How long is too long to wait to bring a claim for infringement or unfair competition in Georgia?

January 11, 2013
By Betts & Associates

What legal options do I have in Georgia when a person or business has been using my name, trade dress, brand, trademark, or logo for a long period of time without my knowledge? This is a question that we often hear from our business clients.


In Georgia, the equitable doctrine of laches can be applied to bar claims for relief that the plaintiff has delayed brining or that fall outside of the applicable statute of limitations period. With respect to trademark infringement and unfair competition claims, however, neither the Lanham Act nor its state law counterpart found in the Uniform Deceptive Trade Practices Act (UDTPA) contain specified limitations periods from which to judge which statute of limitations applies: the two-year statute of limitations period applied by Georgia courts to fill in statute of limitations where the legislature did not provide one (like in employment discrimination claims for relief) found in O.C.G.A. § 9-3-22; or the four-year statute of limitations governing injuries to personalty found in O.C.G.A. § 9-3-31. Another confusing aspect of claims for relief from infringement or unfair competition concern the legal theory to apply to determine when to begin measuring delay in some cases. Fortunately, there are some Georgia cases that shed light on both of these concerns.

The 11th Circuit first grappled with the issue of laches when a trademark owner has not learned of the infringement until after the statute of limitations has run on a claim for damages in 1997 when it decided Kason Industries, Inc. v. Component Hardware Corp., 120 F.3d 1199, 1203 (11th Cir.1997). In that case, the court borrowed from the closest analogous state law and held that the four-year period applicable to similar causes of action under Georgia's UDTPA governs the inquiry in Lanham Act cases. Kason, at 1206.

The Court went on to say that this period is not an absolute bar either because laches is an equitable doctrine that is to be applied flexibly. Id. at 1206. In calculating delay, the clock begins at the point in which the plaintiff "knows or should know she has a provable claim for infringement." Id. at 1206.; see also ProFitness Physical Therapy Center v. Pro-Fit Orthopedic & Sports Physical Therapy, P.C., 314 F.3d 62, 70 (2d Cir.2002) ("[A] plaintiff should not be obligated to sue until its right to protection has ripened such that plaintiff knew or should have known, not simply that defendant was using the potentially offending mark, but that plaintiff had a provable infringement claim against defendant.").

Some courts have found a second, perhaps more important basis to deny summary judgment on the issue of laches. See Angel Flight of Georgia, Inc. v. Angel Flight Se., Inc., 424 F. Supp. 2d 1366, 1371 (N.D. Ga. 2006) aff'd sub nom. Angel Flight of Georgia, Inc. v. Angel Flight Am., Inc., 522 F.3d 1200 (11th Cir. 2008) Because of the strong interest in protecting consumers from deception, courts should not deny a delayed trademark or trade dress owner from obtaining relief when there is strong evidence of likely or actual confusion on the basis of delay alone. Id. at 1370 (citing Restatement (Third) of Unfair Competition § 31, cmt. e (1995)).

These cases tell us that, in Georgia, even though estoppel of laches may bar a trademark owner's claim for money damages after the four-year period has run, a plaintiff may still be granted injunctive relief despite the delay.

Thus, if you have just now learned of past infringement of your trademark, trade name, brand, logo or other mark and want relief in Georgia, you may have a remedy in equity even though your claim is delayed. You should consult an experienced business attorney at Betts & Associates to ensure that your rights are protected.