This post is the third installment in a six-part series on essential brand protection strategies.
The FAQs below were developed to address common questions about trade names.
What is a trade name?
A trade name is sometimes referred to as a “fictitious” name, “doing business as” name, or “DBA.” It is the name under which a business operates and that is not its official legal name. Examples from Atlanta business icons include Coca-Cola as a trade name of The Coca-Cola Company; Delta as a trade name of Delta Air Lines, Inc. Trademarks can also be trade names.
Does my business operating in Georgia need to register its trade name?
Yes. Georgia law requires businesses to register trade names:
“Every person, firm, or partnership” operating under a trade name must file a registration statement of that trade name with 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.” O.C.G.A. §10-1-492.
This registration requirement is also applicable to foreign business entities that do business in Georgia under a trade name.
How do you register a trade name?
The Clerk of the Superior Court of the county in which your business is located can provide a registration form. You can often find the form on the clerk’s website. A small fee is required along with the registration statement. Next, the registrant must provide notice of the filing. This is done by publishing notice of the filing once a week for two weeks in the local paper in which the sheriff’s advertisements are printed. If there is a change of ownership, new registration is required.
Below is a partial list of Clerks of Superior Court websites that provide additional information on the trade name registration requirements in their counties:
Click here for information on other Georgia Superior Court Clerks.
Why are businesses required to register trade names?
The purpose of the registration requirement is essentially consumer protection. By registering, the public is provided with notice of the legal name of a business or individual doing business under a trade name.
What if your trade name is not registered?
A business that fails to register a trade name in Georgia “shall be guilty of a misdemeanor.” However, according to O.C.G.A. §10-1-493, a business “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.” The referenced costs include court costs incurred by any party that has filed suit against a party that has failed to register its trade name.
Even though a party cannot be subject to civil penalties for failing to register a trade name, there can be other consequences. For example, in ThermoLife Int’l, LLC v. Hi-Tech Pharms., Inc., No. 1:15-CV-00892-ELR, 2018 WL 6728480 (N.D. Ga. Oct. 30, 2018), the fact that the defendants failed to maintain proper trade name registrations for their businesses was one factor considered by the court in determining whether a plausible basis existed for the plaintiff to allege a corporate veil piercing claim against them.
What protections are afforded a trade name?
In Georgia, trade names are protected by common law and state statutes. Georgia statutory protections for trade names include the following:
The Georgia Uniform Deceptive Trade Practices Act (UDTPA), C.G.A. §§ 10-1-370 – 10-1-375
Provides trade name protection when another’s use of the same or similar name “causes [a] likelihood of confusion or of misunderstanding as to the source, sponsorship, approval, or certification of goods or services.” O.C.G.A. § 10–1–372(a)(2). In order to obtain relief under the UDTPA, a party is not required to show that they have suffered monetary damages or intent to cause confusion or actual confusion. Protection under the UDTPA is also not dependent upon registration of the trade name.
The Georgia Fair Business Practices Act, O.C.G.A. §§ 10-1-390 – 10-1-408
Protects businesses from unfair or deceptive practices in the conduct of trade or commerce, including passing off goods or services as those of another, or causing actual confusion as to the source, sponsorship, approval, or certification of goods or services. The FBPA provides broad protections for infringement of a trade name by use of a confusingly similar name, as well as certain remedies including damages and injunctive relief.
The Georgia Code sections that deal with the registration and use of trademarks and service marks, O.C.G.A. §§10–1–440 et seq.
Provide for the protection of trademarks, service marks, labels and advertising by virtue of their registration with the Secretary of State of Georgia. While registration is not required on the state level, when a trade name that is also a trademark or service mark is registered with the Georgia Secretary of State, the owner may avail itself of certain civil remedies set forth in O.C.G.A. § 10-1-450, including but not limited to liquidated damages in the amount of $10,000 and injunctive relief under O.C.G.A. § 10-1-451.
Notably, nothing in these code sections 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.” O.C.G.A. § 10–1–452.
C.G.A. § 10-1-453 provides for criminal penalties:
“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.”
C.G.A. § 23-2-55 provides:
“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, is a fraud for which equity will grant relief.”
Can the unauthorized use of a trade name give rise to claims for civil theft, conversion and racketeering?
The short answer is yes, but only if consumer confusion is also pleaded.
In an interesting recent decision, Edible IP, LLC v. Google, LLC, 313 Ga. 305 (2022), the Supreme Court of Georgia rejected claims of civil theft, conversion and racketeering (RICO) made by Edible IP, the owner of the trade name “Edible Arrangements.” These claims were against Google for selling “Edible Arrangements” to Edible IP’s competitors as part of its keyword advertising program.
The Court first concluded that Edible IP sufficiently alleged a property interest in the trade name “Edible Arrangements” and its associated goodwill within the meaning of O.C.G.A. § 51-10-6. Nonetheless, it went on to conclude that Edible IP’s claims could not withstand Google’s motion to dismiss because they were based on Google’s use of its trade name rather than any consumer confusion caused by that use:
“Here, Edible IP has not alleged that Google’s use of the “Edible Arrangements” trade name in its keyword advertising program causes any confusion, and in fact, has disclaimed in the complaint that it is “seek[ing] any … relief for any consumer confusion.” Thus, we see no basis in Georgia statutory law for Edible IP’s claim that Google has appropriated the “Edible Arrangements” trade name simply by using it in Google’s algorithms and keyword advertising programs.” Edible IP, LLC v. Google, LLC, 313 Ga. 305, 312 (2022).
Even though Edible IP argued that Google’s sale of its trade name was unauthorized and unlawful, the Court concluded that this argument inaccurately presupposed that Google “has actually sold any of Edible IP’s property versus using the ‘Edible Arrangements’ trade name in selling Google’s own advertising.” Id. at 315, 869 S.E.2d at 489.
The takeaway: In Georgia, when certain tort claims are pled in connection with the unauthorized use of a trade name, including common law theft, conversion, and racketeering, the claims may be subject to dismissal unless consumer confusion resulting from such use is also sufficiently pled and eventually proven.
As an attorney that focuses on brand protection and enforcement, I handle litigation involving trademarks and tradenames. I can also assist with trade name registration and trademark prosecution, including trademark clearance and federal trademark applications. Please reach out to me if you would like legal assistance and advice in any of these areas.
In the next installment of this series, the author will discuss best practices to use when selecting a domain name and options for dealing with domain infringement, cybersquatting and typo-squatting.
Notice: This content is for informational purposes only and does not constitute legal advice. You should not rely upon this information for any purpose without seeking legal advice from a licensed attorney familiar with your particular facts and legal issues.
