[PUBLISH] In the United States Court of Appeals For the Eleventh Circuit

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No. 22-10985 ____________________

D.H. PACE COMPANY, INC., d.b.a. Overhead Door Company of Atlanta, d.b.a. Overhead Door Company of Kansas City, Plaintiff-Counter Defendant-Appellant, versus OGD EQUIPMENT COMPANY, LLC,

Defendant-Counter Claimant-Appellee. USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 2 of 25

2 Opinion of the Court 22-10985

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Appeal from the United States District Court for the Northern District of Georgia D.C. Docket No. 1:20-cv-00410-TCB ____________________

Before BRANCH and BRASHER, Circuit Judges, and WINSOR,∗ District Judge. BRANCH, Circuit Judge: At issue in this case is whether Plaintiff D.H. Pace Company, Inc. (“Pace”), a trademark licensee, can bring a claim against a third party for unfair competition under the Lanham Act when its licensing agreement does not expressly authorize it to do so. Under the facts of this case, we conclude that it can. This appeal involves three entities, although only two are parties to this lawsuit. Pace (a company that sells and services garage doors) sued a competitor, Overhead Garage Door (“OGD”) (a company that also offers garage door services), alleging a host of federal and state law violations relating to OGD’s trade practices. Pace and Overhead Door Corporation (a garage door manufacturer that is not a party to this case but that has a name noticeably similar to Defendant OGD, its competition) have a

∗ The Honorable Allen C. Winsor, United States District Judge for the Northern District of Florida, sitting by designation. USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22/2023 Page: 3 of 25

22-10985 Opinion of the Court 3

licensing agreement in which Pace is the licensee and Overhead Door Corporation is the licensor. As part of this agreement, Pace uses Overhead Door Corporation’s marks. Before Pace brought this suit, Overhead Door Corporation and OGD had been in litigation involving OGD’s alleged trademark infringement and unfair trade practices (much like Pace’s instant allegations), which culminated in a settlement agreement between Overhead Door Corporation and OGD. In the instant lawsuit, the district court granted summary judgment to OGD on all of Pace’s claims, concluding in large part that Pace could not bring suit because Pace was a nonexclusive licensee that lacked sufficient ownership rights in Overhead Door Corporation’s marks, and because OGD and Overhead Door Corporation’s settlement agreement extinguished Pace’s claims. Pace timely appealed. After careful review of the record and with the benefit of oral argument, we conclude that Pace may bring its federal and state law claims. Accordingly, we vacate the district court’s order to the extent it is inconsistent with this opinion and remand for further proceedings. USCA11 Case: 22-10985 Document: 52-1 Date Filed: 08/22