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July 28, 2014

Overhead Door Corporation Distributor Asserts Unfair Competition Claim Against Atlanta-Area Garage Door Company

On November 2, 2012, D.H. Pace Company, Inc. ("Pace") of North Kansas City, Missouri, doing business as the Overhead Door Company of Atlanta, filed a complaint in the Northern District of Georgia against AOD Group, LLC ("AOD") and its principal owner and officer, Garrett Waldrop, both of Lawrenceville, Georgia, alleging breach of contract, breach of the implied covenant of good faith and fair dealing, unfair competition under the Lanham Act, 15 U.S.C. § 1125(a), and unfair and deceptive trade practices under O.C.G.A. §§ 10-1-370 et seq. 

According to the complaint, Pace or its predecessor-in-interest have been for the last 75 years the Atlanta-area distributor for Overhead Door Corporation ("ODC"), which manufactures doors and related products and equipment.  ODC, an Indiana corporation with its principal place of business in Lewisville, Texas, owns the federally registered "Red Ribbon Mark" (Reg. No. 1,807,028) shown below.

Overhead Door's "Red Ribbon Mark"

Pace claims that its distributorship agreement with ODC grants Pace the right to use in metropolitan Atlanta the Red Ribbon Mark and the name "Overhead Door Company of Atlanta."  Pace claims that starting in 2005 AOD began using infringing marks such as the one shown below. 

AOD's 2005 mark.

At Pace's request, ODC sent a cease-and-desist letter to AOD, after which AOD modified its logo, an example of which is below.

One of AOD's more recent offending marks.

This began a long series of letters, demands, modifications, and disputes.  In April 2011, AOD filed a declaratory judgment action in the Northern District of Georgia, seeking a determination that its modified marks did not infringe ODC's trademarks.  Shortly after the deposition of Waldrop, AOD's owner, the parties entered into a settlement agreement to resolve the litigation.  Under the agreement, AOD agreed not to use the word "Overhead" in a trademark or trade name that also includes an Atlanta name (which included surrounding counties and cities), not to use "Overhead Garage Door" or "Overhead Garage Doors" as a trademark or trade name, not to use a trademark or trade name that emphasizes the word "Overhead," "Overhead Door(s)," or "Overhead Garage Door(s)," not to use any Atlanta name along with the word "Overhead" in any domain name, and not to use the phrase "Overhead Garage Door(s)" or the phrase "Overhead Door(s)" in any online or print advertisement, except in a purely descriptive sense.  Pace alleges that AOD has violated the terms of the settlement agreement on multiple occasions since the execution of the agreement, and provided the Google sponsored advertisement below as one example:

Pace claims that it has contacted AOD on several occasions to provide opportunities to cure the alleged breaches, but Pace represents that AOD has refused to cooperate.  As a result, Pace filed this action and asks the court for a permanent injunction to prevent AOD's continued use of its marks, actual and treble damages, disgorgement of profits, punitive damages, costs, and attorneys' fees.

The case is D.H. Pace Company, Inc. v. AOD Group, LLC et al., No. 1:12-cv-03854-ODE, U.S. District Court for the Northern District of Georgia, Atlanta Division, and has been assigned to U.S. District Judge Orinda D. Evans.

Copyright © 2014 Womble Carlyle Sandridge & Rice, PLLC. All Rights Reserved.

About the Author

Preston H Heard, Womble Carlyle Law Firm, Intellectual Property Attorney
Partner

Preston Heard is an experienced patent litigation attorney who represents clients in a variety of industries, including the mechanical, computer and chemical sectors, in patent-related disputes.

 A registered patent attorney, Preston has represented patent clients in U.S. District Court in numerous states, as well as before the U.S. International Trade Commission. He works with patent owners to devise overall strategies to protect and enforce patent rights and to assess potential patent-related claims. He also works with clients to develop effective defenses against patent...

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