Ackerman Sec. Systems, Inc. v. Design Sec. Systems, Inc., A91A1280

• Decision Date: 14 November 1991
• Docket Number: No. A91A1280,A91A1280
• Citation: 412 S.E.2d 588,201 Ga.App. 805
• Parties: ACKERMAN SECURITY SYSTEMS, INC. v. DESIGN SECURITY SYSTEMS, INC.
• Court: Georgia Court of Appeals

Page 588

412 S.E.2d 588

201 Ga.App. 805

ACKERMAN SECURITY SYSTEMS, INC. v. DESIGN SECURITY SYSTEMS, INC.

No. A91A1280.

Court of Appeals of Georgia.

Nov. 14, 1991.

Arnall, Golden & Gregory, Stephen M. Dorvee, Scott E. Taylor, Atlanta, for appellant.

Merritt & Tenney, David E. Spalten, Atlanta, for appellee.

POPE, Judge.

Plaintiff/appellant Ackerman Security Systems, Inc., appeals from the trial court's order granting defendant/appellee's Design Security Systems, Inc. motion for partial summary judgment.

Both Ackerman and Design sell home security systems. Ackerman has used a white octagonal yard sign with blue lettering to advertise its services since January of 1980. The Georgia Secretary of State issued a service mark registration for Ackerman's design in January of 1984. In 1986, Design discontinued use of its red and silver mailbox signs in favor of a white octagonal yard sign with black lettering. On February 17, 1987, Ackerman filed suit against Design alleging trademark infringement, deceptive trade practices, and unfair competition relating to Design's use of a yard sign similar to the one used by Ackerman in advertising its services. The Georgia Secretary of State issued a service mark registration for Design's yard sign in April of 1987.

Design filed its motion for partial summary judgment on February 1, 1990. The trial court found the yard signs to be similar in size and shape, although different with regard to color, company name, telephone number, and other marks, and granted Design's motion with respect to Ackerman's claims for trademark infringement and for all claims under Georgia's Uniform Deceptive Trade Practices Act, OCGA § 10-1-371 et seq. In granting Design's motion, the trial court held that a showing of actual consumer confusion was necessary to a finding of a likelihood of confusion, and that Ackerman had failed to offer sufficient evidence of actual confusion. The trial court also found that Ackerman failed to present evidence concerning damages. We now reverse.

1. The appropriate legal test for these claims is the "likelihood of confusion" test. To determine whether a likelihood of confusion exists as to the two yard signs, a number of elements must be examined including: the strength or distinctiveness of the trademark at issue; similarity or overall impression created by the designs; similarity of product; identity of retail outlets and purchasers; identity of advertising media used; defendant's intent; and actual confusion. Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 259 (5th Cir.1980); AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1538 (11th Cir.1986). The weight to be accorded to individual factors varies with the circumstances of the case. AmBrit, supra at 1538. In the case at hand, the trial court, relying on Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1st Cir.1981), incorrectly applied the likelihood of confusion test by requiring a showing of actual confusion. The court in Pignons held that "[e]vidence of actual confusion is not invariably necessary to prove a likelihood of confusion." Pignons, supra at 490. Although evidence of actual confusion is obviously the best evidence of a likelihood of confusion, it is not necessary to a finding of likelihood of confusion. Amstar, supra 615 F.2d at 263.

Design argues that a presumption against a likelihood of confusion is raised if the marks have coexisted in the marketplace over a significant period of time with no evidence of actual confusion. Pignons, supra 657 F.2d at 490; Amstar, supra 615 F.2d at 263. We agree. A presumption against a likelihood of confusion may be raised; however, the presumption may be rebutted by evidence of other factors tending to support a finding of a likelihood of confusion. Our review of the record reveals that Ackerman did show the existence of several other factors tending to support a finding of a likelihood of confusion. Thus, the presumption against a likelihood of confusion does not stand unrebutted in this case. Cf. Pignons, supra 657 F.2d at 492.

Design cites Carling Brewing Co. v. Philip Morris, Inc., 277 F.Supp. 326 (N.D.Ga.1967), for the proposition that Ackerman must show that its yard sign has become identified in the public mind with its product, or has acquired secondary meaning. Trademarks are classified according to distinctiveness as: generic, descriptive, suggestive, arbitrary or fanciful, or coined. The classification depends upon the logical correlation between the mark and the product. Freedom Savings & Loan Assn. v. Way, 757 F.2d 1176, 1182 (11th...