In a case involving the doctrine of inevitable confusion and fraud in obtaining a trademark registration, the U.S. Court of Appeals for the Eleventh Circuit held that a district court did not err in ruling Angel Flight Southeast (AFSE) infringed Angel Flight of Georgia's (AFGA) common-law trademark rights by using the mark in a manner that created a substantial risk of confusion. The 11th Circuit also held that AFGA had not acquiesced to AFSE's infringing use and was not estopped by laches from enforcing its common-law rights in the mark. Similarly, the court found that the injunction entered by the district court, which was tailored to protect AFGA's rights and ensure the public would not be confused, was properly entered and that the district court did not clearly err by cancelling United States Trademark No. 1,491,541 on the ground the registration had been obtained through fraud. Angel Flight of Georgia, Inc. v. Angel Flight America, Inc., No. 07-11460 (11th Cir., April 4, 2008) (Black, J.).
Angel Flight America, founded in 2000, is a national organization of volunteer pilots dedicated to transporting needy patients and donated organs to hospitals around the country. The organization authorized its members to operate in designated geographical areas using the "Angel Flight" service marks. For reasons that are unclear, Angel Flight of Georgia (AFGA) did not become a member of AFA. When Angel Flight Southeast (AFSE), a member of AFA, opened offices and began soliciting donations in AFGA's operating area, AFGA sued AFSE for common-law trademark infringement and other related violations of state and federal law. Six months later, AFA intervened in the lawsuit, at which time AFA and AFSE raised counterclaims mirroring those claims brought against them by AFGA.
Following a five-day bench trial in July 2006, the court issued a verdict in favor of AFGA on all claims and against AFA and AFSE on their counterclaims. Four months later, the district court entered a permanent injunction, enjoining AFA and its members from using the Angel Flight mark in Georgia, Alabama, Mississippi, Tennessee, North Carolina and South Carolina for the "purpose of soliciting donations, advertising, promoting their services, or recruiting volunteers." AFA and AFSE appealed.
The appellants raised four issues:
- The district court erred by relying on hearsay testimony
to find that their use of the mark in appellee's
territory resulted in actual confusion and therefore
constituted infringement.
- The district court did not apply the doctrine of laches
or acquiescence to bar AFGA's enforcement of its
common law rights in the mark.
- The district court entered an overly broad,
"draconian" injunction.
- The district court canceled the federally registered
Angel Flight mark owned by one of the appellants on the basis
of fraud.
The 11th Circuit rejected all of appellants' arguments. Specifically, the court found that, even if evidence of actual confusion were excluded, ample evidence remained to substantiate the district court's finding that confusion was likely, especially since appellants used the "same mark in the same territory directed to the same entities by the same means." The court further reasoned that, because there was an inevitability of confusion, the appellants' affirmative defense of laches was not applicable and thus did not bar injunctive relief. The court also held that the district court had not erred in holding that AFA committed fraud on the U.S. Patent and Trademark Office (USPTO) by falsely stating in a Section 1(a) ("use") affidavit that no other organization had the right to use the mark, while knowing that others were in fact using the mark.
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