - Fraudulent nature of use of similar trademarks, names, or devices with intention of deceiving and misleading public, § 23-2-55. Use of word "Georgia" in trademark, trade name, service mark, or advertisement in connection with meat or meat food products, § 26-2-115. Authority of pharmacists to substitute generic drugs for brand name drugs, § 26-4-80 et seq. Law reviews. - For article, "The Public's Domain in Trademark Law: A First Amendment Theory of the Consumer," see 43 Ga. L. Rev. 451 (2009). For article, "The Globalization of Intellectual Property Rights: Trips, Bits, and the Search for Uniform Protection," see 38 Ga. J. Int'l & Comp. L. 265 (2010). For article, "Intellectual Property Checklist for Marketing the Recording Artist Online," see 18 J. Intell. Prop. L. 541 (2011). For article, "Clearing the Way: Acquiring Rights and Approvals for Music Use in Media Applications," see 18 J. Intell. Prop. L. 561 (2011). For note, "The Ongoing Royalty: What Remedy Should a Patent Holder Receive When a Permanent Injunction Is Denied," see 43 Ga. L. Rev. 543 (2009). For note, "How to Get the Mona Lisa in your Home Without Breaking the Law: Painting a Picture of Copyright Issues with Digitally Accessible Museum Collections," see 18 J. Intell. Prop. L. 567 (2011). For comment, "Pay What You Like - No, Really: Why Copyright Law Should Make Digital Music Free for Noncommercial Uses," see 58 Emory L.J. 1495 (2009). RESEARCH REFERENCES Trade Dress (Packaging) Simulation, 3 POF2d 577. Cancellation of Registration of Trademark That Has Become Generic Term, 37 POF2d 67. Wrongful Use of Another's Trademark or Tradename, 47 POF2d 643. Monetary Recovery for Trademark Infringement, 17 POF3d 609. Common-Law Trademarks or Tradename Rights in Geographical Areas of Prior Use, 22 POF3d 623. Proof of Distinctiveness and Secondary Meaning of Trademark or Service Mark, 22 POF3d 691. Proof of Music Sampling in Copyright Infringement, 26 POF3d 537. Proof of Extraordinary Remedies for Copyright Infringement, 28 POF3d 379. Extraordinary Remedies for Trademark Infringement, 36 POF3d 255. Misuse of Intellectual Property, 37 POF3d 315. Dilution of a Trademark, 38 POF3d 1. Proof of Copyright Infringement by Unauthorized Use of Software, 52 POF3d 107. Proof of Trade Dress Infringement, 55 POF3d 383. Proof of Copyright Infringement by File Sharing, 63 POF3d 1. Proof of Facts Establishing a Claim for Trade Libel or Product Disparagement under Sec. 43(a) of the Lanham Act, 15 U.S.C.A. Section 1125(a), 79 POF3d 1. Establishing Liability for Trademark Infringement by Use of Website Metatags, 84 POF3d 93. —————————— PART 1 REGISTRATION AND USE OF TRADEMARKS AND SERVICE MARKS Annotations Law reviews. - For article, "Trademarks and Semantics: The Use and Misuse of Trademarks in Dictionaries and Trade Journals," see 6 Ga. L. Rev. 311 (1972). For article, "Trademark Litigation," a brief overview of the subject, see 17 Ga. St. B. J. 158 (1981). For article, "Protecting the Trademark 'Coca-Cola' in the Courts," see 28 Ga. St. B. J. 42 (1991). For article, "Elite Personnel, Inc. v. Elite Personnel Services, Inc.: Issues of Registration and Suggestion in Trademark Law," see 7 Ga. St. U.L. Rev. 551 (1991). For article, "Acquisition of Trademark Rights Under United States and Georgia Law," see 7 Ga. St. B. J. 14 (2001). For article, "Confusion Codified: Why Trademark Remedies Make No Sense," see 17 J. Intell. Prop. L. 245 (2010). For comment, "Irrational Science Breeds Irrational Law," see 67 Emory L.J. 889 (2018). JUDICIAL DECISIONS Part similar to federal statute. - Georgia law on registration of trademarks and service marks provides for a civil action to remedy infringements and is, both in structure and purpose, similar to the law's federal counterpart. Rolls-Royce Motors, Ltd. v. A & A Fiberglass, Inc., 428 F. Supp. 689 (N.D. Ga. 1977). Registration provisions are permissive. - Provisions concerning registration are permissive rather than mandatory. Giant Mart Corp. v. Giant Disct. Foods, Inc., 247 Ga. 775, 279 S.E.2d 683 (1981). Trade name previously acquired by another. - Registration will not operate to deprive another of previously acquired trade name. Giant Mart Corp. v. Giant Disct. Foods, Inc., 247 Ga. 775, 279 S.E.2d 683 (1981). Cited in Howard Stores Corp. v. Howard Clothing, Inc., 308 F. Supp. 70 (N.D. Ga. 1969). RESEARCH REFERENCES 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 of manufacturer, producer, or wholesaler to control resale price, 19 A.L.R. 925; 32 A.L.R. 1087l; 103 A.L.R. 1331; 125 A.L.R. 1335. Application of principles of unfair competition to artistic or literary property, 19 A.L.R. 949. "Drive it yourself" and similar phrases in connection with business of renting automobiles as subject of trademark or protection upon ground of unfair competition, 43 A.L.R. 213. Trademark or tradename as asset in case of bankruptcy, insolvency, or assignment for benefit of creditors, 44 A.L.R. 706. Rights and remedies as between originator of uncopyrighted advertising plan or slogan, or his assignee, and another who uses or infringes the same, 104 A.L.R. 1357; 157 A.L.R. 1436.3 Conflict of laws, with respect to trademark infringement or unfair competition, including the area of conflict between federal and state law, 148 A.L.R. 139. Stockholders' rights to patent, copyright, or trademark owned by corporation on dissolution thereof, 30 A.L.R.2d 938. Trade dress simulation of cosmetic products as unfair competition, 86 A.L.R.3d 505. Unfair competition by imitation in sign or design of business place, 86 A.L.R.3d 884. Name appropriation by employer or former employer, 52 A.L.R.4th 156. 10-1-440. When trademark or service mark used in state; definitions. Statute text (a) 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. (b) 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. (c) 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. History (Ga. L. 1952, p. 134, § 6; Ga. L. 1963, p. 463, § 1.) Annotations Law reviews. - 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). Bona fide use of trademark required to make infringement claim. - 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). Interlocutory injunction proper in dispute over service marks. - 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). Consumer confusion. - 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. "Trademark" defined. - 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. Word not used in trade nor used for protection not registerable as trademark. - 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. C.J.S. - 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, §§ 1, 217, 218. ALR. - 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. 10-1-441. Registration of marks - When marks ineligible. Statute text A trademark or service mark shall be entitled to registration unless it: (1) Consists of or comprises immoral, deceptive, or scandalous matter; or (2) Consists of or comprises matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols or bring them into contempt or disrepute; or (3) Consists of or comprises 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 or any simulation thereof, except that a county, municipality, or board of education shall be entitled to have registered its own service mark for use by that county, municipality, or board of education; or (4) Consists of or comprises the name, signature, or portrait of any living individual, except with his or her written consent; or (5) Consists of a mark which: (A) When applied to the goods or services of the applicant, is merely descriptive or deceptively misdescriptive of them; or (B) When applied to the goods or services of the applicant, is primarily geographically descriptive or deceptively misdescriptive of them; or (C) Is primarily merely a surname; or (6) Consists of or comprises a trademark or service mark which so resembles a trademark or service mark registered in this state or a trademark or service mark or trade name previously used in this state by another and not abandoned as to be likely, when applied to the goods or services of the applicant, to cause confusion or mistake or to deceive; or (7) Consists of or comprises a trademark or service mark which so resembles a trademark or service mark registered in the United States Patent Office by another and not abandoned as to be likely, when applied to the goods or services of the applicant, to cause confusion or mistake or to deceive; provided, however, that, should the applicant prove that the applicant is the owner of a concurrent registration in the United States Patent Office of a trademark or service mark covering an area including this state, the applicant may register such trademark or service mark under this part. History (Ga. L. 1893, p. 134, § 3; Civil Code 1895, § 1738; Civil Code 1910, § 1990; Code 1933, § 106-102; Ga. L. 1949, p. 949, § 1; Ga. L. 1952, p. 134, § 7; Ga. L. 1963, p. 463, § 2; Ga. L. 1988, p. 1458, § 1; Ga. L. 1993, p. 462, § 1; Ga. L. 1994, p. 97, § 10.) Annotations Law reviews. - For article, "A Patent and Trademark Primer," see 15 Ga. St. B. J. 58 (1978). JUDICIAL DECISIONS Cited in O'Jay Spread Co. v. Hicks, 185 Ga. 507, 195 S.E. 564 (1938); Mazdak Auto Towing & Serv., Inc. v. Midcontinental Group, Inc., 231 Ga. App. 859, 501 S.E.2d 44 (1998). OPINIONS OF THE ATTORNEY GENERAL Designs and plans may not be registered as trademarks. 1952-53 Op. Att'y Gen. p. 269. Items neither sold nor designed to protect against inferior goods. - 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 directory 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. Confederate flag may not be used as trademark. 1957 Op. Att'y Gen. p. 328. Changed trademark should be reregistered. - When a union label registered as a trademark has been changed somewhat, the label should be reregistered, showing all changes therein. 1952-53 Op. Att'y Gen. p. 514. RESEARCH REFERENCES Am. Jur. 2d. - 74 Am. Jur. 2d, Trademarks and Tradenames, § 55 et seq. C.J.S. - 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, §§ 192, 219. ALR. - Right, in absence of self-imposed restraint, to use one's own name for business purposes to detriment of another using the same or a similar name, 47 A.L.R. 1189; 44 A.L.R.2d 1156. 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. Reverse confusion doctrine under state trademark law, 114 A.L.R.5th 129. Initial interest confusion doctrine under Lanham Trademark Act, 183 A.L.R. Fed. 553. Reverse confusion doctrine under Lanham Trademark Act, 187 A.L.R. Fed. 271. 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. 10-1-442. Registration of marks - Application; fee. Statute text (a) Subject to the limitations set forth in this part, any person who adopts and uses a trademark or service mark in this state may file in the office of the Secretary of State, on a form to be furnished by the Secretary of State, an application for registration of such trademark or service mark setting forth, but not limited to: (1) The name and business address of the person applying for such registration and, if a corporation, the state of incorporation; (2) A description of the goods or services in connection with which the mark is used and the mode or manner in which the mark is used in connection with such goods or services and the class in which such goods or services fall; and (3) The date when the trademark or service mark was first used anywhere, as well as the date when it was first used in this state by the applicant or his predecessor in business. (b) The application shall be signed and verified by the applicant and shall be accompanied by a specimen or facsimile of such trademark or service mark in triplicate and a filing fee of $15.00, payable to the Secretary of State. History (Ga. L. 1893, p. 134, § 3; Civil Code 1895, § 1738; Civil Code 1910, § 1990; Code 1933, § 106-102; Ga. L. 1949, p. 949, § 1; Ga. L. 1952, p. 134, § 8; Ga. L. 1963, p. 463, § 3; Ga. L. 1983, p. 1470, § 1; Ga. L. 1987, p. 563, § 1.) Annotations Law reviews. - For article, "A Patent and Trademark Primer," see 15 Ga. St. B. J. 58 (1978). JUDICIAL DECISIONS 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). Cited in O'Jay Spread Co. v. Hicks, 185 Ga. 507, 195 S.E. 564 (1938); Rolls-Royce Motors, Ltd. v. A & A Fiberglass, Inc., 428 F. Supp. 689 (N.D. Ga. 1977). RESEARCH REFERENCES Am. Jur. 2d. - 74 Am. Jur. 2d, Trademarks and Tradenames, § 73. C.J.S. - 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, §§ 191, 220, 221. ALR. - Damages recoverable for wrongful registration of trademark, 26 A.L.R.2d 1184. 10-1-443. Registration of marks - Classes of goods and services for purposes of registration; application limited to one class. Statute text (a) The following general classes of goods are established for convenience of administration of this part, but not to limit or extend the applicant's or registrant's rights; and a single application for registration of a trademark may include any or all goods upon which the trademark is actually being used comprised in a single class; but in no event shall a single application include goods upon which the trademark is being used which fall within different classes of goods. The classes are as follows: (1) Raw or partly prepared materials; (2) Receptacles; (3) Baggage, animal equipments, portfolios, and pocketbooks; (4) Abrasives and polishing materials; (5) Adhesives; (6) Chemicals and chemical compositions; (7) Cordage; (8) Smokers' articles, not including tobacco products; (9) Explosives, firearms, equipments, and projectiles; (10) Fertilizers; (11) Inks and inking materials; (12) Construction materials; (13) Hardware and plumbing and steamfitting supplies; (14) Metals and metal castings and forgings; (15) Oils and greases; (16) Paints and painters' materials; (17) Tobacco products; (18) Medicines and pharmaceutical preparations; (19) Vehicles; (20) Linoleum and oiled cloth; (21) Electrical apparatus, machines, and supplies; (22) Games, toys, and sporting goods; (23) Cutlery, machinery, and tools, and parts thereof; (24) Laundry appliances and machines; (25) Locks and safes; (26) Measuring and scientific appliances; (27) Horological instruments; (28) Jewelry and precious metal ware; (29) Brooms, brushes, and dusters; (30) Crockery, earthenware, and porcelain; (31) Filters and refrigerators; (32) Furniture and upholstery; (33) Glassware; (34) Heating, lighting, and ventilating apparatus; (35) Belting, hose, machinery packing, and nonmetallic tires; (36) Musical instruments and supplies; (37) Paper and stationery; (38) Prints and publications; (39) Clothing; (40) Fancy goods, furnishings, and notions; (41) Canes, parasols, and umbrellas; (42) Knitted, netted, and textile fabrics and substitutes therefor; (43) Thread and yarn; (44) Dental, medical, and surgical appliances; (45) Soft drinks and carbonated waters; (46) Foods and ingredients of foods; (47) Wines; (48) Malt beverages and liquors; (49) Distilled alcoholic liquors; (50) Merchandise not otherwise classified; (51) Cosmetics and toilet preparations; (52) Detergents and soaps. (b) The following general classes of services are established for convenience of administration of this part, but not to limit or extend the applicant's or registrant's rights; and a single application for registration of a service mark may include any or all services in connection with which the service mark is actually being used comprised in a single class; but in no event shall a single application include services in connection with which the service mark is being used which fall within different classes of services. The classes are as follows: (1) Miscellaneous; (2) Advertising and business; (3) Insurance and financial; (4) Construction and repair; (5) Communication; (6) Transportation and storage; (7) Material treatment; (8) Education and entertainment. History (Ga. L. 1952, p. 134, § 14; Ga. L. 1963, p. 463, § 9.) Annotations RESEARCH REFERENCES Am. Jur. 2d. - 74 Am. Jur. 2d, Trademarks and Tradenames, §§ 3, 30 et seq. C.J.S. - 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, §§ 5, 217, 218. 10-1-444. Registration of marks. Statute text Upon compliance by the applicant with the requirements of this part, the Secretary of State shall cause a certificate of registration to be issued and delivered to the applicant. The certificate of registration shall be issued under the signature of the Secretary of State and the seal of the state and it shall show the name and business address and, if a corporation, the state of incorporation, of the person claiming ownership of the trademark or service mark; the date claimed for the first use of the trademark or service mark anywhere and the date claimed for the first use of the trademark or service mark in this state; the class of goods or services and a description of the goods or services on which the trademark or service mark is used; a reproduction of the trademark or service mark; the registration date; and the term of the registration. History (Ga. L. 1893, p. 134, § 3; Civil Code 1895, § 1738; Civil Code 1910, § 1990; Code 1933, § 106-102; Ga. L. 1949, p. 949, § 1; Ga. L. 1952, p. 134, § 9; Ga. L. 1963, p. 463, § 4; Ga. L. 1982, p. 3, § 10; Ga. L. 2011, p. 99, § 15/HB 24.) Annotations Editor's notes. - Ga. L. 2011, p. 99, § 101/HB 24, not codified by the General Assembly, provides that the Act shall apply to any motion made or hearing or trial commenced on or after January 1, 2013. Law reviews. - For article, "Evidence," see 27 Ga. St. U.L. Rev. 1 (2011). For article on the 2011 amendment of this Code section, see 28 Ga. St. U.L. Rev. 1 (2011). JUDICIAL DECISIONS 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 trade-marks, 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). Cited in O'Jay Spread Co. v. Hicks, 185 Ga. 507, 195 S.E. 564 (1938); Rolls-Royce Motors, Ltd. v. A & A Fiberglass, Inc., 428 F. Supp. 689 (N.D. Ga. 1977). RESEARCH REFERENCES Am. Jur. 2d. - 74 Am. Jur. 2d, Trademarks and Tradenames, § 55 et seq. C.J.S. - 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, § 243 et seq. 10-1-445. Registration of marks - Duration; renewal; fee. Statute text (a) Registration of a trademark or service mark under this part shall be effective for a term of ten years from the date of registration; and, upon application filed within six months prior to the expiration of such term on a form to be furnished by the Secretary of State, the registration may be renewed for a like term. A renewal fee of $15.00, payable to the Secretary of State, shall accompany the application for renewal of the registration. (b) A trademark or service mark registration may be renewed for successive periods of ten years in like manner. (c) The Secretary of State shall notify registrants of trademarks or service marks under this part of the necessity of renewal within the year next preceding the expiration of the ten years from the date of registration by writing to the last known address of the registrants. History (Ga. L. 1893, p. 134, § 3; Civil Code 1895, § 1738; Civil Code 1910, § 1990; Code 1933, § 106-102; Ga. L. 1949, p. 949, § 1; Ga. L. 1952, p. 134, § 10; Ga. L. 1963, p. 463, § 5; Ga. L. 1983, p. 1470, § 2.) Annotations RESEARCH REFERENCES Am. Jur. 2d. - 74 Am. Jur. 2d, Trademarks and Tradenames, § 55 et seq. C.J.S. - 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, § 242. 10-1-446. Assignment of mark and registration; recordation; fee; new certificate. Statute text Any trademark or service mark and its registration under this part shall be assignable with the good will of the business in which the trademark or service mark is used or with that part of the good will of the business connected with the use of and symbolized by the trademark or service mark. Assignment shall be by instruments in writing duly executed and may be recorded with the Secretary of State upon the payment of a fee of $15.00, payable to the Secretary of State, who, upon recording of the assignment, shall issue in the name of the assignee a new certificate for the remainder of the term of the registration or of the last renewal thereof. An assignment of any registration under this part shall be ineffective as against a subsequent purchaser for value without notice unless it is recorded with the Secretary of State prior to the subsequent purchase. History (Ga. L. 1952, p. 134, § 11; Ga. L. 1963, p. 463, § 6; Ga. L. 1983, p. 1470, § 3.) Annotations Law reviews. - For article, "Community Defense of Union Free Status," regarding broadening the legal recognition of the interest "good will," see 32 Mercer L. Rev. 679 (1981). RESEARCH REFERENCES Am. Jur. 2d. - 74 Am. Jur. 2d, Trademarks and Tradenames, § 10 et seq. C.J.S. - 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, § 253. ALR. - Payment of stock subscriptions in good will, 24 A.L.R. 1285. Right, in absence of self-imposed restraint, to use one's own name for business purposes to detriment of another using the same or a similar name, 47 A.L.R. 1189; 44 A.L.R.2d 1156. Sale of business or of real estate upon which business is conducted as transferring good will by implication, in absence of covenant not to compete, 65 A.L.R.2d 502. 10-1-447. Record of registrations and renewals to be kept by Secretary of State. Statute text The Secretary of State shall keep for public examination a record of all trademarks or service marks registered or renewed under this part. History (Ga. L. 1952, p. 134, § 12; Ga. L. 1963, p. 463, § 7.) Annotations RESEARCH REFERENCES C.J.S. - 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, § 193. 10-1-448. Cancellation of registrations. Statute text (a) The Secretary of State shall cancel from the register: (1) Any registration concerning which the Secretary of State shall receive a voluntary request for cancellation thereof from the registrant or the assignee of record; (2) All registrations granted under this part and not renewed in accordance with the provisions of this part; (3) Any registration concerning which a court of competent jurisdiction shall find that: (A) The registered trademark or service mark has been abandoned; (B) The registrant is not the owner of the trademark or service mark; (C) The registration was granted improperly; (D) The registration was obtained fraudulently; or (E) The registered trademark or service mark is so similar to a trademark or service mark registered by another person in the United States Patent Office prior to the date of the filing of the application for registration by the registrant under this part, and not abandoned, as to be likely to cause confusion or mistake or to deceive; provided, however, that, should the registrant prove he is the owner of a concurrent registration of his trademark or service mark in the United States Patent Office covering an area including this state, the registration under this part shall not be canceled; or (4) Any registration which a court of competent jurisdiction shall order canceled. (b) A fee of $15.00, payable to the Secretary of State, shall accompany any voluntary request for cancellation. History (Ga. L. 1952, p. 134, § 13; Ga. L. 1963, p. 463, § 8; Ga. L. 1983, p. 1470, § 4.) Annotations JUDICIAL DECISIONS Cited in Rolls-Royce Motors, Ltd. v. A & A Fiberglass, Inc., 428 F. Supp. 689 (N.D. Ga. 1977). RESEARCH REFERENCES Am. Jur. 2d. - 74 Am. Jur. 2d, Trademarks and Tradenames, § 70 et seq. C.J.S. - 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, § 194. ALR. - Abandonment of trademark or trade name, 3 A.L.R.2d 1226. Reverse confusion doctrine under state trademark law, 114 A.L.R.5th 129. When does product become generic term so as to warrant cancellation of registration of mark, pursuant to § 14 of Lanham Act (15 USCA § 1064), 156 A.L.R. Fed. 131. Reverse confusion doctrine under Lanham Trademark Act, 187 A.L.R. Fed. 271. Application of defense of laches in action to cancel trademark, 64 A.L.R. Fed. 2d 255. 10-1-449. Damages for fraud or false representation in registering mark. Statute text Any person who shall for himself or on behalf of any person procure the filing or registration of any trademark or service mark in the office of the Secretary of State under the provisions of this part, by knowingly making any false or fraudulent representation or declaration, verbally or in writing, or by any other fraudulent means, shall be liable to pay all damages sustained in consequence of such filing or registration, to be recovered by or on behalf of the party injured thereby in any court of competent jurisdiction. History (Ga. L. 1952, p. 134, § 15; Ga. L. 1963, p. 463, § 10.) Annotations JUDICIAL DECISIONS Cited in Rolls-Royce Motors, Ltd. v. A & A Fiberglass, Inc., 428 F. Supp. 689 (N.D. Ga. 1977). RESEARCH REFERENCES Am. Jur. 2d. - 74 Am. Jur. 2d, Trademarks and Tradenames, § 64. C.J.S. - 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, § 368. ALR. - Doctrine of secondary meaning in the law of trademarks and of unfair competition, 150 A.L.R. 1067. Damages recoverable for wrongful registration of trademark, 26 A.L.R.2d 1184. Reverse confusion doctrine under state trademark law, 114 A.L.R.5th 129. Stay of Patent Litigation Pending Covered Business Method Review, 30 A.L.R. Fed. 3d 1. Civil Liability of Sitting United States President for Unofficial Acts, 30 A.L.R. Fed. 3d 2. Award of Damages or Profits Under § 35(a) of Lanham Act (15 U.S.C.A. § 1117(a)) for False Designation of Origin and False Descriptions (15 U.S.C.A. § 1125(a)), 31 A.L.R. Fed. 3d 13. 10-1-450. Civil action for infringement of registered mark. Statute text Subject to Code Section 10-1-452, any person who shall: (1) Use, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a trademark or service mark registered under this part in connection with the sale, offering for sale, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services; or (2) Reproduce, counterfeit, copy, or colorably imitate any such trademark or service mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale or other distribution in this state of such goods or services; shall be liable to a civil action by the owner of such registered trademark or service mark for liquidated damages in the amount of $10,000.00, if such act has been committed with knowledge that the trademark or service mark has been registered under this part and such act has been committed without previously obtaining the consent of the owner thereof, and for any or all of the remedies provided in subsection (a) of Code Section 10-1-451, except that actual damages shall not be recoverable when liquidated damages are sought, and except that under paragraph (2) of this Code section the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such trademark or service mark is intended to be used to cause confusion or mistake or to deceive. History (Ga. L. 1893, p. 134, § 4; Civil Code 1895, § 1739; Civil Code 1910, § 1991; Code 1933, § 106-103; Ga. L. 1952, p. 134, § 16; Ga. L. 1963, p. 463, § 11; Ga. L. 1988, p. 1458, § 2.) Annotations Law reviews. - For article, "Corporate Software Piracy: Is Your Client (or Your Firm) Liable?," see 22 Ga. St. B. J. 30 (1985). JUDICIAL DECISIONS Part similar to federal statute. - Georgia law on registration of trademarks and service marks provides for a civil action to remedy infringements and is, both in structure and purpose, similar to its federal counterpart. Rolls-Royce Motors, Ltd. v. A & A Fiberglass, Inc., 428 F. Supp. 689 (N.D. Ga. 1977). Actions involving trademarks or service marks are limited to infringements of registered marks. Miller & Meier & Assocs. v. Diedrich, 174 Ga. App. 249, 329 S.E.2d 918, aff'd in part, rev'd in part on other grounds, 254 Ga. 734, 334 S.E.2d 308 (1985). Registration required. - Registration of a logo as a service mark or trademark is a prerequisite to relief under O.C.G.A. §§ 10-1-450 and 10-1-451. 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 and 10-1-451 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 and 10-1-451; 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). Marks found to be substantially similar. - Summary judgment was inappropriate as to trademark infringement liability because while the "Xylem" mark was at least suggestive, the marks were substantially similar, and the trademark holder documented over 100 instances of actual confusion resulting from misdirected checks, phone calls, faxes, and emails; the court could not find that no reasonable juror would find there was no confusion created by the accused infringer's use of the Xylem name and mark. ITT Corp. v. Xylem Group, LLC, F. Supp. 2d (N.D. Ga. Aug. 5, 2013). 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 Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833 (11th Cir. 1983); Lone Star Steakhouse & Saloon v. Longhorn Steaks, Inc., 106 F.3d 355 (11th Cir. 1997); Mazdak Auto Towing & Serv., Inc. v. Midcontinental Group, Inc., 231 Ga. App. 859, 501 S.E.2d 44 (1998). RESEARCH REFERENCES Am. Jur. 2d. - 74 Am. Jur. 2d, Trademarks and Tradenames, §§ 78 et seq., 85 et seq., 125 et seq. 23A Am. Jur. Pleading and Practice Forms, Trademarks and Tradenames, §§ 73 et seq., 75 et seq. C.J.S. - 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, § 368. 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, in absence of self-imposed restraint, to use one's own name for business purposes to detriment of another using the same or a similar name, 47 A.L.R. 1189; 44 A.L.R.2d 1156. Liability for innocent infringement of trademark or trade name, 96 A.L.R. 651. Protection of business or trading corporation against use of same or similar name by another corporation, 115 A.L.R. 1241. 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 trademark, 26 A.L.R.2d 1184. World wide web domain as violating state trademark protection statute or state unfair trade practices act, 96 A.L.R.5th 1. Reverse confusion doctrine under state trademark law, 114 A.L.R.5th 129. Application of secondary meaning test in action for trade dress infringement under § 43(e) of Lanham Act (15 USCS § 1125(a)), 87 A.L.R. Fed. 15. Parody as trademark or tradename infringement, 92 A.L.R. Fed. 25. Admissibility and weight of consumer survey in litigation under trademark opposition, trademark infringement, and false designation of origin provisions of Lanham Act (15 USCS §§ 1063, 1114, and 1125), 98 A.L.R. Fed. 20. "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. Liability as vicarious or contributory infringer under Lanham Act - Modern cases, 152 A.L.R. Fed. 573. 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. Parody as trademark or tradename dilution or infringement, 179 A.L.R. Fed. 181. 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. Validity, construction, and application of State Trademark Counterfeiting Statutes, 63 A.L.R. 6th 303. 10-1-451. Injunctions against infringement; recovery of profits and damages; destruction or disposal of counterfeit trademarks; seizure. Statute text (a) Any owner of a trademark or service mark registered under this part may proceed by action to enjoin the manufacture, use, display, or sale of any counterfeits or imitations thereof; and any court of competent jurisdiction may grant injunctions to restrain such manufacture, use, display, or sale as may be by the court deemed just and reasonable and may require the defendants to pay to such owner all profits derived from such wrongful manufacture, use, display, or sale, and all damages suffered by reason of such wrongful manufacture, use, display, or sale, or both profits and damages. The enumeration of any right or remedy in this part shall not affect a registrant's right to prosecute under any penal law of this state. (b) Every person, association, or union of working men adopting and using a trademark, trade name, label, or form of advertisement may proceed by action; and all courts having jurisdiction thereof shall grant injunctions to enjoin subsequent use by another of the same or any similar trademark, trade name, label, or form of advertisement if there exists a likelihood of injury to business reputation or of dilution of the distinctive quality of the trademark, trade name, label, or form of advertisement of the prior user, notwithstanding the absence of competition between the parties or of confusion as to the source of goods or services, except that this Code section shall not deprive any party of any vested lawful rights acquired prior to March 4, 1955. (c) If, in any action brought under this Code section, the court determines that a trademark or service mark is counterfeit, the court may order the destruction of all such trademarks or service marks and all goods, articles, or other matter bearing the trademarks or service marks, which are in the possession or control of the court or any party to the action; or, after obliteration of the counterfeit trademark or service mark, the court may order the disposal of any of those materials to the State of Georgia, a civil claimant, an eleemosynary institution, or any appropriate private person other than the person from whom the materials were obtained. (d) (1) The court, upon motion or upon ex parte application by a plaintiff in an action to enjoin the manufacture, use, display, or sale of counterfeits, may order seizure of the counterfeit goods from persons manufacturing, displaying for sale, or selling the goods, upon a showing of good cause and a probability of success on the merits and upon the posting of bond. The amount of the bond shall be set in accordance with the probable recovery of damages and costs under subsection (e) of this Code section if it were ultimately determined that the goods seized were not counterfeit. If it appears from an ex parte application that there is good reason for proceeding without notification to the defendant, the court may, for good cause shown, waive the requirement of notice for the ex parte proceeding. The order of seizure shall be served at the time of seizure upon any person from whom seizure is effected. The order shall specifically set forth: (A) The date or dates on which the seizure is ordered to take place; (B) A description of the counterfeit goods to be seized; (C) The identity of the persons or class of persons to effect seizure; (D) A description of the location or locations at which seizure is to occur; and (E) A hearing date not more than ten court days after the last date on which seizure is ordered at which any person from whom goods are seized may appear and seek release of the seized goods. (2) The order shall include a statement advising the person from whom the goods are seized that bond has been filed, informing the person of the right to object to the bond on the grounds that the surety or the amount of the bond is insufficient, and advising the person from whom the goods are seized that such objection to the bond shall be made within 30 days after the date of seizure. (e) (1) Any person who causes seizure of goods which are not counterfeits shall be liable in an amount equal to the following: (A) Any damages proximately caused to any person having a financial interest in the seized goods by the seizure of goods which are not counterfeit; (B) Costs incurred in defending against seizure of noncounterfeit goods; and (C) Upon a showing that the person causing the seizure to occur acted in bad faith, expenses, including reasonable attorneys' fees expended in defending against the seizure of any noncounterfeit or noninfringing goods. (2) A person seeking a recovery pursuant to this subsection may join any surety on a bond posted pursuant to subsection (d) of this Code section, and any judgment of liability shall bind the person liable and the surety jointly and severally, but the liability of the surety shall be limited to the amount of the bond. (3) Any person entitled to seek recovery under this subsection may, within 30 days after the date of seizure, object to the bond on the grounds that the surety or the amount of bond is insufficient. History (Ga. L. 1893, p. 134, § 3; Civil Code 1895, § 1739; Civil Code 1910, § 1991; Code 1933, § 106-103; Ga. L. 1952, p. 134, § 17; Ga. L. 1955, p. 453, § 1; Ga. L. 1963, p. 463, § 12; Ga. L. 1984, p. 944, § 1.) Annotations Law reviews. - For article, "A Patent and Trademark Primer," see 15 Ga. St. B. J. 58 (1978). For article criticizing the judicial decisions in the trademark cases of Armstrong Cork Co. v. World Carpets, Inc., 597 F.2d 496 (5th Cir. 1979) and Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252 (5th Cir. 1980), see 34 Mercer L. Rev. 915 (1983). JUDICIAL DECISIONS ANALYSIS General Consideration Dilution of Distinctive Quality General Consideration "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 and 10-1-451. 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 and 10-1-451 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 and 10-1-451; 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 and 10-1-451, 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). Dilution of Distinctive Quality Term "distinctive quality" in subsection (b) of former Code 1933, § 106-103 meant that the trade name must be one of such originality as to be capable of exclusive appropriation, or one not capable of exclusive appropriation but which acquired a secondary meaning in order to come within the protection of the law. Dolphin Homes Corp. v. Tocomc Dev. Corp., 223 Ga. 455, 156 S.E.2d 45 (1967). "Dilution of the distinctive quality" under subsection (b) of former Code 1933, § 106-103 occurs when the use of the trademark by the subsequent user will lessen the uniqueness of the prior user's mark, with the possible future result that a strong mark may become a weak mark. Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252 (5th Cir.), cert. denied, 449 U.S. 899, 101 S. Ct. 268, 66 L. Ed. 2d 129 (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). RESEARCH REFERENCES 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. 10-1-452. Common-law rights in marks not affected. Statute text Nothing in this part shall adversely affect the rights or the enforcement of rights in trademarks or service marks acquired in good faith at any time at common law. History (Ga. L. 1952, p. 134, § 18; Ga. L. 1963, p. 463, § 13.) Annotations JUDICIAL DECISIONS Confusion of names. - Claims for service mark infringement under the federal Lanham Act, the Georgia Uniform Deceptive Trade Practices Act, O.C.G.A. § 10-1-370 et seq., and the Georgia law of unfair competition turn on the same question - confusion of similar names. Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833 (11th Cir. 1983). Common law claim. - Customer was denied summary judgment as to a copyright owner's common law trademark infringement action because O.C.G.A. § 10-1-452 expressly preserved common law trademark rights and the owner produced sufficient evidence to raise a question of fact on the claim as to the likelihood of confusion. SCQuARE Int'l, Ltd. v. BBDO Atlanta, Inc., 455 F. Supp. 2d 1347 (N.D. Ga. 2006). Cited in India-American Cultural Ass'n v. iLink Professionals, Inc., 296 Ga. 668, 769 S.E.2d 905 (2015). RESEARCH REFERENCES Am. Jur. 2d. - 74 Am. Jur. 2d, Trademarks and Tradenames, § 41 et seq. C.J.S. - 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, §§ 1, 198. ALR. - Right of one to protection of tradename which he does not use, 48 A.L.R. 1257. Common-law copyright in the spoken word, 32 A.L.R.3d 618. 10-1-453. Unauthorized and deceitful use of name or seal a misdemeanor. Statute text Any firm, person, corporation, or association who shall use the name or seal of any other person, firm, corporation, or association, in and about the sale of goods or otherwise, not being authorized to use the same, knowing that such use is unauthorized, with intent to deceive the public in the sale of goods, shall be guilty of a misdemeanor. History (Ga. L. 1893, p. 134, § 6; Ga. L. 1895, p. 63, § 2; Penal Code 1895, § 255; Ga. L. 1896, p. 108, § 4; Penal Code 1910, § 257; Code 1933, § 106-9904.) Annotations JUDICIAL DECISIONS Use of another's name with consent. - By the express provisions of this section, the name of a person can be used by another in the conduct of the other's business with the consent of the person whose name is used. Tanner-Brice Co. v. Sims, 174 Ga. 13, 161 S.E. 819 (1931). In absence of statute, the right to use the name of an individual in a corporate trade name without the individual's consent depends entirely on the law in relation to trademarks, trade names, and unfair competition, and for a corporation or an individual to adopt and use as a part of a trade name a personal surname is not unlawful as against an individual having the same surname but not engaged in the same business, even though no one of that name is connected with such corporation or individual, unless the name is adopted or used purposely to mislead the public as to the identity of the corporation with another establishment, and thus cause injury to the latter, or the adoption is prohibited by statute. Tanner-Brice Co. v. Sims, 174 Ga. 13, 161 S.E. 819 (1931). Use of surname. - Right of a corporation to use the surname of another person with the person's consent is not prohibited. Tanner-Brice Co. v. Sims, 174 Ga. 13, 161 S.E. 819 (1931). Use of trade name other than corporate name. - Corporation may acquire right to use trade name other than corporate name in connection with the corporation's business. Tanner-Brice Co. v. Sims, 174 Ga. 13, 161 S.E. 819 (1931). Right to use own name. - In the absence of license, contract, fraud, or estoppel, every man has the right to use the man's own name in any legitimate way. Tanner-Brice Co. v. Sims, 174 Ga. 13, 161 S.E. 819 (1931). A natural person, in the absence of self-imposed restraint, has a right to the honest use of the person's surname in conducting any business, though such use may be detrimental to other individuals of the same name, or to corporations in the charters of which such name forms the whole or an integral part. Tanner-Brice Co. v. Sims, 174 Ga. 13, 161 S.E. 819 (1931). RESEARCH REFERENCES Am. Jur. 2d. - 74 Am. Jur. 2d, Trademarks and Tradenames, § 75 et seq. C.J.S. - 87 C.J.S. Trademarks, Trade-Names, and Unfair Competition, § 153. ALR. - Right to protection in use of initials as a trademark or trade name, or upon the ground of unfair competition, 11 A.L.R. 1286. Right of one to protection of trade name which he does not use, 48 A.L.R. 1257. Validity and effect of contract, unconnected with transfer of any business or professional interest, purporting to grant exclusive right to use one's name or likeness for advertising purposes, 101 A.L.R. 492. Damages recoverable for wrongful registration of trademark, 26 A.L.R.2d 1184. Right to protection of corporate name, as between domestic corporation and foreign corporation not qualified to do business in state, 26 A.L.R.3d 994. Incorporation of company under particular name as creating exclusive right to such name, 68 A.L.R.3d 1168. Use of "family name" by corporation as unfair competition, 72 A.L.R.3d 8. Right to publicize or commercially exploit deceased person's name or likeness as inheritable, 10 A.L.R.4th 1193. 10-1-454. Penalties for forged or counterfeited trademarks, service marks, copyrighted or registered designs, or unauthorized reproductions; forfeiture. Statute text (a) As used in this Code section, the term "forged or counterfeited trademark, service mark, or copyrighted or registered design" means any mark or design which is identical to, substantially indistinguishable from, or an imitation of a trademark, service mark, or copyrighted or registered design which is registered for those types of goods or services with the Secretary of State pursuant to this part or registered on the Principal Register of the United States Patent and Trademark Office or registered under the laws of any other state or protected by the federal Amateur Sports Act of 1978, 36 U.S.C. Section 380, whether or not the offender knew such mark or design was so registered or protected, if the use of such trademark, service mark, or copyrighted or registered design has not been authorized by the owner thereof. The unregistered symbols, emblems, trademarks, insignias, and words covered by the federal Amateur Sports Act of 1978, 36 U.S.C. Section 380, shall be afforded protection under the trademark law in the same manner as registered trademarks, service marks, and copyrighted or registered designs. (b) Any person who knowingly and willfully forges or counterfeits any trademark, service mark, or copyrighted or registered design, without the consent of the owner of such trademark, service mark, or copyrighted or registered design, or who knowingly possesses any tool, machine, device, or other reproduction instrument or material with the intent to reproduce any forged or counterfeited trademark, service mark, or copyrighted or registered design shall be guilty of the offense of trademark, service mark, or copyrighted or registered design counterfeiting and, upon conviction, shall be punished as follows: (1) If the goods or services to which the forged or counterfeit trademarks, service marks, or copyrighted or registered designs are attached or affixed, or in connection with which they are used, or to which the offender intended they be attached or affixed, or in connection with which the offender intended they be used, have, in the aggregate, a retail sale value of $100,000.00 or more, such person shall be guilty of a felony and, upon conviction, shall be punished by imprisonment for not less than five nor more than 20 years and by a fine not to exceed $200,000.00 or twice the retail sale value of the goods or services, whichever is greater; (2) If the goods or services to which the forged or counterfeit trademarks, service marks, or copyrighted or registered designs are attached or affixed, or in connection with which they are used, or to which the offender intended they be attached or affixed, or in connection with which the offender intended they be used, have, in the aggregate, a retail sale value of $10,000.00 or more but less than $100,000.00, such person shall be guilty of a felony and, upon conviction, shall be punished by imprisonment for not less than two nor more than ten years and by a fine not to exceed $20,000.00 or twice the retail sale value of the goods or services, whichever is greater; (3) If the goods or services to which the forged or counterfeit trademarks, service marks, or copyrighted or registered designs are attached or affixed, or in connection with which they are used, or to which the offender intended they be attached or affixed, or in connection with which the offender intended they be used, have, in the aggregate, a retail sale value of less than $10,000.00, such person shall be guilty of a misdemeanor of a high and aggravated nature; or (4) If a person who violates this subsection previously has been convicted of another violation of this subsection, such person shall be guilty of a felony and, upon conviction of the second or subsequent such violation, shall be punished by imprisonment for not less than ten nor more than 20 years and by a fine not to exceed $200,000.00 or twice the retail sale value of the goods or services, whichever is greater. (c) Any person who sells or resells or offers for sale or resale or who purchases and keeps or has in his or her possession with the intent to sell or resell any goods he or she knows or should have known bear a forged or counterfeit trademark or copyrighted or registered design or who sells or offers for sale any service which is sold or offered for sale in conjunction with a forged or counterfeit service mark or copyrighted or registered design, knowing the same to be forged or counterfeited, shall be guilty of the offense of selling or offering for sale counterfeit goods or services and, upon conviction, shall be punished as follows: (1) If the goods or services sold or offered for sale to which the forged or counterfeit trademarks, service marks, or copyrighted or registered designs are attached or affixed, or in connection with which they are used, have, in the aggregate, a retail sale value of $10,000.00 or more, such person shall be guilty of a felony and, upon conviction, shall be punished by imprisonment for not less than one nor more than five years and by a fine not to exceed $50,000.00 or twice the retail sale value of the goods or services, whichever is greater; (2) If the goods or services to which the forged or counterfeit trademarks, service marks, or copyrighted or registered designs are attached or affixed, or in connection with which they are used, have, in the aggregate, a retail sale value of less than $10,000.00, such person shall be guilty of a misdemeanor of a high and aggravated nature; or (3) If a person who violates this subsection previously has been convicted of another violation of paragraph (1) of this subsection, such person shall be guilty of a felony and, upon conviction of the second or subsequent such violation, shall be punished by imprisonment for not less than five nor more than ten years and by a fine not to exceed $100,000.00 or twice the retail sale value of the goods or services, whichever is greater. (d) (1) The State of Georgia finds and declares that the citizens of this state have a right to receive those goods and services which they reasonably believe they are purchasing or for which they contract. The state further finds that the manufacture and sale of counterfeit goods or goods which are not what they purport to be and the offering of services through the use of counterfeit service marks constitutes a fraud on the public and results in economic disruption to the legitimate businesses of this state. In order to protect the citizens and businesses of this state it is necessary to take appropriate actions to remove counterfeit goods from the channels of commerce and prevent the manufacture, sale, and distribution of such goods or the offering of such services through the use of counterfeit service marks. (2) As used in this subsection, the terms "proceeds" and "property" shall have the same meanings as set forth in Code Section 9-16-2. (3) Any property which is, directly or indirectly, used or intended for use in any manner to facilitate a violation of this Code section and any proceeds are declared to be contraband and no person shall have a property right in them. (4) Any property subject to forfeiture pursuant to paragraph (3) of this subsection shall be forfeited in accordance with the procedures set forth in Chapter 16 of Title 9. (e) An owner, officer, employee, or agent who provides, rents, leases, licenses, or sells real property upon which a violation of this Code section occurs shall not be subject to a criminal penalty pursuant to this Code section unless he or she sells or possesses for sale articles such person knows bear a counterfeit trademark or copyrighted or registered design or offers services through the use of a counterfeit service mark or copyrighted or registered design in violation of this Code section. This subsection shall not be construed to abrogate or limit any civil rights or remedies for a trademark or service mark violation. History (Code 1981, § 10-1-454, enacted by Ga. L. 1996, p. 673, § 1; Ga. L. 2015, p. 693, § 3-7/HB 233.) Annotations The 2015 amendment, effective July 1, 2015, in subsection (d), deleted former paragraphs (d)(2) through (d)(6), which read: "(2) For the purposes expressed in paragraph (1) of this subsection, a person who is convicted of or pleads nolo contendere to a felony offense under this Code section shall forfeit to the State of Georgia such interest as the person may have in: "(A) Any goods, labels, products, or other property containing or constituting forged or counterfeit trademarks, service marks, or copyrighted or registered designs or constituting or directly derived from gross profits or other proceeds obtained from such offense; "(B) Any property or any interest in any property, including but not limited to any reproduction equipment, scanners, computer equipment, printing equipment, plates, dies, sewing or embroidery equipment, motor vehicle, or other asset, used to commit a violation of this Code section; and "(C) Any property constituting or directly derived from gross profits or other proceeds obtained from a violation of this Code section. "(3) In any action under this Code section, the court may enter such restraining orders or take other appropriate action, including acceptance of performance bonds, in connection with any interest that is subject to forfeiture. "(4) The court shall order forfeiture of property referred to in paragraph (2) of this subsection if the trier of fact determines beyond a reasonable doubt that such property is subject to forfeiture. "(5) The provisions of subsection (u) of Code Section 16-13-49 shall apply for the disposition of any property forfeited under this subsection, provided that any property containing a counterfeit trademark, service mark, or copyrighted or registered design shall be destroyed unless the owner of the trademark, service mark, or copyrighted or registered design gives prior written consent to the sale of such property or such trademark, service mark, or copyrighted or registered design is obliterated or removed from such property prior to the disposition thereof. Any forfeited goods which are hazardous to the health, welfare, or safety of the public shall be destroyed. In any disposition of property under this subsection, a person who has been convicted of or who has entered a plea of nolo contendere to a violation of this Code section shall not be permitted to acquire property forfeited by such person. "(6) The procedure for forfeiture and disposition of forfeited property under this subsection shall be as provided for forfeitures under Code Section 16-13-49."; and added paragraphs (d)(2) through (d)(4). See Editor's notes for applicability. Editor's notes. - Ga. L. 2015, p. 693, § 4-1/HB 233, not codified by the General Assembly, provides that: "This Act shall become effective on July 1, 2015, and shall apply to seizures of property for forfeiture that occur on or after that date. Any such seizure that occurs before July 1, 2015, shall be governed by the statute in effect at the time of such seizure." Law reviews. - For article, "Copyright = Speech," see 65 Emory L.J. 199 (2015). For article on the 2015 amendment of this Code section, see 32 Ga. St. U.L. Rev. 1 (2015). JUDICIAL DECISIONS Plea counsel not ineffective in failing to advise of mandatory deportation. - Plea counsel did not act outside the wide range of reasonable conduct afforded attorneys who represent criminal defendants, including noncitizens, when counsel advised a Nigerian citizen that the Nigerian "could be" deported, rather than that the Nigerian "would be" deported, if the Nigerian pled guilty to counterfeiting under O.C.G.A. § 10-1-454. State v. Aduka, 303 Ga. 309, 812 S.E.2d 266 (2018). Cited in McHugh Fuller Law Group, PLLC v. PruittHealth, Inc., 300 Ga. 140, 794 S.E.2d 150 (2016). RESEARCH REFERENCES ALR. - Validity, construction, and application of State Trademark Counterfeiting Statutes, 63 A.L.R. 6th 303. —————————— PART 2 NAMES AND EMBLEMS OF FRATERNAL, CHARITABLE, AND OTHER ORGANIZATIONS Annotations Cross references. - Corporations organized for religious, fraternal, or charitable purposes generally, § 14-5-40 et seq. 10-1-470. Imitation of name or emblem prohibited; priority of right to use name. Statute text No person or organization shall assume, use, adopt, become incorporated under, or continue to use the name and style or emblems of any benevolent, fraternal, social, humane, or charitable organization previously existing in this state, and which has been incorporated under the laws of this or any other state or of the United States, or a name and style or emblem so nearly resembling the name and style of such incorporated organization as to be a colorable imitation thereof. In all cases where two or more of such societies, associations, or corporations claim the right to the same name or to names substantially similar as above provided, the organization which was first organized and used the name and first became incorporated under the laws of the United States or of any state, whether incorporated in this state or not, shall be entitled in this state to the prior and exclusive use of such name; and the rights of such societies, associations, or corporations and of their individual members shall be fixed and determined accordingly. History (Ga. L. 1909, p. 139, § 1; Civil Code 1910, § 1993; Code 1933, § 106-201.) Annotations JUDICIAL DECISIONS Constitutionality. - Part is not violative of Fourteenth Amendment of the Constitution of the United States. Emory v. Grand United Order of Odd Fellows, 140 Ga. 423, 78 S.E. 922 (1913). Part creates new remedy without abrogating existing one. - Enactment of this part for the protection of such organizations as are named therein against the infringement and unauthorized use of their names and emblems merely created a new remedy for an existing right and did not expressly, or by necessary implication, abrogate the preexisting remedy. Supreme Grand Lodge v. Most Worshipful Prince Hall Grand Lodge, 209 F.2d 156 (5th Cir.), cert. denied, 347 U.S. 953, 74 S. Ct. 679, 98 L. Ed. 1099 (1954). Voluntary associations. - Former Civil Code 1910, §§ 1933 and 1934 were for the protection of any benevolent or other organization which was incorporated, against others using or adopting its name, style, or emblems, and the statutes cannot be invoked by voluntary associations. Faisan v. Adair, 144 Ga. 797, 87 S.E. 1080, 1918A Ann. Cas. 243 (1916), later appeal, 148 Ga. 403, 96 S.E. 871 (1918), cert. denied, 248 U.S. 583, 39 S. Ct. 136, 63 L. Ed. 432 (1919); Methodist Episcopal Church S., Inc. v. Decell, 60 Ga. App. 843, 5 S.E.2d 66 (1939). Exclusive right to use name must be shown. - Under this part, unless the plaintiffs have established that the plaintiffs are entitled to the exclusive use of the name or words in question, the plaintiffs are not entitled to the equitable relief sought. To show that the plaintiffs have obtained a charter, or have organized and are using that name, is not sufficient. Plaintiffs must not only show that the plaintiffs have the right to use the name in question, but that the plaintiffs have the exclusive right to so use the name. Independent Order of Good Samaritans & Daughters v. Mack, 139 Ga. 835, 78 S.E. 336 (1913). Right to use name depends upon priority of incorporation. - Right to the exclusive use of a particular name as between incorporated associations organized for beneficial and charitable purposes, etc., depends upon priority of the Act of incorporation, whether the charter is derived from this state, the United States, or any other state in the Union. A fraternal order by adopting the same name which was previously used by a fraternal association, acquires no additional right to the use of the name by incorporation. Incorporation in this state does not give the fraternal corporation an exclusive right to use the corporate name as against prior use of the same name by a fraternal association incorporated under the laws of a sister state. Graves v. District Grand Lodge No. 18, 155 Ga. 147, 116 S.E. 613 (1923). Name held colorable imitation. - Name "Ancient Order of Odd Fellows Leeds Unity" is substantially similar to and a colorable imitation of the name "The Grand United Order of Odd Fellows in America." Emory v. Grand United Order of Odd Fellows, 140 Ga. 423, 78 S.E. 922 (1913). Subsequent use of appropriated name presumed fraudulent. - If the association or corporation first appropriating and using the name has a clear right to the name's use, the name's subsequent use by another corporation knowing of the right is presumed to be fraudulent. Graves v. District Grand Lodge No. 18, 161 Ga. 110, 129 S.E. 783 (1925). Burden of proving right to exclusive use of the distinctive name and words in question is upon the organization asserting the right. Independent Order of Good Samaritans & Daughters v. Mack, 139 Ga. 835, 78 S.E. 336 (1913) (injunction denied). Sufficiency of evidence. - Since the court was authorized to find from the evidence that the plaintiffs' order existed in this state and had been incorporated under the laws of this state prior to the date upon which the defendants' order sought to organize and become incorporated, and that so far as the record disclosed there was no other order of a similar name having a prior existence and incorporation to that of the plaintiffs in this state, under former Code 1933, § 106-202, the plaintiffs were entitled to injunctive relief. Emory v. Grand United Order of Odd Fellows, 140 Ga. 423, 78 S.E. 922 (1913). When it is charged that one beneficial incorporated association is using a name which by prior use appertains to another fraternal organization, mere proof by the plaintiff that the defendant was using the name which the plaintiff had adopted to distinguish the plaintiff from similar organizations would not entitle the plaintiff to relief. Graves v. District Grand Lodge No. 18, 161 Ga. 110, 129 S.E. 783 (1925). In order for a plaintiff to obtain the aid of this section, it must appear that such plaintiff is: (1) an incorporated association; (2) that it is a benevolent, etc., organization previously existing in this state; and (3) that the defendants propose to use, or are using, the name and style or emblems of such incorporated organization, as so nearly resemble the same as to be a colorable imitation. Methodist Episcopal Church S., Inc. v. Decell, 60 Ga. App. 843, 5 S.E.2d 66 (1939). Cited in Martin Luther King, Jr. Ctr. for Social Change, Inc. v. American Heritage Prods., Inc., 508 F. Supp. 854 (N.D. Ga. 1981). RESEARCH REFERENCES Am. Jur. 2d. - 36 Am. Jur. 2d, Fraternal Orders and Benefit Societies, §§ 24, 25. 23A Am. Jur. Pleading and Practice Forms, Trademarks and Tradenames, §§ 73 et seq., 75 et seq. C.J.S. - 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, § 24 et seq. ALR. - Application of principles of unfair competition to artistic or literary property, 19 A.L.R. 949. Right to enjoin use of name of defunct corporation, 27 A.L.R. 1024. Right, in absence of self-imposed restraint, to use one's own name for business purposes to detriment of another using the same or a similar name, 47 A.L.R. 1189; 44 A.L.R.2d 1156. Right of automobile association to exclusive use of name or insignia, 83 A.L.R. 712. Right of benevolent or fraternal society or organization to protection against use of same or similar name, insignia, or ritual by another organization, 76 A.L.R.2d 1396. Right to protection of corporate name, as between domestic corporation and foreign corporation not qualified to do business in state, 26 A.L.R.3d 994. 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. 10-1-471. Injunction against infringement. Statute text Whenever there shall be an actual or threatened violation of Code Section 10-1-470, the organization entitled to the exclusive use of the name in question under the terms of said Code section shall have the right to apply to the proper court for an injunction to restrain the infringement of its name and the use of its emblems; and, if it shall be made to appear to the court that the defendants are in fact infringing or about to infringe on the name and style of a previously existing benevolent, fraternal, social, humane, or charitable organization in the manner prohibited in said Code section or that the defendant or the defendants are wearing or using the badge, insignia, or emblems of said organization without the authority thereof and in violation of said Code section, an injunction may be issued by the court under the principles of equity without requiring proof that any person has been in fact misled or deceived by the infringement of such name or the use of such emblem. History (Ga. L. 1909, p. 139, § 2; Civil Code 1910, § 1994; Code 1933, § 106-202.) Annotations JUDICIAL DECISIONS Part creates new remedy without abrogating existing remedy. - Enactment of this part for the protection of such organizations as are named therein against the infringement and unauthorized use of their names and emblems merely created a new remedy for an existing right, and did not expressly, or by necessary implication, abrogate the preexisting remedy. Supreme Grand Lodge v. Most Worshipful Prince Hall Grand Lodge, 209 F.2d 156 (5th Cir.), cert. denied, 347 U.S. 953, 74 S. Ct. 679, 98 L. Ed. 1099 (1954). Voluntary associations. - Former Civil Code 1910, §§ 1993 and 1994 were for the protection of any benevolent or other organization which was incorporated, against others using or adopting its name, style, or emblems, and the statutes cannot be invoked by voluntary associations. Faisan v. Adair, 144 Ga. 797, 87 S.E. 1080, 1918A Ann. Cas. 243 (1916), later appeal, 148 Ga. 403, 96 S.E. 871 (1918), cert. denied, 248 U.S. 583, 39 S. Ct. 136, 63 L. Ed. 432 (1919); Methodist Episcopal Church S., Inc. v. Decell, 60 Ga. App. 843, 5 S.E.2d 66 (1939). Infringement will be enjoined. - Equity will enjoin a corporation or individuals that are using the name, insignia, and emblems of an existing benevolent fraternal association to the injury of the latter. Under the facts of this case, there was no abuse of discretion in granting the injunction. Faisan v. Adair, 144 Ga. 797, 87 S.E. 1080, 1918A Ann. Cas. 243 (1916), later appeal, 148 Ga. 403, 96 S.E. 871 (1918), cert. denied, 248 U.S. 583, 39 S. Ct. 136, 63 L. Ed. 432 (1919). Including use of name. - When it is made to appear that the name in question is being used, or indeed if it is shown that it can be used, to mislead the public and induce the belief that the association which is using the name which another is justly entitled to use, the defendant should be enjoined from the use of this name in toto, and not merely partially enjoined. Graves v. District Grand Lodge No. 18, 161 Ga. 110, 129 S.E. 783 (1925). Use of ritual, passwords, and tokens. - It was error to omit or refuse to enjoin the use by the defendant of the ritual, passwords, signs, tokens, etc., of the national order. Graves v. District Grand Lodge No. 18, 161 Ga. 110, 129 S.E. 783 (1925). Addition of suffix "Incorporated" is not sufficient relief. Graves v. District Grand Lodge No. 18, 161 Ga. 110, 129 S.E. 783 (1925). RESEARCH REFERENCES Am. Jur. 2d. - 36 Am. Jur. 2d, Fraternal Orders and Benefit Societies, §§ 24, 25. 23A Am. Jur. Pleading and Practice Forms, Trademarks and Tradenames, §§ 73 et seq., 75 et seq. C.J.S. - 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, § 24 et seq. ALR. - Right to enjoin use of name of defunct corporation, 27 A.L.R. 1024. Right of one to protection of trade name which he does not use, 48 A.L.R. 1257. Doctrine of secondary meaning in the law of trademarks and of unfair competition, 150 A.L.R. 1067. Right, in absence of self-imposed restraint, to use one's own name for business purposes to detriment of another using the same or a similar name, 44 A.L.R.2d 1156. Use of "family name" by corporation as unfair competition, 72 A.L.R.3d 8. "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. 10-1-472. Unauthorized use of emblem or name or false claim of membership a misdemeanor. Statute text Any person who shall wear a badge, button, or other emblem or shall use the name or claim to be a member of any benevolent, fraternal, social, humane, or charitable organization which is entitled to the exclusive use of such name and emblems under Code Section 10-1-470, either in the identical form or in such near resemblance thereto as to be a colorable imitation of such emblem or name, unless entitled to do so under the laws, rules, and regulations of such organization, shall be guilty of a misdemeanor. History (Ga. L. 1909, p. 139, § 3; Penal Code 1910, § 258; Code 1933, § 106-9905.) Annotations RESEARCH REFERENCES Am. Jur. 2d. - 36 Am. Jur. 2d, Fraternal Orders and Benefit Societies, §§ 24, 25. C.J.S. - 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, § 24 et seq. —————————— PART 3 REGISTRATION OF BUSINESSES USING TRADE NAMES Annotations Cross references. - Selection and reservation of corporate names, § 14-2-401 et seq. Law reviews. - For article, "Acquisition of Trademark Rights Under United States and Georgia Law," see 7 Ga. St. B. J. 14 (2001). JUDICIAL DECISIONS ANALYSIS General Consideration Effect of Noncompliance General Consideration General Assembly repealed the Trade Name Act of 1929 (Ga. L. 1929, p. 233) by the passage of Ga. L. 1937, p. 804. Bullard v. Holman, 184 Ga. 788, 193 S.E. 586 (1937); Bowers v. Keller, 185 Ga. 435, 195 S.E. 447, answer conformed to, 57 Ga. App. 554, 196 S.E. 241 (1938). Purpose. - Evident purpose of this part is to enable persons making contracts with those trading under a fictitious trade name to know with whom they are dealing. Maxwell v. Pierce, 183 Ga. 856, 189 S.E. 847 (1937). Part strictly construed. - Since this part imposes a hitherto unrecognized restriction upon the right to contract, the part's terms will be strictly construed. Maxwell v. Pierce, 183 Ga. 856, 189 S.E. 847 (1937). Applicability to corporation using trade name. - If a corporation transacts business in a trade name or a name or style other than its true corporate name, it is amenable to the requirements and prohibitions of this part the same as others. Constitution Publishing Co. v. Lyon, 52 Ga. App. 434, 183 S.E. 653 (1936). "Company" may be used in individual's trade name. - Under this part, the appellation, "company" may be used by an individual and is as appropriate to unincorporated associations as to corporations. An individual may use the word "company" as a part of the individual's trade name. Dixie Queen Produce Co. v. Brown, 100 Ga. App. 150, 110 S.E.2d 421 (1959). Allegation of partnership as evidenced by registration must be denied. - Admissions in the answer of allegations in the petition are taken as true, and accordingly, if two or more individuals are sued jointly in connection with the operation of a business under a trade name, and such individuals file an answer admitting that the individuals jointly operate such business, file no denial of partnership, but on the contrary file a joint answer as partners, and the petition is later amended alleging such partnership as evidenced by trade name registration under this part, the defendants by the defendant's pleadings have admitted the existence of such partnership and are estopped to produce evidence to the contrary. Petkas v. Wright Co., 87 Ga. App. 189, 73 S.E.2d 224 (1952). Effect of Noncompliance Noncompliance does not prohibit property ownership. - This part does not prohibit ownership of property by persons who may have acquired title under a trade name that has not been registered. Maxwell v. Pierce, 183 Ga. 856, 189 S.E. 847 (1937). Liability under contract. - Defendant corporation doing business under a trade name which has not registered as required by this part cannot avoid liability under its contract which is the subject matter of the suit upon the ground of the defendant's not having registered as required by this part. Atlanta Butchers Abattoir & Stock Yard Co. v. Reaves, 54 Ga. App. 138, 187 S.E. 162 (1936). Forfeiture of lease. - If lease was made to plaintiff and plaintiff's partner in their individual names, the failure of the plaintiff to register plaintiff's trade name in compliance with this part, although plaintiff ran a business on the premises rented from the defendant under the trade name, would not entitle the defendant to declare the lease forfeited, and to evict the plaintiff for that reason alone. Hudgens v. Douglas, 56 Ga. App. 877, 194 S.E. 398 (1937). Action for conversion of property. - Partners doing business under a trade name that has not been registered as required by law, who have bought and paid for personal property and have taken from the owner a bill of sale therefor in such trade name, may maintain an action in the trade name against a tort-feasor who has seized and converted the property to the tort-feasor's own use. Maxwell v. Pierce, 183 Ga. 856, 189 S.E. 847, answer conformed to, 55 Ga. App. 422, 190 S.E. 367 (1937). Suit by lessee for trespass. - If lease was made to the plaintiff and the plaintiff's partner in their individual names, the failure of the plaintiff to register the plaintiff's trade name in compliance with this part, although plaintiff ran a business on the premises rented from defendant under the trade name, would not prevent the plaintiff from bringing a tort suit against the defendant for damages growing out of certain alleged acts of trespass committed by defendant if the plaintiff was otherwise entitled to bring such a suit. The failure to register has no causal relation to the injury. Hudgens v. Douglas, 56 Ga. App. 877, 194 S.E. 398 (1937). Enforcement of note and conditional sale contract. - Fact that a promissory note and conditional sale contract are taken by the payee in a trade name which the payee has failed to register as required by law will not prevent the enforcement of such note and contract in the hands of a holder in due course. Southern Sec. Co. v. American Disct., 184 Ga. 82, 190 S.E. 350, answer conformed to, 55 Ga. App. 736, 191 S.E. 258 (1937). Registration essential to acquiring interest in trade name. - Compliance with the provisions of this part as to registration in the office of the clerk of the superior court is essential to the right of a person to conduct business under another or assumed name, and to acquire such interest in the name as will be protected by a court of equity. National Brands Stores, Inc. v. Muse & Assocs., 183 Ga. 88, 187 S.E. 84 (1936). Costs cast on plaintiff not registering. - Since the evidence showed conclusively that the plaintiff had not registered the plaintiff's trade name at the time of filing suit with the clerk of the superior court of the county of the plaintiff's residence, the costs of court included within the judgment must be cast against the plaintiff. Bancroft v. Conyers Realty Co., 63 Ga. App. 106, 10 S.E.2d 286 (1940). 10-1-490. Business using trade, partnership, or other name not showing ownership to file registration statement; indexing; fee. Statute text (a) Every person, firm, or partnership carrying on in this state any trade or business under any trade name or partnership name or other name which does not disclose the individual ownership of the trade, business, or profession carried on under such name shall, within 30 days from March 29, 1937, or thereafter before commencing to do business, file in the office of the clerk of the superior court of the county in which the business is chiefly carried on or, in the case of a domestic corporation using any name other than its corporate name, in the county of its legal domicile, a registration statement, verified by affidavit, setting forth the name or names and addresses of the person, persons, firm, or partnership owning and carrying on said trade or business and stating the nature of the business being carried on and the trade, partnership, or other name used and shall, upon any change of ownership, likewise file a new and amended statement of registration. Notice of such filing giving the names and addresses of each person, firm, or partnership to engage in business under such trade name or partnership name shall be published in the paper in which the sheriff's advertisements are printed once a week for two weeks. No person, firm, or partnership already registered shall be required to reregister except in the event of a change of ownership. (b) The clerk shall register the same by filing the verified statement in his office and shall keep an alphabetical index of all such registrations in a permanent record book to be kept in his office, the index to show the trade, partnership, or other name registered and in connection therewith the names of the owners. The applicant for registration shall accompany each registration statement with the fee prescribed by Code Section 15-6-77, relating to fees of clerks of the superior courts, as amended. History (Ga. L. 1929, p. 233, §§ 1-3; Code 1933, §§ 106-301, 106-302; Ga. L. 1937, p. 804, §§ 1, 2; Ga. L. 1943, p. 398, § 1; Ga. L. 1970, p. 497, § 9; Ga. L. 1981, p. 872, § 2; Ga. L. 1989, p. 14, § 10.) Annotations Law reviews. - For article, "Post-Creation Checklist for Georgia Business Entities," see 9 Ga. St. B. J. 34 (2004). JUDICIAL DECISIONS Affidavit must be made by person operating under trade name. - This section, requiring registration, in the office of the clerk of the superior court of persons doing business under a trade name by filing an affidavit signed by the person doing business, in which is set forth the name and address of the true owner of the business, requires that the affidavit be made by the person who operates under the trade name referred to in the affidavit. Laurens Glass Works v. Childs, 49 Ga. App. 590, 176 S.E. 665 (1934). Affidavit does not create presumption against prior registration. - Evidence that the members of a partnership filed an affidavit in the office of the clerk of the superior court to register a partnership trade name does not create a presumption of fact that such trade name had not been previously registered. Butler v. Ragsdale, 54 Ga. App. 565, 188 S.E. 578 (1936). Cited in Dunn & McCarthy, Inc. v. Pinkston, 179 Ga. 31, 175 S.E. 4 (1934); Prater v. Larabee Flour Mills Co., 180 Ga. 581, 180 S.E. 235 (1935); Smith v. State, 52 Ga. App. 207, 182 S.E. 858 (1935); Charles v. Sterling Sec. & Brokerage Co., 182 Ga. 480, 185 S.E. 807 (1936); Mobley v. Bailey, 52 Ga. App. 578, 184 S.E. 417 (1936); Alexander v. Bremen, 53 Ga. App. 676, 187 S.E. 141 (1936); Stephens v. Bibb Inv. Co., 54 Ga. App. 321, 187 S.E. 709 (1936); Carter v. Solomon, 54 Ga. App. 517, 188 S.E. 545 (1936); Stewart v. Darby Banking Co., 183 Ga. 888, 190 S.E. 28 (1937); Slaten v. College Park Cem. Co., 185 Ga. 27, 193 S.E. 872 (1937); Cary v. State, 55 Ga. App. 167, 189 S.E. 625 (1937); West v. Frick Co., 55 Ga. App. 854, 192 S.E. 55 (1937); National Union Fire Ins. Co. v. Jenkins, 56 Ga. App. 476, 193 S.E. 90 (1937); Walker v. Abbot, 57 Ga. App. 381, 195 S.E. 450 (1938); Womble v. Parker, 208 Ga. 378, 67 S.E.2d 133 (1951); Multiple Listing Serv., Inc. v. Metropolitan Multi-List, Inc., 223 Ga. 837, 159 S.E.2d 52 (1968); Howard Stores Corp. v. Howard Clothing, Inc., 308 F. Supp. 70 (N.D. Ga. 1969); Whitlock v. PKW Supply Co., 154 Ga. App. 573, 269 S.E.2d 36 (1980); Brooks v. Maryville Loan & Fin. Co., 679 F.2d 837 (11th Cir. 1982); Loeb v. Schafer Bros. (In re Austin Group, Inc.), 80 Bankr. 255 (Bankr. N.D. Ga. 1987); Crolley v. Haygood Contracting, Inc., 201 Ga. App. 700, 411 S.E.2d 907 (1991); Stone v. Allen, 201 Ga. App. 842, 412 S.E.2d 605 (1991). OPINIONS OF THE ATTORNEY GENERAL Use of trade name by corporation. - Corporation may do business in Georgia under trade name. 1945-47 Op. Att'y Gen. p. 652. Branch offices under different names. - Licensed real estate broker may establish branch offices under different names, provided that the broker complies with this part. 1952-53 Op. Att'y Gen. p. 408. RESEARCH REFERENCES 23A Am. Jur. Pleading and Practice Forms, Trademarks and Tradenames, § 1. ALR. - Construction and effect of statutes as to doing business under an assumed or fictitious name or designation not showing the names of the persons interested, 45 A.L.R. 198; 42 A.L.R.2d 516. "Business sign" statute as affecting order of priority among creditors of person transacting business, 124 A.L.R. 169. Right to use firm name on dissolution of partnership, 173 A.L.R. 444. Incorporation of company under particular name as creating exclusive right to such name, 68 A.L.R.3d 1168. 10-1-491. Contracts of unregistered businesses valid; costs to be paid if name not registered. Statute text The effect of this part shall be that no contract or undertaking entered into by any person, firm, or corporation, whether heretofore or hereafter entered into, shall be invalidated or declared illegal on the ground that the same was entered into in a trade or partnership name not filed or registered in accordance with the laws in force at the time such contract or undertaking was entered into; but all such contracts and undertakings are expressly validated as against any such objection; and no action heretofore or hereafter instituted by any such person, firm, partnership, or corporation, whether sounding in contract or tort, shall be defeated because of any such failure to register. But the party who has failed to register his trade or partnership name at the time action is filed, as required by this part, shall be cast with court costs. History (Ga. L. 1937, p. 804, § 5.) Annotations JUDICIAL DECISIONS Ga. L. 1937, p. 804, § 5 applies to contract made before the statute's enactment by any person or partnership conducting or transacting a business in this state under an assumed or fictitious or trade name, other than the real name or names of the individual or individuals conducting or transacting such business without having registered in the office of the clerk of the superior court as required by former Code 1933, §§ 106-301 and 106-302. Walker v. Abbot, 57 Ga. App. 381, 195 S.E. 450 (1938). Section bars defense of noncompliance in action on contract. - If a suit was filed on a contract entered into between the plaintiff and the defendant in connection with and while the plaintiff was operating a business under an assumed or fictitious name, without having registered that name as required by Ga. L. 1929, p. 233, and the defendant filed a pleading setting up these facts as a defense to the suit, and the judge sustained such defense and entered a judgment of nonsuit, and thereafter the plaintiff brought the case to the Court of Appeals, properly presented the question whether the court erred in sustaining such defense, and it appeared that since the judgment of the trial court, and while the case was in the process of being brought to the Court of Appeals, the legislature, by Ga. L. 1937, p. 804, repealed Ga. L. 1929, p. 233, and expressly provided by Ga. L. 1937, p. 804, § 5 no suit or action heretofore or hereafter instituted by any such person, firm, partnership, or corporation, whether sounding in contract or tort, should be defeated because of any such failure to register, the Court of Appeals, under Ga. L. 1937, p. 804, should have applied Ga. L. 1937, p. 804, § 5 and reversed the judgment, not because the judge erred at the time of its rendition, but because it had subsequently become erroneous by operation of Ga. L. 1937, p. 804, § 5. Bowers v. Keller, 185 Ga. 435, 195 S.E. 447, answer conformed to, 57 Ga. App. 554, 196 S.E. 241 (1938). Retroactive application of section not unconstitutional. - Section 5 of Ga. L. 1937, p. 804, providing that no contract should be invalidated on the ground that it was entered into in an unregistered trade or partnership name, was not violative of the constitutional prohibition against enactment of retroactive laws as applied to a note which had become barred under Ga. L. 1929, p. 233. Bullard v. Holman, 184 Ga. 788, 193 S.E. 586 (1937). Ga. L. 1937, p. 804, § 5 is not unconstitutional as applied to a note which was subject to defense under Ga. L. 1929, p. 233, relating to trade names, and was executed before the passage of Ga. L. 1937, p. 804. Sweat & Gaskins v. Williamson, 185 Ga. 495, 195 S.E. 408 (1938). Undertaking by individual in fictitious or trade name is obligation of individual. National Cash Register Co. v. Sikes, 94 Ga. App. 391, 94 S.E.2d 782 (1956). Section binds sole proprietor who contracts in unregistered trade name. Goger v. United States (In re Eady), 4 Bankr. 1 (Bankr. N.D. Ga. 1979). Use of trade name on security agreement. - Fact that title-retention contract was signed in a trade name by the owner of such business does not in anyway invalidate the contract. National Cash Register Co. v. Sikes, 94 Ga. App. 391, 94 S.E.2d 782 (1956). Recording security agreement gives constructive notice of trade name. - Title-retention contract signed by the purchaser in the purchaser's trade name by the purchaser in the purchaser's individual name is entitled to recording when it otherwise meets the requirements of the statute, and after being duly recorded constitutes constructive notice of the right and interest of the vendor therein as against the purchase of the property at a judicial sale on an execution issued against the purchaser in the purchaser's individual capacity. National Cash Register Co. v. Sikes, 94 Ga. App. 391, 94 S.E.2d 782 (1956). Use of fictitious names in financing statements. - While this section has the effect of binding those persons who contract in fictitious names to the contract so executed, it does not have the effect of saying that financing statements given in fictitious names are sufficient to notify subsequent creditors of the identity of the party using the fictitious name. Were a court to hold otherwise, the purpose of the statutory scheme of requiring a security interest to be perfected by filing a financing statement - to give notice to future creditors of the debtor - would be seriously undermined. In re Firth, 363 F. Supp. 369 (M.D. Ga. 1973); Goger v. United States (In re Eady), 4 Bankr. 1 (Bankr. N.D. Ga. 1979). Burden of proving registration. - O.C.G.A. § 10-1-491 places no burden on party using trade name to prove that the party has been registered. Barker v. Century 21-Atlanta E. Realty, Inc., 162 Ga. App. 828, 293 S.E.2d 76 (1982). Contract entered in unregistered trade name deemed valid. - O.C.G.A. § 10-1-491 expressly provides that a contract entered into in a trade name is valid notwithstanding the failure to register the trade name with the superior court clerk; the only penalty is that the nonregistering party will have to bear court costs. Brooks v. Maryville Loan & Fin. Co., 679 F.2d 837 (11th Cir. 1982). Cited in Mobley v. Bailey, 52 Ga. App. 578, 184 S.E. 417 (1936); Slaten v. College Park Cem. Co., 185 Ga. 27, 193 S.E. 872 (1937); Wright v. Cannon, 185 Ga. 363, 195 S.E. 168 (1938); Bancroft v. Conyers Realty Co., 63 Ga. App. 106, 10 S.E.2d 286 (1940); Womble v. Parker, 208 Ga. 378, 67 S.E.2d 133 (1951); Mayeske v. Ferguson, 93 Ga. App. 841, 93 S.E.2d 190 (1956). 10-1-492. Exemption of corporations, limited or professional partnerships, or limited liability companies. Statute text This part shall not apply to corporations doing business under their corporate names, to limited partnerships doing business under their limited partnership names, or to limited liability companies doing business under their limited liability company names which have been filed for record pursuant to Chapter 9, 9A, or 11 of Title 14, as amended, or to persons practicing any profession under a partnership name. History (Ga. L. 1929, p. 233, § 4; Code 1933, § 106-304; Ga. L. 1937, p. 804, §§ 1, 6; Ga. L. 1943, p. 398, § 1; Ga. L. 1973, p. 480, § 1; Ga. L. 1981, p. 872, § 2; Ga. L. 1989, p. 14, § 10; Ga. L. 1989, p. 931, § 17; Ga. L. 1994, p. 161, § 1.) Annotations Editor's notes. - Ga. L. 1989, p. 14, § 10, was superseded by Ga. L. 1989, p. 931, § 17, which was enacted later. Law reviews. - For note on 1989 amendment to this Code section, see 6 Ga. St. U.L. Rev. 184 (1989). JUDICIAL DECISIONS Cited in National Brands Stores, Inc. v. Muse & Assocs., 183 Ga. 88, 187 S.E. 84 (1936); Constitution Publishing Co. v. Lyon, 52 Ga. App. 434, 183 S.E. 653 (1936); Womble v. Parker, 208 Ga. 378, 67 S.E.2d 133 (1951). 10-1-493. Penalty for failing to register. Statute text Any person, firm, partnership, or corporation carrying on any trade or business subject to registration under Code Section 10-1-490 without filing such registration as required by Code Section 10-1-490 shall be guilty of a misdemeanor but shall suffer no other or further penalty or forfeiture on account of any such failure to register, except costs as provided in Code Section 10-1-491. History (Ga. L. 1929, p. 233, § 5; Code 1933, § 106-9906; Ga. L. 1937, p. 804, § 3.) Annotations JUDICIAL DECISIONS Cited in Dunn & McCarthy, Inc. v. Pinkston, 179 Ga. 31, 175 S.E. 4 (1934); Mobley v. Bailey, 52 Ga. App. 578, 184 S.E. 417 (1936); Gower v. Ozmer, 55 Ga. App. 81, 189 S.E. 540 (1936); Maxwell v. Pierce, 183 Ga. 856, 189 S.E. 847 (1937); Womble v. Parker, 208 Ga. 378, 67 S.E.2d 133 (1951). ——————————