Gradybaby Apparel LLC et al. v. Grady Baby Company and Apparel LLC, Civil Action No. 1:22-cv-02681-CAP (N.D. Ga. July 7, 2022)

Plaintiffs Gradybaby Apparel LLC, Marcia Williams, and Perlander Williams filed suit against Grady Baby Company and Apparel LLC and Terrence Albritton for, inter alia, trademark infringement in the Northern District of Georgia (Atlanta Division) on July 7, 2022. Plaintiffs claim ownership of trademarks for GRADY BABY and GRADY BABY APPAREL and have used those marks in commerce since at least as early as 2010 in connection with their businesses selling custom-designed clothing, office accessories, banners, signs, and more both online and in brick and mortar stores. The Complaint alleges that Defendants filed an intent-to-use application for the mark GRADY BABY on August 9, 2018 despite actual knowledge of Plaintiffs’ use of that mark in connection with its goods and services. Plaintiff Williams filed a notice of opposition to Defendants’ pending trademark application on October 22, 2019 but the opposition proceeding was dismissed following execution of a settlement agreement between the parties, which contained a representation from Defendants that Defendants would not expand their use of the GRADY BABY name and mark beyond their website, grandbabyapparel.com. The Complaint alleges that Defendants have violated this agreement by using the GRADY BABY mark in connection with sales through third-parties such as Footlocker and Champs. Plaintiffs terminated the settlement agreement and sent a cease and desist letter to Defendants on January 20, 2022, which Defendants allegedly ignored by continuing to use the mark outside the scope of the agreement. The Complaint asserts causes of action for (1) unfair competition and false designation of origin under 15 U.S.C. 1125(a), (2) dilution pursuant to 15 U.S.C. 1125(c), (3) cancellation of federal trademark registration pursuant to 15 U.S.C. 1119, (4) cyberpiracy under 15 U.S.C. 1125(d), (5) violation of Georgia’s Uniform Deceptive Trade Practices Act (O.C.G.A. 10-1-370 et seq.), (6) violation of Georgia’s Anti-Dilution Statute (O.C.G.A. 10-1-440 et seq.), (7) trademark infringement and unfair competition under Georgia common law, (8) unfair competition and encroachment (O.C.G.A. 23-2-55), (9) misappropriation of right of publicity under Georgia common law, (10) breach of contract and fraud under Georgia common law, (11) interference with prospective business relations under Georgia common law, (12) attorney’s fees and costs, and (13) punitive damages. The case has been assigned to Judge Pannell.