July 25, 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

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...


Boost: AJAX core statistics

Legal Disclaimer

You are responsible for reading, understanding and agreeing to the National Law Review's (NLR’s) and the National Law Forum LLC's  Terms of Use and Privacy Policy before using the National Law Review website. The National Law Review is a free to use, no-log in database of legal and business articles. The content and links on are intended for general information purposes only. Any legal analysis, legislative updates or other content and links should not be construed as legal or professional advice or a substitute for such advice. No attorney-client or confidential relationship is formed by the transmission of information between you and the National Law Review website or any of the law firms, attorneys or other professionals or organizations who include content on the National Law Review website. If you require legal or professional advice, kindly contact an attorney or other suitable professional advisor.  

Some states have laws and ethical rules regarding solicitation and advertisement practices by attorneys and/or other professionals. The National Law Review is not a law firm nor is  intended to be  a referral service for attorneys and/or other professionals. The NLR does not wish, nor does it intend, to solicit the business of anyone or to refer anyone to an attorney or other professional.  NLR does not answer legal questions nor will we refer you to an attorney or other professional if you request such information from us. 

Under certain state laws the following statements may be required on this website and we have included them in order to be in full compliance with these rules. The choice of a lawyer or other professional is an important decision and should not be based solely upon advertisements. Attorney Advertising Notice: Prior results do not guarantee a similar outcome. Statement in compliance with Texas Rules of Professional Conduct. Unless otherwise noted, attorneys are not certified by the Texas Board of Legal Specialization, nor can NLR attest to the accuracy of any notation of Legal Specialization or other Professional Credentials.

The National Law Review - National Law Forum LLC 4700 Gilbert Ave. Suite 47 #230 Western Springs, IL 60558  Telephone  (708) 357-3317 If you would ike to contact us via email please click here.