IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF GEORGIA

ATLANTA DIVISION

ANGEL FLIGHT OF GEORGIA,

INC.,

Plaintiff
CIVIL CASE NO.
v.
1:03-CV-3620-JTC
ANGEL FLIGHT SOUTHEAST,
INC. and ANGEL FLIGHT
AMERICA,

Defendants

ORDER

Plaintiff Angel Flight of Georgia, Inc. (“AFGA”) is an Atlanta-based

volunteer pilot organization. It was founded in 1983, and assists persons

with medical and financial difficulties by arranging and providing free air

transportation to and from medically-related places, such as hospitals. Since

its inception, Plaintiff AFGA has used the ANGEL FLIGHT mark while

providing its services to individuals in Georgia, Alabama, Mississippi,

Tennessee, North Carolina, and South Carolina (the “Territory”).

After Plaintiff AFGA began to serve the Territory in 1983, Defendant

Angel Flight Southeast, Inc. (“AFSE”) formed in Florida. Like AFGA,

Defendant AFSE is a public benefit flying organization that transports

persons to and from medically-related places by air. It also uses the ANGEL

FLIGHT designation to provide services. AFGA and AFSE once worked

together to serve the southeastern United States. At one point in their

relationship, while AFSE was coordinating flights on behalf of AFGA, they

discussed a merger of their organizations, but no merger resulted.

During the 1990s, other volunteer pilot organizations were established

throughout the country to serve different regions of the United States under

the ANGEL FLIGHT name. In 2000, a number of the regional ANGEL

FLIGHT organizations formed Defendant Angel Flight America, Inc. (“AFA”),

a separate non-profit corporation that bills itself as a “national” ANGEL

FLIGHT organization. Although Defendant AFSE was included within AFA,

Plaintiff AFGA was not. Consequently, AFSE was given AFA’s southeastern

territory, which includes several of the states in the Territory in which

Plaintiff AFGA operates.

After formation of AFA, Defendants AFA and AFSE began to assert

their right to ANGEL FLIGHT in the Territory. Plaintiff AFGA first became

aware of Defendants’ use of the ANGEL FLIGHT mark in the Territory in

2001, when it learned that AFSE was planning to open an office in Augusta,

Georgia. Shortly thereafter, and continuing through the institution of this

suit, AFGA became aware of a number of incidents of consumer confusion.

For example, in several instances persons interested in donating money to

AFGA mistakenly sent their contributions to AFSE. The record also shows

2
that several individuals affected by Hurricane Katrina mistakenly contacted

Defendant AFA for help when they intended to contact Plaintiff. On multiple

occasions the news media has mistakenly confused and reported the activities

of AFGA for AFSE, and vice versa, leading to further consumer confusion.

After AFGA's informal attempts to resolve the conflict were

unsuccessful, it brought this trademark action against AFSE and AFA,

alleging numerous federal and state claims related to ownership and use of

the ANGEL FLIGHT mark. On June 22 - June 28, 2006, the Court held a

bench trial in this matter. Having carefully considered the evidence in the

record, the arguments of counsel, and the relevant law governing the parties’

claims, the Court ADOPTS Plaintiff AFGA's proposed findings of fact and

conclusions of law. Those findings and conclusions, as liberally edited by the

Court, are appended to this Order.

Consequently, the Court finds for Plaintiff AFGA on each of its claims

against Defendants AFSE and AFA: (1) a declaration that AFGA’s rights to

the ANGEL FLIGHT mark are superior to Defendants’ within the Territory;

(2) false designation of origin in violation of the Lanham Act, 15 U.S.C. §

1125(a); (3) false advertising in violation of the Lanham Act, 15 U.S.C. §

1125(a); (4) violation of the Uniform Deceptive Trade Practices Act, O.C.G.A.

§ 10-1-370; (5) violations of common law trademark infringement, unfair

3
competition and deceptive trade practices, and; (6) a declaration that AFA’s

federal registration of the ANGEL FLIGHT mark be cancelled pursuant to 15

U.S.C. § 1064 due to fraud on the Patent and Trademark Office.

The Court finds against Defendants AFA and AFSE on each of their

counterclaims against Plaintiff AFGA: (1) trademark infringement in

violation of the Lanham Act, 15 U.S.C. § 1114; (2) federal unfair competition

in violation of the Lanham Act, 15 U.S.C. § 1125; (3) false advertising in

violation of the Lanham Act, 15 U.S.C. §§ 1114, 1125; (4) fraudulent

registration of a state trademark in violation of O.C.G.A. § 10-1-449; (5)

violation of the Uniform Deceptive Trade Practices Act, O.C.G.A. § 10-1-372;

and (6) common law unfair competition.

Because Plaintiff has prevailed on its trademark claims , it is entitled

to a permanent injunction. However, any injunction entered in this case

must be carefully tailored not only to minimize the possibility of consumer

confusion in the Territory, but also to maximize the public interest in

ensuring that the good work of both parties can continue. Therefore, the

parties are encouraged to confer and jointly submit a proposed injunction

based upon the Court’s findings of fact and conclusions of law. Any jointly

proposed injunction would be based upon the Court's ruling as stated in this

Order and the appended findings of fact and conclusions of law, and would

4
not waive any legal position of either party for purposes of appeal.

If the parties cannot agree, each party is DIRECTED to submit a

proposed injunction within twenty (20) days of entry of this Order. At that

juncture, the Court will either enter an injunction based upon the parties’

submissions or schedule an injunction hearing.

In conclusion, the Court finds for Plaintiff AFGA on all claims and

against Defendants AFA and AFSE on all counterclaims. In view of the

Court’s findings of fact and conclusions of law, Defendants’ motion for

judgment as a matter of law [#113] is DENIED.

SO ORDERED, this 20th day of November, 2006.

________________
JACK T. CAMP
UNITED STATES DISTRICT JUDGE

5
 IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION

ANGEL FLIGHT OF GEORGIA,

INC.

Plaintiff

v. CIVIL CASE NO.

1:03-CV-3620-JTC
ANGEL FLIGHT SOUTHEAST, INC.
and ANGEL FLIGHT AMERICA,
INC.,

Defendants.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

I. FINDINGS OF FACT

A. The Parties And Their Operations

1. Plaintiff Angel Flight of Georgia, Inc. (“AFGA”) is an Atlanta-

based non-profit organization. (Stipulated Facts ¶ 1.) AFGA assists people

with medical and financial difficulties by arranging and providing free air

transportation to and from hospitals and other medically-related

destinations. (Id.) AFGA was formed in 1983 by Atlantan Jim Shafer, a

private pilot and medical facilities broker whose territory included the

Southeastern United States. (Shafer Tr. p. 403, ll. 17 – 23, p. 406, ll. 19 – 23,

p. 408, l. 7 – p. 409, l. 12, p. 411, ll. 21 – 22.) AFGA was incorporated in

Georgia as a not-for-profit corporation in 1985. (PX 124; Stipulated Facts ¶

2.)

2. Since its organization in 1983 and formal incorporation in 1985,

AFGA has been helping individuals in Georgia, Alabama, Mississippi,

Tennessee, North Carolina, and South Carolina (the “Territory”) while using

the name ANGEL FLIGHT. (PX 38, 64 – 65, 67 – 79, 81, 87 – 93, 95 – 102,

127 – 29, 134, 138 – 39, 141 – 45, 156 – 58, 161, 166 – 68, 169, 171 – 74, 182 –

83, 185 – 87, 189 – 91, 206; Shafer Tr. p. 403, ll. 17 – 23, p. 406, ll. 19 – 23, p.

408, l. 7 – p. 409, l. 12, p. 412, l. 3; Biron Tr. p. 43, l. 5 – p. 49, l. 10, p. 51, l.

12, p. 52, l. 3 – p. 53, l. 22, p. 54, l. 13 – p. 56, l. 7, p. 56, l. 21 – p. 61, l. 25.)

Significantly, AFGA served patients, family members and hospitals from

each of these states since before 1988.1 Moreover, AFGA representatives

recruit pilots, attend air shows, engage in hospital outreach projects, solicit

donations, and promote their services through materials and publications

bearing the word mark ANGEL FLIGHT. (Shafer Tr. p. 404, l. 21 – p. 405, l.

8, p. 406, l. 18 – p. 410, l. 8, p. 420, l. 2 – p. 423, l. 6; Biron Tr. p. 42, l. 23 – p.

43, l. 9.) Other examples of AFGA’s use of the ANGEL FLIGHT mark have

included letters, fundraising and promotional materials, monogrammed

1 See PX 38, 64 – 5, 67 – 79, 81, 87 – 93, 95 – 102, 127 – 29, 134, 138 – 39, 141
– 45, 156 – 58, 161, 166 – 68, 169, 171 – 74, 182 – 83, 185 – 87, 189 – 91, 206; Shafer
Tr. p. 403, ll. 17 – 23, p. 406, ll. 19 – 23, p. 408, l. 7 – p. 409, l. 12, p. 412, l. 3; Biron
Tr. p. 43, l. 5 – p. 49, l. 10, p. 51, l. 12, p. 52, l. 3 – p. 53, l. 22, p. 54, l. 13 – p. 56, l. 7,
p. 56, l. 21 – p. 61, l. 25.

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items, fly-arounds, patient waiver liability forms, pilot membership

materials, and mission logs, which show thousands of flights flown in the

Territory since 1983.2 (PX 95, 167, 172, 189, 190; Shafer Tr. p. 404, l. 21 – p.

405, l. 8, p. 406, l. 18 – p. 410, l. 8, p. 420, l. 2 – p. 423, l. 6; Biron Tr. p. 42, l.

23 – p. 43, l. 9; see also Popps Dep. p. 29, ll. 3 – 20; Tedder Dep. p. 8, l. 2 – p.

10, l. 9, p. 14, l. 23 – p. 15, l. 9.) AFGA has been recognized for its services in

the media and in official state proclamations.3 (PX 140, 156 – 58, 182 – 83,

187, 193 – 94.)

3. Ms. Sarah Shafer, who was the wife of AFGA’s founder, an AFGA

incorporator, an AFGA board member, and intimately involved in AFGA’s

operations until the late 1990s, testified that from AFGA’s inception in 1983,

the organization was commonly known as ANGEL FLIGHT. (PX 67, 87, 129,

134, 139; Shafer Tr. p. 404, l. 8 – p. 405, l. 14; see also Biron Tr. p. 226, l. 7 –

p. 230, l. 11.) AFGA was the first organization east of the Rocky Mountains

to use the term ANGEL FLIGHT and first to use the name ANGEL FLIGHT

in each state in the Territory. (Shafer Tr. p. 406, l. 24 – p. 407, l. 25; Boyer

2AFGA items that bore the ANGEL FLIGHT mark were, for the most part,
purchased locally. (Shafer Tr. p. 420, ll. 5 – 18). Defendants produced only one
sales invoice to the contrary. (DX 57; Weaver Tr. p. 743, l. 3 – p. 744, l. 5.)
3Although AFGA has been providing and promoting its services as ANGEL
FLIGHT since 1983, AFGA did not officially change its corporate name to Angel
Flight of Georgia, Inc. until September 1999. (PX 32, 104, 105; Shafer Tr. p. 429, ll.
10 – 13, Biron Tr. p. 233, l. 21 – p. 234, l. 10.) AFSE knew that AFGA went by
ANGEL FLIGHT, since AFGA used “Angel Flight of Georgia, Inc.” in a 1997
contract with AFSE. (PX 32.)

-3-
Tr. p. 582, ll. 12 – 15.) The pilots, John Popps, Lee Tedder, Jr., and Al Wilson

all testified that they used the term ANGEL FLIGHT when they flew

missions. (Popps Dep. p. 14, l. 18 – p. 15, l. 24, p. 17, l. 24 – p. 18, l. 6, p. 29,

ll. 3 – 20; Wilson Dep. p. 21, ll. 6 – 25, p. 26, l. 4 – p. 27, l. 3, p. 29, l. 2 – p. 30,

l. 6, p. 39, l. 22 – p. 41, l. 1, p. 41, l. 3 – p. 43, l. 25; Tedder Dep. p. 12, ll. 8 –

10, p. 12, ll. 12 – 21, p. 14, l. 23 – p. 15, l. 9, p. 18, ll. 1 – 7, p. 18, l. 11 – p. 19,

l. 10, p. 51, ll. 4 – 24.)

4. AFGA also built up its reputation in the Territory as ANGEL

FLIGHT. Supporters knew AFGA as ANGEL FLIGHT, as evidenced by the

February 20, 1985 letter saying, “you are rightly named ‘The Angel Flight.’”

(PX 161.) A press release issued by nonparty Scottish Rite Children’s

Hospital referred to AFGA as “The Angel Flight” in October 1985. (PX 128).

An Article in the Gwinnett Daily News on July 10, 1985 referred to AFGA as

“The Angel Flight.” (PX 157.)4

5. AFGA was the first organization using the ANGEL FLIGHT

designation to have offices in Georgia, South Carolina, North Carolina, and

Alabama. (PX 191; Biron Tr. p. 32, l. 6 – p. 33, l. 22, p. 34, l. 7 – p. 35, l. 5;

Shafer Tr. p. 404, ll. 8 – 11, p. 412, ll. 4 – 21.) By at least 1990, AFGA had

4 See also PX 64, 127 – 28, 156, 158, 161, 166, 187; Biron Tr. p. 67, l. 18 – p.
70, l. 11.

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pilot representatives throughout the Southeastern United States. 5 (PX 168;

Biron Tr. p. 41, l. 3 – p. 42, l. 8.)

6. Since its inception, AFGA has continuously operated within the

Territory using the service mark ANGEL FLIGHT, and was the first

organization to do so in each state in the Territory. (Shafer Tr. p. 406, l. 24 –

p. 407, l. 25.) Mr. Shafer and other AFGA pilots flew patients throughout

and to and from the Territory beginning in the early 1980s. (PX 38, 65, 67 –

79, 87 – 93, 96 – 102, 134, 141 – 45, 171; see also PX 206 (summarizing

locations of specific flights by three of AFGA’s pilots -- Wilson, Tedder, and

Popps); Shafer Tr. p. 408, ll. 7 – 19.) For example, pilot Al Wilson testified

that he flew a mission for AFGA on September 7, 1982 from Atlanta to North

Carolina, establishing use in Georgia and North Carolina in 1982. (PX 67,

206; Wilson Dep. p. 72, ll. 3 – 18, p. 73, ll. 14 – 23.) AFGA has its own record

of a mission in Georgia and Alabama as early as October 5, 1984 from

Atlanta to Huntsville, Alabama; the mission log refers to the mission as an

“Angel Flight.” (PX 134; Shafer Tr. p. 459, l. 8 – p. 460, l. 5.) A November 25,

1985 thank you letter refers to a mission in Charleston, South Carolina. (PX

185.) A 1984 pilot log of Ellen Yeung cites at least two “Angel Flights,”

including one on June 29, 1984 that flew to Raleigh, North Carolina. (PX 144

5 For example, PX 168 shows that pilot John Turrentine of North Carolina
joined AFGA in October 1984 (AFG-007225-6), and pilot Gordon J. Myatt, Jr. of
Tennessee joined in October 1988 (AFG-007221).

-5-
– 45.) A note thanks AFGA for a mission in Mississippi flown before October

20, 1986. (PX 129.) An AFGA mission log from 1987 shows flights on March

21, 1987 to Tennessee, on July 24, 1987 to Greenville, South Carolina, and on

September 10, 1987 to Raleigh-Durham, North Carolina. The 1987 Mission

Log showed multiple flights in Georgia. (PX 87.)

7. AFGA’s continuous use of the term ANGEL FLIGHT is further

supported by the testimony of three AFGA pilots, mission logs and newsletter

records that show flights on behalf of AFGA since 1982. These records show

that AFGA pilots flew not only to and from Georgia, but also flew missions

completely outside Georgia between Alabama, Mississippi, South Carolina,

North Carolina and Tennessee. (PX 38, 65, 67 – 79, 87 – 93, 96 – 102, 134,

138, 141 – 45, 171, and 206; Shafer Tr. p. 408, ll. 7 – 9; Biron Tr. p. 43, ll. 15 -

20, p. 56, l. 20 – p. 61, l. 1.) AFGA also introduced tax records and forms that

showed it was fundraising from 1985 through 2002. (PX 109 – 23, 125.)

AFGA had offices in North Carolina from 1992 until 1999, South Carolina

from 1995 until 1998, Alabama from 2002 until the present, Tennessee from

2004 until the present, and Georgia throughout its existence. (PX 191;

Shafer Tr. p. 408, ll. 8 – 11, p. 412, ll. 4 – 21; Biron Tr. p. 32, l. 6 – p. 33, l. 22,

p. 34, l. 7 – p. 35, l. 5.)

8. The first organization to use the term ANGEL FLIGHT in any

area of the country was formed by Jack Welsh in Nevada in 1982 under the

-6-
name “American Medical Support Flight Team” (“AMSFT-Nevada”). (PX

195; Davis Tr. p. 325, l. 1 – p. 326, l. 24; Shafer Tr. p. 405, l. 21 – p. 406, l. 1,

p. 415, ll. 6 – 14.) The Nevada organization dissolved before August 1986.

(PX 21 at AFW01579; Davis Tr. p. 340, ll. 8 – 17.) Both “AMSFT” and “Angel

Flight” were terms that originated with the Nevada organization. (PX 22 at

AFW07656; Shafer Tr. p. 405, l. 21 – p. 406, l. 1, p. 415, ll. 6 – 14; Davis Tr. p.

326, ll. 6 – 24, p. 349, l. 2 – p. 352, l. 11; Davis Dep. p. 27, l. 25 – p. 28, l. 10.)

After Welsh started AMSFT-Nevada, several organizations based loosely on

Welsh’s concept formed independently in different areas of the country.

(Davis Tr. p. 325, l. 18 – p. 326, l. 2, p. 330, l. 18 – p. 331, l. 9.) One of these

organizations was incorporated in the early 1980’s as AMSFT – Los Angeles –

The Angel Flight (“AMSFT-LA”). (Davis Tr. p. 325, l. 4 – p. 326, l. 2, p. 329,

ll. 1 – 7.)

9. By its own admission, the ANGEL FLIGHT mark was not

AMSFT-LA’s creation, and it never received any assignment of that mark

from any prior user. (Davis Tr. p. 326, ll. 6 – 24, p. 349, l. 2 – p. 354, l. 23.)

Rather, AMSFT-LA adopted the name from the now-defunct Nevada

organization.6 (Id.) After determining in the summer of 1986 that AMSFT-

6 While AMSFT-LA was in contact with AMSFT-Nevada at the time it began

its services, AMSFT-LA quickly distanced itself and disassociated from AMSFT-
Nevada. (Davis Tr. p. 338, l. 19 – p. 341, l. 21.) During this period and until after
1992, AMSFT-LA’s service area was limited to parts of California. (Davis Tr. p.

-7-
Nevada was no longer registered with Nevada’s Secretary of State, AMSFT-

LA appropriated the corporate name of AMSFT-Nevada, (“American Medical

Support Flight Team, Inc.”), dropping the LA modifier from its name at about

the same time as it filed for registration.7 (PX 21, 24, 27; Davis Tr. p. 340, ll.

8 – 17, p. 362, l. 23 – p. 363, l. 2; Davis Dep. p. 11, l. 19 – p. 14, l. 17; Robbins

Dep. p. 14, l. 22 – p. 15, l. 2, p. 16, ll. 7 – 21.) AMSFT-LA then modified

AMSFT-Nevada’s logo by dropping “The” from “The Angel Flight,” and

modifying the caduceus and wings logo.8 (Compare PX 20, with PX 22; Davis

Tr. p. 329, l. 8 – 23, p. 333, l. 2 – 19, p. 349, l. 2 – p. 352, l. 11.) It then

applied for, as “AMSFT, Inc.,” a federal trademark registration for that logo

design, which included the words “ANGEL FLIGHT” in stylized script, and

cited a first use date at least three years before the logo was created. (PX 27;

Davis Tr. p. 361, ll. 11 – 13.)

10. When AMSFT-LA applied for the “Angel Flight” logo, its service

area was limited to California, and its officers were aware that other

(continued…)
362, ll. 11 – 22; Weaver Tr. p. 748, ll. 5 – 17; Davis Dep. p. 73, l. 15 – p. 74, l. 14;
Weaver Dep. (June 13, 2005), p. 26, l. 22 – p. 29, l. 5.)
7 AMSFT-LA’s minute records demonstrate that it was aware that the
organization could encounter problems with changing its name or acquiring
trademark rights had AMSFT-Nevada still been an active corporation or had
someone else been using the name ANGEL FLIGHT. (PX 21, 24; Robbins Dep. p.
18, ll. 10 – 23.)
8 Mr. Gary Davis assisted in the creation of the registered logo from the old
logo, and also “made arrangements” for the registration to be filed. (Davis Tr. p.
329, ll. 14 – 23, p. 330, ll. 2 – 13, p. 334, l. 22 – p. 335, l. 11.)

-8-
volunteer pilot organizations in different parts of the country were already

using the words “ANGEL FLIGHT” in connection with their services,

including AFGA.9 (Davis Tr. p. 362, ll. 11 – 22, p. 367, ll. 3 – 12, p. 374, ll. 4 –

23, Davis Dep. p. 49, l. 2 – p. 50, l. 19.) AMSFT-LA also was aware at the

time of its application that other ANGEL FLIGHT organizations were using

a similar logo to the one it eventually trademarked, including the logo

previously used by AMSFT-Nevada. (Davis Tr. p. 367, ll. 3 – 12, p. 374, ll. 4 –

23; Davis Dep. p. 49, l. 2 – p. 50, l. 19.) Yet in conjunction with its application

for the federal registration, it declared that AMSFT-LA had been using the

logo since 1983, years before AMSFT-LA created the new logo, and that “no

other person … has the right to use said mark in commerce, either in the

identical form hereof or in such near resemblance thereto as may be likely …

to cause confusion, or cause mistake, or to deceive,” and that the statements

made therein were true and correct. (PX 27, p. 6 of 43; Davis Tr. p. 361, l. 14

– p. 362, l. 10; Robbins Dep. p. 17, l. 3 – p. 19, l. 5; p. 19, l. 11 – p. 20, l. 9.)

Although AMSFT-LA knew of AFGA’s use of “Angel Flight” in the Southeast

when it filed for its federal registration, it did not disclose this to the U.S.

Patent and Trademark Office. (PX 27; Robbins Dep. p. 18, l. 24 – p. 19, l. 5.)

9 Mr. Davis served as the corporate and Rule 30(b)(6) witness for AMSFT-LA
for the period before 1992. (Davis Dep. p. 8, ll. 3 – 25.)

-9-
 11. United States Trademark Registration No. 1,491,541 for the

ANGEL FLIGHT logo issued on June 7, 1988. (PX 26; Stipulated Facts ¶ 7.)

In the 1990s, AMSFT-LA evolved from a California organization into an

organization serving a thirteen state region in the western United States,

and ultimately became known as “Angel Flight West” (“AFW”).10 (Davis Tr.

p. 362, ll. 11 – 22; Weaver Tr. p. 748, ll. 5 – 17.) Mr. Davis and Mr. Weaver

testified that neither AFW, nor any of its predecessors, have ever operated in

any of the Southeastern states in the Territory served by AFGA.11 (Davis Tr.

p. 357, l. 15 – p. 361, l. 4; Weaver Tr. p. 749, ll. 6 – 8; Davis Dep. p. 24, l. 12 –

p. 26, l. 16.)

12. After Plaintiff AFGA began serving the Territory in 1983,

another benefit flying organization formed in Florida. AFGA’s founder, Jim

Shafer, helped Mary Webb start an organization in the mid-1980s called, at

that time, AMSFT of Central Florida. (Shafer Tr. p. 407, ll. 7 – 12, p. 412, l.

22 – p. 413, l. 5.) In 1992, AMSFT of Central Florida changed its corporate

name to “Angel Flight of Florida.” (DX 10.) In 1997, while in failed merger

negotiations with AFGA, Angel Flight of Florida changed its name again to

10Like AFGA, AMSFT-LA did not change its corporate name to “Angel
Flight” until the mid to late 1990s, even though it was known as “Angel Flight”
many years previously. (Weaver Tr. p. 753, ll. 1 – 10.)
11For convenience, and regardless of the actual corporate name used at any
given time, the corporation whose name ultimately was changed to “Angel Flight
West” is referred to hereinafter as “AFW.”

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“Angel Flight Southeast, Inc.” (“AFSE”). AFSE is one of the two Defendants

in this case. (DX 10.)

13. AFSE’s only witness who could testify about AFSE’s activities

prior to the early 1990s was the daughter of AFSE’s founder, Susan Long. 12

(Long Tr. p. 473, ll. 3 – 6, p. 473, ll. 8 – 10, p. 473, l. 14 – p. 474, l. 5.) AFSE

incorporated in June of 1986. (DX 13, 29; Stipulated Facts ¶ 4.) AFSE did

not introduce any evidence about specific activity on the part of AFSE before

the date of incorporation. (Long Tr. p. 494, ll. 12 – 20, p. 495, ll. 9 – 16; Long

Dep. p. 45, ll. 14 – 18, p. 46, l. 17 – p. 47, l. 10.) AFSE introduced no evidence

that AFSE used the name ANGEL FLIGHT prior to the dates of first use by

AFGA. (Long Tr. p. 495, l. 18 – p. 498, l. 14.) The earliest evidence of any

specific activity outside the state of Florida by AFSE is not until 1990. (DX

30.) Moreover, AFSE’s own documents and witnesses support that before

1997, all of AFSE’s missions outside of Florida were either flying a patient to

or flying a patient from Florida.13 (PX 31 at AFSE002984; DX 30 – 32; DX

120 at AFSE001950; Powers Tr. p. 592, ll. 10 – 15, p. 649, l. 1- p. 650, l. 10.)

12Ms. Long’s involvement with AFSE was limited to coordinating missions

during the month of August when her mother was on vacation, as Ms. Long lived
approximately two hours away from AFSE’s offices. (Long Tr. p. 479, l. 8 – p. 480, l.
1, p. 493, l. 25 – p. 494, l. 7, p. 494, ll. 12 – 20, p. 495, ll. 9 – 16 ; Long Dep. p. 39, ll.
9 – 23.)
13For example, AFSE’s own recitation of its history in its director’s manual
states that “[i]n January of 1997 we expanded our service area to include the states
of South Carolina, Georgia, Alabama and Mississippi.” (DX 10 at AFSE002984.)
AFSE even recognized in 1997 that “without an effective AFGA the patients [in the

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 14. At the time that AFGA and AFSE were discussing a possible

merger during the mid to late 1990’s, they entered into a Mission

Coordination Agreement. (PX 32, 33; Biron Tr. p. 82, ll. 4 – 21, p. 86, l. 15 –

p. 88, l. 2.) Under that Agreement, dated October 18, 1997, AFGA paid AFSE

a set fee per mission to coordinate missions that AFGA’s pilots flew in South

Carolina, Georgia, Alabama, and Mississippi. (PX 32 at ¶ 2; PX 206; Biron

Tr. p. 88, l. 18 – p. 89, l. 23, p. 93, l. 11 – p. 94, l. 3, p. 163, l. 10 – p. 166, l. 6;

Popps Dep. p. 50, l. 19 – p. 51, l. 13, p. 51, l. 18 – p. 52, l. 6, p. 52, ll. 11 – 15,

p. 58, ll. 13 – 20 ; Wilson Dep. p. 101, l. 21 – p. 102, l. 13, p. 102, l. 21 – p. 103,

l. 4, p. 103, l. 24 – p. 104, l. 14, p. 104, ll. 18 – 23.) Similarly, AFGA also

made a lump-sum payment to Angel Flight of Virginia, now known as “Angel

Flight Mid-Atlantic” (“AFMA”), to coordinate missions in North Carolina and

Tennessee. (PX 136, 137; Biron Tr. p. 94, ll. 4-17; p. 773, l. 19 – p. 775, l. 4, p.

779, ll. 4 – 16, p. 780, ll. 4 – 15.)

15. During this time period, AFGA maintained a paid, full-time staff

in the Georgia office, maintained its own distinct organization, retained

offices in Georgia, North Carolina, and South Carolina, recruited pilots, and

solicited its own donations, as required to pay for mission services. (PX 36 –

37, 46, 75, 76, 103, 121, 122 at AFG005379, 125, 171, 191, 206; Biron Tr. p.

(continued…)
Territory] would not be able to be served.” (PX 35 at AFSE000955; Powers Tr. p.
647, ll. 9 – 15.)

-12-
32, l. 6 – p. 33, l. 22, p. 34, l. 7 – p. 35, l. 5, p. 75, l. 14 – p. 76, l. 1, p. 86, l. 15 –

p. 87, l. 11, p. 92, l. 7 – p. 97, l. 7; Boyer Tr. p. 558, ll. 13 – 15, p. 558, l. 24 – p.

559, l. 5, p. 559, ll. 9 – 21; Shafer Tr. p. 460, l. 24 – p. 461, l. 11; Popps Dep.

p. 27, l. 23 – p. 28, l. 15; Wilson Dep. p. 48, l. 22 – p. 51, l. 14, p. 103, l. 11 – p.

105, l. 1.) AFSE and AFMA simply coordinated the missions. (PX 32.)

Moreover, AFSE and AFMA received information needed to coordinate

AFGA’s missions from AFGA’s employees, who answered the calls and

referred them to either AFSE or AFMA based upon the patient’s location.14

(Biron Tr. p. 92, l.7 – p. 93, l. 8; Boyer Tr. p. 541, ll. 6 – 11.)

16. Even after AFGA paid a lump sum to AFMA for mission

coordination in Tennessee and North Carolina, AFGA continued to fly

missions in Tennessee and North Carolina, and AFSE required that AFGA

pay AFSE for its mission coordination services to these states, in addition to

the lump sum payment AFGA had made to AFMA for those missions.15 (PX

36, 37, 75, 76, 171; Biron Tr. p. 94, l. 20 – p. 95, l. 4, p. 773, l. 19 – p. 775, l. 4,

14 AFGA also provided its pilot lists to AFSE and AFMA so that AFGA pilots
could take the flights. (PX 34; Powers Tr. p. 648, ll. 6 – 15; Biron Tr. p. 93, l. 11 – p.
94, l. 3; Boyer Tr. p. 541, ll. 6 – 11.) AFSE distinguished between AFSE and AFGA
pilots for purposes of coordination and AFGA pilots were not considered members of
AFSE unless they separately applied for AFSE membership. (PX 37, 39; Powers Tr.
p. 648, ll. 6 – 15.) Moreover, pilots did not consider themselves flying for AFSE, but
rather flying for AFGA. (Popps Dep. p. 27, l. 23 – p. 28, l. 12, p. 58, ll. 13 – 20.)
15 AFSE billed AFGA for flights that merely stopped in the Territory, even if
the patient was neither a resident of nor being treated in a state in the Territory.
(See, e.g., PX, 36, 37; Biron Tr. p. 97, l. 21 – p. 104, l. 1, p. 172, l. 10 – p. 174, l. 10, p.
230, ll. 12 – 19, p. 231, l. 2 – p. 232, l. 11.)

-13-
p. 779, l. 4 – 16, p. 780, ll. 4 – 15.) AFGA flew missions to and from

Tennessee and North Carolina that neither departed from nor arrived in

other AFGA Territory states. (PX 75, 76, 171; Biron Tr. p. 773, l. 19 – p. 775,

l. 4.) AFGA maintained an office in Asheville, North Carolina, which Jim

Tyson operated. (Biron Tr. p. 32, l. 6 – p. 33, l. 22, p. 34, l. 7 – p. 35, l. 5, p.

94, l. 18 – p. 95, l. 4.) AFGA also maintained pilots in those states and

carried out fly-ins in North Carolina during this period. (PX 34, PX 76 at

AFMA00143; Biron Tr. p. 94, l. 18 – p. 95, l. 4, p. 773, l. 19 – 775, l. 4.)

17. Merger discussions between AFGA and AFSE resumed in 1999,

but no merger resulted.16 (PX 40, 106; DX 130; Biron Tr. p. 107, ll. 7 – 25;

Powers Dep. p. 32, ll. 6 – 11.) AFGA terminated the Mission Coordination

Agreement with AFSE in November of 1999, and once again began

coordinating missions for itself in all states in the Territory. (PX 108;

Stipulated Facts ¶ 11; Biron Tr. p. 97, ll. 2-6.)

18. Other volunteer pilot organizations (“VPOs”) were also

established during the 1990s, serving different areas of the country under the
16 In 1999, when AFGA officially changed its corporate name, the Georgia
Secretary of State requested that AFGA contact AFSE, because AFSE had
registered in Georgia as a foreign corporation, and AFGA complied with the
Secretary of State’s request and provided the Secretary of State with a copy of a
letter from AFSE. (PX 39, 104, 105; DX 49; Biron Tr. p. 104, l. 10 – p. 106, l. 24.)
Significantly, AFGA asked AFSE to send a letter stating AFSE “had no objection to
our organization operating name as ‘Angel Flight of Georgia,’” not a letter stating
that AFGA had permission from AFSE to use the name. (DX 49, emphasis added.)
The Georgia Secretary of State’s office said AFGA need not contact AFW as it was
not registered in Georgia. (PX 39; Biron Tr. p. 106, l. 22 – p. 107, l. 8.)

-14-
“Angel Flight” name. Among them were AFMA; Angel Flight of Texas (now

known as Angel Flight South Central (“AFSC”)); Angel Flight PA (now known

as Angel Flight East); and Angel Flight of Oklahoma.17 (Boyer Tr. p. 527, ll.

4 – 8; Breckinridge Tr. p. 684, ll. 15 – 24; Morales Tr. p. 258, l. 21 – p. 259, l.

6; Vincent Tr. p. 235, l. 19 – p. 236, l. 25.) These organizations would

cooperate with one another through “hand-offs.” In other words, when the

journey was over long distances, a pilot from one organization flew one “leg”

of the mission into another organization’s territory, where that organization

would take the next “leg” of the journey.18 (Shafer Tr. p. 412, l. 22 – p. 413, l.

20; Biron Tr. p. 43, l. 21 – p. 46, l. 12; Breckinridge Tr. p. 689, l. 18 – p. 691, l.

11; Long Tr. p. 483, ll. 2 – 5.) This limited activity in each organization’s

respective territories was tolerated to help serve patients and did not result

17 AFSC and AFMA did not exist prior to the 1990s in any capacity. (Boyer
Tr. p. 527, ll. 4 – 8, p. 555, l. 17 – 556, l. 11; Breckinridge Tr. p. 691, ll. 17 – 22, p.
721, ll. 2 – 9.) Defendants’ attempts to establish evidence of flights in the Territory
in the 1970s and 1980s by Mercy Medical Airlift are irrelevant because defendants
admit Mercy Medical Airlift did not, and never has, used the words ANGEL
FLIGHT in conjunction with its services. (Boyer Tr. p. 532, l. 10 – 533, l. 3; p. 555,
l. 17 – p. 556, l. 11.) Thus, AFGA’s use of the mark ANGEL FLIGHT in Mississippi,
Tennessee and North Carolina necessarily predates AFSC’s claims of use of ANGEL
FLIGHT in Mississippi and Tennessee and AFMA’s claims of use of ANGEL
FLIGHT in Tennessee and North Carolina.
18 For example, AFGA’s mission logs show linking missions that landed in
Florida, Louisiana, Illinois, Kentucky, and Virginia, or flights to or from hospitals in
those states. (See, e.g., PX 65, 68 – 70, 87, 206; Wilson Dep. p. 72, l. 24 – p. 73, l. 23,
p. 74, ll. 17 – 21; p. 102, l. 21 – p. 103, l. 4; p. 109, l. 14 – p. 110, l. 5; p. 111, l. 19 – p.
112, l. 6; see also Biron Tr. p. 184, l. 2 – p. 185, l. 17.)

-15-
in confusion.19 (Shafer Tr. p. 423, ll. 13 – 19, p. 445, l. 17 – p. 446, l. 2;

Vincent Tr. p. 251, l. 21 – p. 252, l. 4.)

19. Other VPOs were also established in the 1980s and 1990s that

did not use the term ANGEL FLIGHT at all. In approximately 1991, many of

these VPOs formed what became known as the Air Care Alliance (“ACA”),

which was a loose organization that met occasionally to share best practices

information with one another. (PX 164 – 165; Biron Tr. p. 77, l. 2 – p. 78, l. 2;

Long Tr. p. 491, l. 19 – p. 492, l. 15; Morales Tr. p. 266, ll. 9 – 25; Boyer Tr. p.

501, l. 20 – 502, l. 17, p. 502, l. 25 – 503, l .9, p. 552, l. 15 – p. 553, l. 1.)

Information was shared among all participants regardless of their use of the

name ANGEL FLIGHT. (Weaver Tr. p. 764, ll. 3 – 8, p. 764, l. 12 – p. 765, l.

25, p. 766, ll. 15 – 21; Morales Tr. p. 263, ll. 3 – 15 ,p. 266, ll. 9 – 25; Shafer

Tr. p. 417, ll. 4 – 9; Weaver Dep. (June 13, 2005) p. 193, l. 3 – p. 194, l. 11.)

AFGA introduced several examples of the type of organization information

shared at ACA meetings in the 1990s. (PX 175, 177 – 181.)

19 It was also, in most cases, necessary where long flights were involved.
Witnesses testified that VPOs generally limited their expected area of service to
about 500 miles in any direction, or roughly the fuel capacity of their pilots’ planes.
(Morales Tr. p. 261, l. 19 – p. 262, l. 13; Weaver Dep. (June 13, 2005), p. 19, l. 11 – p.
21, l. 6; see also Davis Tr. p. 359, l. 24 – p. 360, l. 3.) These distance limitations
remain. For example, AFA guidelines state that no mission is to exceed roughly
1000 miles, regardless of the number of linking flights. (DX 73 at AFA01465,
numbered ¶ 6; Weaver Dep. (Oct. 27, 2005) p. 20, l. 9 – p. 21, l. 6.) AFGA does not
limit its missions’ distances. (Biron Tr. p. 37, ll. 15 -21.)

-16-
 20. Beginning in 2000, and possibly beforehand, a number of

independent organizations providing free air transportation in different parts

of the country formed a separate non-profit corporation that bills itself as a

“national” ANGEL FLIGHT organization.20 (PX 14; Boyer Tr. p. 504, l. 24 –

507, l. 7, p. 581, l. 23 – p. 583, l,. 4, p. 583, l. 21 – 584, l. 15; Weaver Tr. p.

760, l. 22 – p. 761, l. 11; Powers Tr. p. 603, ll. 7 – 14; Morales Tr. p. 268, l. 25

– p. 269, l. 11.) This corporation is Defendant Angel Flight America (“AFA”).

Some independent organizations providing services under the ANGEL

FLIGHT name -- including AFSE, AFW, AFSC and AFMA -- became

members of AFA. (DX 65.) Other independent organizations that used the

name ANGEL FLIGHT -- including Plaintiff AFGA, as well as Angel Flight

East and Angel Flight Oklahoma -- were not included. (Morales Tr. p. 265, ll.

2 – 15, p. 265, l. 22 – p. 266, l. 8; Boyer Tr. p. 582, ll. 2 – 23, p. 583, l. 21 – p.

584, l. 15; Weaver Tr. p. 761, l. 22 – p. 762, l. 8; Breckinridge Tr. p. 727, l. 19

– p. 728, l. 20.)

20 At least as early as November 1999, AFSE recognized that some ANGEL

FLIGHT organizations were “work[ing] towards a nationwide and unified Angel
Flight system and image.” (PX 14.) Mr. Powers testified that AFSE changed its
name in 1997 because “we were forming Angel Flight America, and forming regions
to do that – or, you know, to put the organization together.” (Powers Tr. p. 603, ll. 7
– 14.) Mr. Breckinridge testified that Angel Flight Texas changed its name to AFSC
because of AFA meetings that occurred in “approximately 1999.” (Breckinridge Tr.
p. 688, l. 20 – p. 689, l. 11.)

-17-
 21. AFA was formed to eliminate confusion among the organizations

using the ANGEL FLIGHT name.21 (Boyer Tr. p. 508, l. 13 – 509, l. 16, p.

546, ll. 6 – 21.) AFA’s primary function is to improve fundraising capabilities

by organizing on a national scale. (Boyer Tr. p. 505, ll. 13 – 18, p. 569, l. 25 –

p. 570, l. 16, p. 572, l. 12 – p. 575, l. 15, p. 575, l. 25 – p. 576, l. 8, p. 577, l. 25

– p. 578, l. 8, p. 581, ll. 2 – 13.) When AFA was formed, the member

organizations divided the United States into territories.22 (DX 2, 65; Boyer

Tr. p. 508, l. 13 – p. 509, l. 16, p. 510, l. 15 - 17; Weaver Dep. (October 27,

2005), p. 30, l. 14 – p. 31, l. 4, p. 31, l. 7 – p. 33, l. 11.) By agreement, each

AFA member organization was given exclusivity in its own territory to set up

offices, fundraise, recruit pilots and conduct outreach. (DX 2, 65; Boyer Tr. p.

508, l. 13 – p. 509, l. 16, p. 546, ll. 6 – 21; Breckinridge Tr. p. 688, ll. 8 – 14, p.

693, l. 16 – p. 694, l. 19.) However, the agreements specifically state that one

21 Mr. Boyer pointed out that the AFA agreement did not prevent competition
with other VPOs, including those using ANGEL FLIGHT that were not AFA
members. (Boyer Tr. p. 545, ll. 13 – 18, p. 546, ll. 6 – 21, p. 547, ll. 3 – 22.) From
AFA’s inception, AFSE has asserted its intent to develop “wings” and expand
activities in AFGA’s Territory. (PX 14.) After the Mission Coordination
Agreement’s termination, AFSE asked AFW to “nip this in the bud,” referring to
AFGA’s assertion that it would maintain its presence in the Territory. (PX 12 at
AFW01086; Weaver Tr. 754, ll. 4 – 8, p. 756, ll. 1 – 2, p. 756, ll. 1 – 14.)
AFA board members voted to take legal action against AFGA’s use of the
ANGEL FLIGHT name before this suit was filed by AFGA. (DX 70 at AFA00109;
DX 71 at AFA00086; Powers Tr. p. 643, ll. 4 – 23, Breckinridge Tr. p. 701, l. 15 – p.
702, l. 13.)
22“[I]n essence, Angel Flight America carved up the map, if you will, of the
United States, and there was an agreement amongst the groups what the primary
areas would be.” (Boyer Tr. p. 508, ll. 22 – 25.)

-18-
member organization’s flights may land in another member’s territory

without violating the exclusivity agreement.23 (DX 65 at AFA 00277,

numbered ¶ 2; Boyer Tr. p. 547, l. 25 – p. 548, l. 23.)

22. Defendant AFA does not itself coordinate or fly missions in any

part of the country. (Boyer Tr. p. 514, ll. 17 – 19, p. 566, l. 2 – 567, l. 2;

Breckinridge Tr. p. 725, ll. 22 – 23, p. 726, ll. 6 -15; Weaver Dep. (June 13,

2005), p. 170, l. 24 – p. 171, l. 5.) Those activities remain the responsibility of

AFA’s autonomous regional members. (Id.) In fact, AFA has only one

employee. (Boyer Tr. p. 566, ll. 3 – 10.)

23. In 2002, AFW transferred the rights to its federally-registered

ANGEL FLIGHT logo to AFA.24 (DX 59.) In 2003, AFA filed an application to

register the word mark “ANGEL FLIGHT.” (DX 63.) United States

Trademark Registration No. 2,895,251 for the ANGEL FLIGHT word mark

issued on October 19, 2004. (Id.; Stipulated Facts ¶ 9.)

23 “Q. And the flights by one region’s pilots into another region doesn’t detract
from the exclusivity in these other regions that we talked about? A. No, it does not.”
(Boyer Tr. p. 548, ll. 20 – 23.) Notably, AFSE itself has objected to any activity
within the state of Florida, other than linking flights, that has involved an
organization using the name ANGEL FLIGHT. (DX 123 – 25, Powers Tr. p. 630, l.
11 – 631, l. 14.)
24 Thus, when discussing ownership and priority issues with respect to the
ANGEL FLIGHT mark registered in 1988, “AFA” means “AFA and its predecessors-
in-interest” to the mark.

-19-
 24. Since its inception in 1983, Plaintiff AFGA has operated

autonomously and independently.25 AFGA has never sought or received a

written or oral license to use the words ANGEL FLIGHT from AMSFT-

Nevada, AFSE, AFW, AFA, or anyone else.26 (Shafer Tr. p. 414, l. 20 – p.

413, l. 22; Biron Tr. p. 78, l. 23 – p. 83, l. 9.) None of AMSFT-Nevada, AFSE,

AFA, AFW or their predecessors have ever had owners, directors, officers or

shareholders in common with AFGA or have exercised any control or

otherwise sought to impose rules, regulations or restrictions on AFGA with

respect to its operations or use of the ANGEL FLIGHT mark.27 (Shafer Tr. p.

25 None of the different organizations operated at the direction of or

dependence upon another, and no one organization provided guidelines or rules
regarding flying or other organizational operations that others were required to
follow. (Davis Tr. p. 355, l. 3 – p. 356, l. 18, p. 376, l. 4 – p. 377, l. 17; Shafer Tr. p.
413, l. 24 – p. 414, l. 8, p. 414, l. 20 – p. 418, l. 22; Powers Tr. p. 654, l. 5 – p. 655, l.
16; Long Dep. p. 26, l. 21 – p. 27, l. 18; see also PX 25, entitled “A Clarification of
the Management and Structure of Angel Flight (formerly known as AMSFT-Los
Angeles)”.) “This information applies solely to Angel Flight of Los Angeles, CA.
Other similarly-named groups in California and in other states are organized and
operated under their own guidelines.” (PX 25.)
26AFGA used AFW’s registered logo for some period during the 1990s after it
used the original AMSFT-Nevada logo, and before adopting its current logo in 1999.
(PX 64, 65, 154; Biron Tr. p. 190, ll. 1 – 23; Weaver Tr. p. 766, ll. 11 - 14.) However,
there is no evidence that it was provided with guidelines or conditions of use or even
by “permission.” Ms. Biron testified that the extent of AFW’s “permission” to use
the logo was limited to the logo and that what AFW said about AFGA’s use of the
logo was “nothing.” (Biron Tr. p. 156, l. 18 – p. 163, l. 9, p. 233, ll. 3 – 19; see also
Morales Tr. p. 284, l. 15 – p. 285, l. 21.)
27Indeed, the record shows that upon its formation, AFGA specifically
declined to enter into financial arrangements with the Nevada organization because
its founder believed that donations of funds to AFGA should be reserved for local
operations. (Shafer Tr. p. 417, ll. 17 – 23.)

-20-
413, l. 24 – p. 414, l. 8, p. 414, l. 20 – p. 418, l. 22; Weaver Tr. p. 758, ll. 3 – 7,

p. 762, l. 18 – p. 764, l. 11; Davis Tr. p. 355, l. 3 – p. 356, l. 18, p. 376, l. 4 – p.

377, l. 17; Biron Tr. p. 78, l. 23 – p. 83, l. 9, p. 234, ll. 8 – 22.)

25. Other independent organizations -- such as Angel Flight East

and Angel Flight Oklahoma -- have used the name ANGEL FLIGHT outside

the Territory in their own respective service areas since the early 1990’s.

(Morales Tr. p. 258, l. 21 – p. 259, l. 6; Vincent Tr. p. 235, l. 19 – p. 236, l. 25.)

AFA has never exercised control over those organizations or their use of the

ANGEL FLIGHT name and, prior to 2003, never asserted any right to do so.28

(PX 204 – 205; Morales Tr. p. 259, l. 21 – p. 261, l. 15, p. 264, l. 4 – p. 265, l. 1,

(continued…)
In spite of Defendants’ summation statement to the contrary (Tr. p. 824, ll. 3
– 20), AFW executive director Jim Weaver did not testify that he had put any
restrictions on AFGA or required AFGA to adhere to any minimal standards.
(Weaver Tr. p. 758, ll. 3 – 7, p. 762, l. 18 – p. 766, l. 2, p. 766, ll. 11 - 21.) Rather,
Mr. Weaver testified that when third parties asked for information, he would
provide the information as long as they were charitable organizations that did
benefit flying. (Weaver Tr. p. 736, ll. 2 – 17, p. 737, ll. 5 – 25, p. 740, ll. 6 – 22, p.
766, ll. 15 – 21.) Mr. Weaver did not state that such condition was ever made to
AFGA, and Mr. Weaver did not state that with respect to any organization that
such condition was in exchange for use of the name ANGEL FLIGHT. (See id.)
28Before AFA’s formation there was an undercurrent of cooperation between
all VPO’s regardless of their use of the name ANGEL FLIGHT. (PX 10.) In 1998,
Mr. Boyer wrote that “[n]one of us want to move in on another’s ‘territory’ or
‘backyard’ in actual practice or in name.” (Id.) Yet, in present day, AFMA operates
in Angel Flight East’s territory, no longer cooperates in linking flights with Angel
Flight East, and AFA has threatened legal action regarding Angel Flight East’s use
of the ANGEL FLIGHT name. (PX 204; Boyer Tr. p. 563, l. 2 – 564, l. 24; Morales
Tr. p. 269, l. 3 – p. 270, l. 18, p. 276, ll. 8 – 20.)

-21-
p. 269, l. 3 – p. 271, l. 7, p. 278, l. 6 – p. 281, l. 3; Vincent Tr. p. 241, l. 21 – p.

242, l. 22, p. 247, l. 20 – p. 251, l. 13.)

26. Before AFA was formed, no one asserted national rights to the

name “ANGEL FLIGHT.” Mr. Boyer testified that AFMA never signed a

license agreement with AFW after AFMA requested a license because the

license was for the logo, which AFMA did not use.29 (PX 1; Boyer Tr. p. 529, l.

14 – p. 530, l. 13.) AFMA did, however, use the name ANGEL FLIGHT.

(Boyer Tr. p. 527, ll. 13 – 24, p. 542, ll. 7 – 14.) In 1998, an email from AFMA

to various organizations using “ANGEL FLIGHT” proposed only a

“gentleman’s agreement” over use of the ANGEL FLIGHT word mark

because there was not already one.30 (PX 6 – 11; Morales Tr. p. 277, l. 2 – p.

278, l. 3; Vincent Tr. p. 243, l. 4 – p. 247, l. 23.) No such agreement was

reached. (Morales Tr. p. 277, l. 2 – p. 278, l. 3; Vincent Tr. p. 247, ll. 9 – 23.)

AFW admitted in a November 1999 email that it had no ability to dictate to

AFGA when and whether AFGA could use the words ANGEL FLIGHT, and

that AFW’s rights were limited to the logo design that was the subject of its

29 “[T]hrough the process of this [license] request and related dialogue, we

knew that the use of the name ANGEL FLIGHT was not considered in the same
vein as the use of the caduceus.” (Boyer Tr. p. 530, ll. 2 – 5 (emphasis added).)
30 AFA and AFSE made no attempt to explain the meaning behind this series
of correspondence even though the initiator of the emails, Mr. Boyer, and several
recipients testified at trial. The correspondence is replete with acknowledgements
that no one organization had the power to stop another’s use of the name “ANGEL
FLIGHT.” (PX 6 – 11.)

-22-
federal registration. (PX 12 – 13.) “Even though we are fully sympathetic

with your plight . . . our permission extends only to the use of the logo, and

not to the name Angel Flight.” (PX 13.) “Even if we were able to place a

geographical designation to the permission for use of the logo, that would not

preclude AF GA from still using the name Angel Flight.”31 (Id.) None of

AFW’s licenses with other organizations ever mentioned rights to the name

ANGEL FLIGHT. (PX 1 – 5; Weaver Tr. p. 750, l. 24 – p. 751, l. 15.) It was

only after the formation of AFA, which excluded other organizations using

the name “Angel Flight,” that Defendants began to assert their separate right

to restrict or control use of the words ANGEL FLIGHT. (See, e.g., DX 98,

106.)

B. Likelihood of Confusion32

27. Prior to 1999, Defendant AFSE’s own operations served only

Florida patients and Florida medical facilities. (PX 31 at AFSE002984, PX

35 at AFSE000955; DX 120 at AFSE001950; Shafer Tr. p. 423, l. 20 – p. 424,

l. 19; Powers Tr. p. 592, ll. 10 – 15, p. 649, l. 1 – p. 650, l. 10.) Beginning in
31Mr. Weaver admitted that his understanding of AFW’s ownership of the
word mark “ANGEL FLIGHT” arose in part after “conversations with attorneys,”
presumably after 1999, when AFA’s formation was being finalized and its members
being selected. (See Weaver Tr. p. 741, l. 21 – p. 742, l. 15; see also Weaver Tr. p.
744, ll. 9 – 15.)
AFA and AFSE objected to much of AFGA’s testimony regarding actual
32

confusion on the grounds of hearsay. As discussed in section II.C, infra, this type of
evidence is generally admissible under several exceptions to the hearsay rule, and
in any event, the Court has afforded the evidence its appropriate weight in view of
the totality of the record.

-23-
2001, AFGA learned that AFSE had begun promoting its own services in

AFGA’s Territory under the term “ANGEL FLIGHT.” AFSE’s new activities,

which AFSE has expanded since the filing of this action, have included

opening offices in the Territory (PX 48; Biron Tr. p. 110, l. 17 – p. 112, l. 9);

appearing at air shows within the Territory (PX 154; Darnell Tr. p. 292, l. 24

– p. 295, l. 16); circulating false rumors that AFGA was “closing their doors”

(Biron Tr. p. 112, ll. 15 – 16, p. 114, l. 1 – p. 115, l. 23; Powers Tr. p. 653, l. 18

– 654, l. 1); advising hospitals long-served by AFGA in the Territory to

contact AFSE instead of AFGA (Darnell Tr. p. 295, l. 17 – p. 297, l. 25); and

deliberately staging promotional activities under the ANGEL FLIGHT name

in Atlanta, Georgia -- AFGA’s home for over twenty years. (See, e.g., Darnell

Tr. p. 307, l. 15 – p. 308, l. 3, p. 309, l. 12 – p. 310, l. 24, p. 312, l. 23 – p. 313,

l. 24; Biron Tr. p. 140, l. 3 – p. 141, l. 10, p. 141, l. 13 – p. 145, l. 4). AFSE’s

new activities in the Territory coincided with AFSE becoming a member of

AFA and reflect an effort by AFSE to disregard and supplant AFGA as the

provider of “ANGEL FLIGHT” services in the Territory. (See, e.g., PX 12.)

There have also been instances of confusion between AFGA and AFA and

AFSC. (See Rusnak Dep. p. 16, l. 19 – p. 18, l. 18; Biron Tr. p. 148, l. 10 – p.

149, l. 11, p. 149, l. 24 – p. 150, l. 2, p. 150, ll. 4 – 14.) Before 2001, there is no

evidence of specific instances of confusion between AFGA and AFSE. (Shafer

Tr. p. 423, ll. 13 – 19; Biron Tr. p. 151, ll. 10 – 12, p. 202, ll. 3 – 25.)

-24-
 28. The ANGEL FLIGHT word mark used by the Defendants AFA

and AFSE in the Territory is identical to that used by AFGA in the Territory

for over twenty years. While the respective logos may differ, all of the parties

use the term “ANGEL FLIGHT.” (See, e,g., PX 1, 30; DX 180, 183, 189, 191,

194; Biron Tr. p. 43, ll. 2 – 9.)

29. AFSE, AFA and AFGA all use the mark ANGEL FLIGHT in

conjunction with identical services, i.e., public benefit flying. (Stipulated

Facts, ¶¶ 1, 3.)

30. AFSE, AFA and AFGA target the same consumers -- pilots,

patients, hospitals and donors -- in conjunction with these identical services,

and have identical advertising methods -- radio, television, and fundraisers.

(DX 197; Biron Tr. p. 31, l. 21 – p. 32, l. 5, p. 42, l. 23 – p. 43, l. 7, p. 141, l. 13

– p. 143, l. 15; Auten Tr. p. 663, l. 25 – p. 664, l. 5, p. 665, ll. 15 – 24; Powers

Tr. p. 594, l. 13 –p. 595, l. 5; Deal Dep. p. 24, l. 25 – p. 25, l. 8.)

31. In addition to these factors which create a likelihood of confusion,

numerous instances of actual confusion have occurred. The first time that

AFGA became aware that AFSE was conducting business in AFGA’s

Territory was in 2001, when AFGA learned that AFSE was planning to open

an AFSE office in Augusta, Georgia; when AFSE began to assert that

individuals seeking assistance should contact AFSE, not AFGA, to request

donations and fuel discounts in the Territory; and when AFSE began to

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recruit AFGA pilots. (PX 132, 135, 146 – 48, 152; Biron Tr. p. 110, l. 17 – p.

112, l. 9, p. 119, l. 20 – p. 120, l. 4.) Shortly thereafter, the director of the

airport where AFGA has its office, Peachtree DeKalb (“PDK”), confronted Ms.

Biron with a letter from AFSE, to ask why the letter was being sent to him,

since he does not sell fuel. (PX 148; Biron Tr. p. 111, l. 8 – p. 112, l. 9.) AFA

and AFSE have continued these practices and expanded them since the

litigation began. (PX 50, 126, 131, 203; DX 197; Biron Tr. p. 120, ll. 12 – 21.)

32. AFGA was also excluded from the 2001 Augusta air show in

Augusta, Georgia. (PX 154; Darnell Tr. p. 292, l. 24 – p. 295, l. 16.) AFGA

was precluded from attending because organizers told AFGA that AFSE

would be representing “Angel Flight” since AFSE had already filled out an

entry application. (PX 154; Darnell Tr. p. 292, l. 24 – p. 295, l. 16.)

33. In 2003, AFSE directed the University of Alabama Children’s

Hospital in Birmingham to contact AFSE for Angel Flight missions that

would be transporting children from the hospital to a local summer camp --

missions previously performed by AFGA. (Darnell Tr. p. 295, l. 17 – p. 297, l.

25.) That same year, a fixed base operator (vendor of fuel and other private

aircraft services) and long-time contributor to AFGA, Patrick Epps of Epps

Aviation, contacted AFGA and accused AFGA of stranding a patient, when

the mission was actually AFSE’s. (Biron Tr. p. 129, l. 12 – p. 132, l. 3;

Darnell Tr. p. 300, l. 20 – p. 301, l. 10.) In September 2003, Mr. Epps

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approached AFGA’s executive director demanding to know why AFGA pilots

were requesting fuel discounts for non-patient flights. (Biron Tr. p. 139, ll. 3

– 13, p. 139, l. 21 – p. 140, l. 2.) AFGA pilots were making no such requests.

(Id.) Mr. Epps, whose office can be seen from Ms. Biron’s office, had on

multiple occasions been confused between AFGA and AFSE, damaging the

relationship between Mr. Epps and AFGA. (Biron Tr. p. 132, ll. 1 – 3, p. 139,

ll. 3 – 13, p. 139, l. 21 – p. 140, l. 2.)

34. AFSE confused yet another fixed base operator at PDK airport,

Mercury, when AFSE scheduled a media interview at Mercury’s office. The

general manager of Mercury called AFGA’s executive director and said that

AFGA had not gotten permission to do the interview in Mercury’s office and

that the television station team had been set up in his office waiting for an

interview with Ms. Biron for some time. AFGA had not scheduled the

interview, but AFSE had sent Fox 5 a media alert requesting interviews for a

mission that it had scheduled to land at PDK airport. (PX 29; Biron Tr. p.

140, l. 3 – p. 141, l. 10.)

35. In memoriam donations have also been misdirected because of

the confusion. In 2003, individuals donated money in memory of Calvin

Miller, a deceased AFGA pilot. The donations were intended for AFGA, but

AFSE received the money instead because a newspaper published AFSE’s

contact information. (PX 155; Biron Tr. p. 145, l. 6 – p. 146, l. 14; Powers Tr.

-27-
p. 622, ll. 15 – 22.) In addition, family members of a deceased AFGA patient

in Mississippi requested that donations be made to Angel Flight in lieu of

flowers. (Biron Tr. p. 146, l. 15 – p. 147, l. 12.) The family intended that the

donations go to AFGA, but the contact information provided was for AFSC.

(Id.) The family contacted AFGA wanting a list of donors so that they could

thank them, but since AFGA received no donations, it could not provide a list.

(Id.)

36. At an April 2003 air show in Vidalia, Georgia, an individual told

AFGA that he thought his donation was given to AFGA, when AFGA was not

at that airshow. (Darnell Tr. p. 307, l. 18 – p. 309, l. 11.) In 2003, AFSE

tried to recruit pilots at an AFGA fundraising event, a meeting or “fly-in” at

Alabaster Airport in Shelby County, Alabama, with the intention of

persuading AFGA pilots to fly for AFSE. (PX 126, 131; Biron Tr. p. 117, ll. 4

– 21, p. 123, l. 23 – p. 124, l. 10.)

37. In the spring of 2005, long after AFGA filed this action, AFSE

opened a North Georgia office in Buford, Georgia. (PX 49; Biron Tr. p. 135, ll.

9 – 13.) Since then, news articles have implied that AFGA had moved to

AFSE’s Buford location or had ceased operations, and AFGA pilots were

confused as a result. (PX 48, 52, 55; Darnell Tr. p. 306, ll. 7 – 25; Biron Tr. p.

136, l. 17 – p. 137, l. 10, p. 138, l. 2 – p. 139, l. 1.)

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 38. AFSE intentionally confused the public in the Summer of 2005,

when AFSE North Georgia Wing Leader Scarlett Auten saw an article about

an AFGA pilot in a trade magazine called AutoPilot, which is headquartered

a few buildings from AFGA’s office at PDK airport and which had featured an

AFGA pilot in each issue. (Auten Tr. p. 677, l. 18 – p. 678, l. 23; Biron Tr. p.

143, l. 18 – p. 145, l. 4.) As a result of seeing the AFGA article, Ms. Auten

contacted AutoPilot and requested that AFSE pilots be featured. (Auten Tr.

p. 677, l. 18 – p. 678, l. 23.) AFSE and AutoPilot agreed that AutoPilot would

publish articles about AFSE pilots, instead of AFGA pilots, in exchange for a

paid advertising contract. (PX 58; Auten Tr. p. 677, l. 18 – p. 679, l. 1; Biron

Tr. p. 143, l. 18 – p. 145, l. 4.) Afterwards, AFGA was contacted by multiple

pilots asking, among other things, whether AFGA had moved or stopped

covering the area. (Biron Tr. p. 143, l. 18 – p. 145, l. 4.)

39. Kenneth Rusnak, the executive director and COO of AFA,

testified that during the Hurricane Katrina Relief effort, at least four

individuals telephoned AFA and said they were trying to contact AFGA.

(Rusnak Dep. p. 16, l. 19 – p. 18, l. 18) They had obtained AFA’s number

from its website, which lists AFSE as the organization serving AFGA’s

Territory. (Id.) AFA and its member organizations have benefited from AFA

being credited because of the work performed by AFGA. (See, e.g., Biron Tr.

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p. 770, l. 16 – p. 772, l. 9, p. 773, l. 1 – 15, p. 778, p. 14 – 22; Powers Tr. p.

634, l. 21 – p. 635, l. 14, p. 643, l. 24 – p. 644, l. 1.)

40. In December 2005, AFSE entered a float in the Atlanta Festival

of Trees. (Auten Tr. p. 680, ll. 2 – 10.) Ms. Biron watched the parade on

television, and while the float was displayed, a television commentator read

information from an AFGA brochure, using an AFGA tag line that stated:

“our pilots have earned their wings; now they are working on their halos.”

(Biron Tr. p. 141, l. 13 – p. 143, l. 17.) At least one individual contacted

AFGA after the parade to compliment the AFSE float. (Id.) Similarly, AFGA

has received calls about its advertisements on a Clear Channel radio station,

but AFGA was not running the advertisements; AFSE was. (Id.)

41. In February 2006, AFA sent Georgia Governor Sonny Perdue a

letter requesting that AFA be permitted to land on Georgia interstates

during times of crisis. (PX 202.) This letter made no mention of AFGA. (Id.)

Governor Perdue’s office contacted Ms. Biron to inquire about the request,

under the mistaken belief that AFGA had made the request. (Biron Tr. p.

148, l. 10 – p. 149, l. 11, p. 149, l. 24 – p. 150, l. 2, p. 150, ll. 4 – 14.)

42. AFSE scheduled a fundraising event in Alpharetta, Georgia on

June 2, 2006 at Dean Gardens. (DX 197.) In May 2006, one of AFGA’s

established donors, the Paradise Café, which is located less than two miles

from AFGA’s Atlanta headquarters, told Ms. Darnell that it had donated

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beverages to AFGA’s Dean Gardens event, thinking she was donating to

AFGA, whom her family had supported with donations for many years.

(Darnell Tr. p. 307, l. 18 – p. 308, l. 3, p. 309, l. 12 – p. 310, l. 24.) But the

event was not AFGA’s event. (Id.) It was AFSE’s. (DX 197.) Given that

AFSE’s North Georgia office was twenty-five miles away in Buford, Georgia,

and the fundraiser was twenty miles away in Alpharetta, Georgia, AFSE had

no reason to contact a restaurant less than two miles from AFGA’s office,

with whom AFGA had a prior relationship, except to gain an unfair benefit

from the confusion that would naturally result when requesting donations as

“Angel Flight.” (PX 49; DX 197.)

43. AFGA also learned that another of its prior donors from a

previous AFGA event, Fuzzy’s, had been contacted by “AFGA” about the

Dean Gardens fundraiser and had erroneously believed that AFGA had

contacted them, saying that the woman who had contacted them, named

“Charlotte,” was rude. (Darnell Tr. p. 312, l. 23 – p. 313, l. 24.) AFSE’s North

Georgia wing leader is named “Scarlett.” (Id.) Other donors and volunteers,

including AFGA pilot and Cox Communications executive Jimmy Hays and

Atlanta radio personality Scott Slade, were confused about the event,

donated money, and agreed to MC the event because they believed that the

event was for AFGA. (Darnell Tr. p. 307, l. 18 – p. 308, l. 3, p. 309, l. 12 – p.

310, l. 23, p. 312, l. 23 – p. 314, l. 23.) Afterwards, AFGA tried to determine

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how AFSE would have learned of and why AFSE would be contacting these

small donors, Paradise Café and Fuzzy’s. AFGA located a program brochure

that listed both as AFGA donors at one of AFGA’s prior events. (Darnell Tr.

p. 314, l. 24 – p. 315, l. 21.)

44. In the weeks just before trial, AFGA received a call from its

donation contact at Georgia Power, wondering why AFGA had told the

relative of a Georgia Power employee only days before his scheduled trip from

Georgia to Texas for heart treatment that AFGA could not take him. In

reality, the heart patient had unknowingly scheduled his trip with AFSE,

and AFSE was the organization that had cancelled his flight two days before

he was supposed to go to Texas for treatment. (Biron Tr. p. 133, l. 25 – p.

135, l. 8; Darnell Tr. p. 304, l. 15 – p. 305, l. 23.) The patient refused to fly.

(Darnell Tr. p. 304, l. 15 – p. 305, l. 23.)

45. In May 2006, AFGA received a call from a former AFGA pilot in

Hilton Head, South Carolina, wanting to know why AFGA had stranded a

patient in South Carolina with no flight back from Hilton Head to

Kissimmee, Florida. The passenger, it turned out, was AFSE’s passenger.

(Biron Tr. p. 132, l. 18 – p. 133, l. 16; Darnell Tr. p. 298, l. 4 – p. 300, l. 19.)

46. Since AFA received the FAA call sign “NGF,” Ms. Darnell

regularly receives calls from pilots who are confused because AFGA and other

VPOs are instructed to use the FAA call sign “CMF,” but towers are

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instructing AFGA pilots to use the NGF sign because ANGEL FLIGHT is in

the organization’s name. (PX 130, 150 – 51; Darnell Tr. p. 315, l. 22 – p. 319,

l. 5.)

47. Since AFSE opened its office in the Augusta area in 2001, there

have been more than 100 documented instances of actual confusion resulting

from AFSE’s use of the term “Angel Flight.” (Darnell Tr. p. 306, ll. 23 – 25;

Biron Tr. p. 138, l. 17 – p. 139, l. 1.) AFSE’s and AFA’s conduct within the

Territory has led to stranded passengers, confused healthcare providers,

misdirected charitable contributions, strained relationships with suppliers

and volunteers, confused media, and at least one confused governor.33

48. The record evidences that AFSE has intended for the public to be

confused and to benefit from that confusion. AFSE contacted AFGA donors

that AFSE would not have normally contacted due to the donors’ size and

location, except that they were known AFGA donors who could be expected to

donate to “Angel Flight.” (Darnell Tr. p. 314, l. 24 – p. 315, l. 21.) An AFSE

officer told people in AFGA’s Territory that AFGA was “closing its doors.”

(Biron Tr. p. 112, l. 15 – 16, p. 114, l. 1 – p. 115, l. 23; Powers Tr. p. 653, l. 18

– 654, l. 1.) AFSE opened a metro Atlanta office long after this action was

filed. (PX 48, 49; Biron Tr. p. 135, ll. 9 – 13.) AFSE intentionally sought
Other evidence of confusion have been misdirected emails, thank you
33

letters sent to the wrong organization, and correspondence that misstates the
affiliation of organizational members. (See, e.g., PX 59, 133, 159; Biron Tr. p. 147, l.
16 – p. 148, l. 6, p. 151, ll. 5 – 9.)

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promotion in a magazine located at AFGA’s headquarters, PDK, which Ms.

Auten knew had been profiling AFGA pilots, and accepted an exclusive

contract with the magazine, preventing further profiling of AFGA pilots and

necessarily leading to confusion. (Auten Tr. p. 677, l. 18 – p. 679, l. 1; Biron

Tr. p. 143, l. 11 – p. 145, l. 4.) Moreover, AFSE has contacted hospitals

already working with AFGA and directed the staff members that the correct

number to call was now in Florida. (Darnell Tr. p. 295, l. 17 – p. 297, l. 25.)

49. After AFGA’s informal efforts to resolve the matter with AFSE

were unavailing, AFGA sent a letter asking AFSE to stop using the ANGEL

FLIGHT name in the Territory on May 8, 2003. (PX 160.) AFGA then filed

this action against AFSE. AFA later intervened. Significantly, AFGA has

requested no monetary relief. It requests only narrowly-tailored injunctive

relief to stop AFSE and AFA from confusing the public through its use of the

term “ANGEL FLIGHT” within AFGA’s Territory. The injunction requested

by AFGA would not operate to prevent AFSE or any other VPO from

providing services in the Territory; rather, it merely prevents the use of

ANGEL FLIGHT in the Territory in conjunction with those services.

50. After this action was filed, AFGA attempted to alleviate some

confusion and further distinguish between the parties. (Biron Tr. p. 154, l. 13

– p. 155, l. 6.) Such attempts -- even with AFSE referring to itself as “Angel

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Flight Southeast” or “Angel Flight SE” -- have not alleviated the confusion.34

Both AFA and AFSE have admitted likelihood of confusion in its

counterclaims and testimony, and have produced documents acknowledging

that likelihood. (PX 42; Weaver Tr. p. 759, ll. 15 – 20; Weaver Dep. (June 13,

2005), p. 86. ll. 20 – 25.) AFA’s own internal agreements require exclusive

areas of service for each member “to eliminate confusion . . . competition and

wasted resources.” (DX 65; Boyer Tr. p. 546, ll. 14 – 21.) Moreover,

volunteers and the public frequently refer to their organizations as “Angel

Flight” without any additional designation, and AFGA’s logo refers only to

“Angel Flight.” (PX 64, 85, 154, 161; Biron Tr. p. 109, ll. 1 – 23; Shafer Tr. p.

405, l. 16 – p. 406, l. 21; Tedder Dep. p. 51, ll. 4 – 24; Wilson Dep. p. 31, ll. 1 –

14, p. 40, l. 23 – p. 43, l. 25.)

C. Harm to the Parties and Public

51. AFSE’s and AFA’s actions above have caused actual and likely

confusion and have harmed AFGA and the public as a result.

34 For example, Ms. Auten testified that despite inviting a reporter to an

AFSE meeting where she listened to AFSE pilots speak about their experiences and
received AFSE promotional information, the reporter still publicized that AFSE had
its office at Peachtree DeKalb Airport for many years before the Buford office
opened. (PX 48; Auten Tr. p. 675, l. 9 – p. 677, l. 12.) Ms. Auten has also received
correspondence affiliating her with AFGA. (PX 59.) Ms. Auten further testified
that she does not disclaim association from AFGA in every instance of fundraising
and outreach to the public, such as when she introduces the organization in person.
(Auten Tr. p. 682, l. 25 – p. 683, l. 18.) AFSE advertisements evidence that AFSE
does not always disclaim association with AFGA. (DX 197; Auten Tr. p. 683, l. 19 –
p. 684, l. 1.)

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 52. AFGA has and will continue to be harmed by AFSE’s use of the

name ANGEL FLIGHT in AFGA’s Territory. AFGA is harmed through the

loss of its reputation and good will, the loss of pilots who might have thought

they were signing with AFGA when in fact they were signing with AFSE, and

the loss of funds through diverted donations. (See, e.g., Biron Tr. p. 119, l. 20

– p. 120, l. 4; p. 121, l. 2 – p. 122, l. 22, p. 132, l. 1 – p. 140, l. 2, p. 143, l. 18 –

p. 145, l. 14; Darnell Tr. p. 292, l. 24 – p. 295, 1. 16, p. 307, l. 18 – p. 308, 1. 3,

p. 309, l. 12 – p. 310, l. 24, p. 312, l. 23 – p. 313, l. 24.) AFGA’s reputation

and good will are damaged when the actions of AFSE, such as stranding

patients, are attributed to AFGA. (See, e.g., Biron Tr. p. 129, l. 12 – p. 132, l.

3, p. 132, l. 18 – p. 133, l. 16, p. 133, l. 25 – p. 135, l. 8; Darnell Tr. p. 295, l.

17 – p. 297, 1. 25, p. 298, l. 4 – p. 301, l. 10, p. 304, l. 15 – p. 305, l. 23.) AFGA

is also harmed when its good deeds are attributed to AFA. (Biron Tr. p. 770,

l. 1. 16 – p. 772, l. 9, p. 773, ll. 1 – 15, p. 778, ll. 14 – 22; Powers Tr. p. 634, l.

21 – p. 635, l. 14, p. 643, l. 24 – p. 644, l. 1.) Moreover, AFGA’s employees

and volunteers have lost a considerable amount of time that could have been

devoted to educating the public and health care providers about its services

because AFGA has had to counteract the confusion and explain that AFGA is

not the same as, affiliated with or subordinate to AFA and AFSE. (Biron Tr.

p. 776, l. 5 – p. 778, l. 10.)

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 53. More importantly, the public in the Territory has been and will

continue to be harmed by AFSE’s and AFA’s use of the name ANGEL

FLIGHT in the Territory. The public is harmed when patients are so

frustrated that they refuse to use any benefit flying services to get to medical

treatment (Biron Tr. p. 133, l. 25 – p. 135, l. 8; Darnell Tr. p. 304, l. 15 – p.

305, l. 23); when family members are disheartened to learn that donations on

behalf of their deceased loved ones were directed to organizations with which

their loved one had no affiliation (Biron Tr. p. 145, l. 6 – p. 147, l. 12); when

patients and families are unable to write thank you letters to donors because

the organization that was intended to receive funds does not have the

information, because it did not receive the donations (id.); and when donors

who intend to donate time, goods or money to one particular organization

learn that they have donated their time, goods or money to a different

organization. (See, e.g., Darnell Tr. p. 307, 1. 18 – p. 308, 1. 3, p. 309, l. 12 –

p. 310, l. 24, p. 312, l. 23 – p. 314, l. 23; Biron Tr. p. 121, l. 2 – p. 122, l. 22.)

The critical members of these benefit flying organizations – the pilots – are

also harmed in that many have become frustrated at the process in dealing

with the FAA, in showing up to events believing they are for one

organization, when in fact they are not, or believing that AFGA has ceased

operating or is moving operations. (See, e.g., Darnell Tr. p. 315, l. 22 – p. 319,

l. 5; Biron Tr. p. 136, l. 17 – p. 137, l. 10, p. 138, l. 2 – p. 139, l.1, p. 143, l. 18 –

-37-
p. 145, l. 4.) These harms to consumers resulting from the confusion stand

out as immeasurable but cognizable harms above and beyond that caused to

the organizations.

54. AFA, AFMA, AFSC35 and AFSE will not be unduly harmed if

enjoined from using the name ANGEL FLIGHT in the Territory, though they

claim they will with respect to national fundraising programs and grants that

AFA members have implemented, such as Ronald McDonald charities,

HSEATS (“Homeland Security Emergency Air Transport System”) and the

Combined Federal Campaign. (Boyer Tr. p. 516, l. 25 – p. 517, l. 16, p. 518, l.

14 – p. 519, l. 23; p. 520, ll. 1 – 12; Breckinridge Tr. p. 704, l. 13 – p. 707, l. 18,

p. 708, l. 17 – p. 710, l. 18, p. 711, 1. 2 – p. 712, l. 21; Powers Tr. p. 636, ll. 5 –

16, p. 637, l. 25 – 640, l. 15.)

55. First, no action enjoining the use of ANGEL FLIGHT in the

Territory will prevent AFSE or AFA’s members from continuing to provide

their services to their patients. (Powers Tr. p. 641, ll. 13 – 23.) AFGA and

many other VPOs that do not use the name ANGEL FLIGHT provided

emergency assistance during 9/11 and the Katrina disasters, without the aid
35 AFMA and AFSC are not parties to this action. However, representatives
of these organizations attended the majority of depositions in this case and testified
for the Defendants at trial. (Boyer Tr. p. 543, ll. 9 – 24, p. 585, ll. 3 – 22, p. 586, ll. 7
– 9, p. 587, ll. 14 – 22; Breckinridge Tr. p. 721, l. 10 – p. 722, l. 4, p. 722, l. 23 – p.
723, 1. 17.) A representative of AFSC verified answers to AFA’s initial
interrogatories and held a position on AFA’s intellectual property committee while
this litigation was pending. (Breckinridge Tr. p. 727, ll. 5 – 25.) AFMA produced
documents in this case. (See, e.g., DX 46, 129.)

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of a national grant. (Biron Tr. p. 28, l. 7 – p. 29, l. 1, p. 770, l. 16 – p. 771, l.

24; Powers Tr. p. 641, ll. 21 – 23, p. 655, ll. 17 – 19.) AFGA has and remains

in cooperation with Ronald McDonald House and other charitable

organizations without being a member of AFA. (Biron Tr. p. 770, ll. 4 – 15.)

No witnesses testified that enjoining the use of the mark ANGEL FLIGHT in

the Territory would prevent the continuation of these programs or services,

but that it would rather inconvenience raising funds and conducting certain

promotions.36 (Boyer Tr. p. 583, ll. 11 – 20; Breckinridge Tr. p. 704, l. 13 – p.

705, l. 11, p. 706, l. 6 – p. 707, l. 18; Powers Tr. p. 638, l. 6 – p. 640, l. 15.)

Use of the ANGEL FLIGHT name is not some requisite to performing the

service or receiving funds. For example, HSEATS is a government grant for

air transport services during times of crisis that was obtained by and is

managed by Mercy Medical Airlift, a member of AFA that has never used the

name “ANGEL FLIGHT.” (Boyer Tr. p. 555, ll. 11 – 22; Powers Tr. p. 660, ll.

2 – 20; Breckinridge Tr. p. 723, l. 18 – p. 724, l. 8.) Nothing prevents AFA or

its members from continuing to use that grant to provide benefit flying

36 For example, Mr. Breckinridge stated that it would be “very confusing” for
AFA as it “would not look like a national program,” that AFSC would have to
change the name of its Golf Tournament and that it may hamper efforts to obtain
promotion from an actor in Tennessee. (Breckinridge Tr. p. 706, l. 10 – 707, l. 18.)
Mr. Powers agreed that if enjoined, it would make things “more complicated” and
things “just wouldn’t run as smoothly.” (Powers Tr. p. 639, l. 4 – 6, p. 640, l. 2 – 6.)
Mr. Weaver testified that the only harm AFA would incur would be that it would
make it difficult to state that “we serve all 50 states”; he further stated that “it may
not disrupt the actual mission flying.” (Weaver Tr. p. 745, l. 18 – p. 746, l. 15.)

-39-
services under a different name. (See, e.g., Powers Tr. 658, l. 5 – p. 659, l. 18;

p. 660, ll. 2 – 20.)

56. Second, AFA and AFSE are the authors of their own misfortune.

AFA’s members knew when they formed AFA around 2000 that there were at

least three organizations that were not becoming members of AFA that were

using the word mark ANGEL FLIGHT when they formed, but AFA and

AFSE chose to go by ANGEL FLIGHT in the Territory anyway. (PX 6 – 11,

15 – 17, Boyer Tr. p. 583, l. 21 – 584, l. 15; Breckinridge Tr. p. 727, l. 9 – 728,

l. 20.) AFA was fully aware of the confusion that is caused by having

multiple ANGEL FLIGHT organizations operating within the same

geographic area, and agreed to exclusivity among the AFA members to

prevent confusion. (DX 65; Boyer Tr. p. 508, l. 13 – p. 509, l. 16, p. 510, ll. 15

– 17.) The AFA members could have prevented any significant expenditures

regarding the ANGEL FLIGHT name when AFA formed by either (1)

including all Angel Flight organizations or (2) choosing an alternative name,

since the members were aware of the long-term use of the name ANGEL

FLIGHT by organizations outside the AFA network. Certainly, there is cost

involved when any organization changes its name. But this is a cost that

AFA should have had when it formed, and AFA is willing to impose that

same cost on other charities. For instance, AFA demanded that Angel Flight

East change its name or face legal consequences, and agreed that Angel

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Flight East would incur the same expense as AFSE if Angel Flight East

changed its name.37 (PX 204; Breckinridge Tr. p.718, l. 12 – p. 720, l. 15.)

Moreover, AFA and AFSE were on notice of AFGA’s claims since early 2003,

and they have continued and increased their activity in the Territory since

this lawsuit to their own detriment. (See, e.g., PX 57, 160, 202.)

57. Third, AFA claims it had a study conducted that estimated that it

would take between three and five million dollars to coin an alternative name

to ANGEL FLIGHT, should the Court issue an injunction against AFA and

AFSE prohibiting their use of the ANGEL FLIGHT name in the Territory.

(Breckinridge Tr. p. 707, l. 19 – p. 708, l. 4, p. 712, l. 22 – p. 713, l. 14.) This

is not credible as it is not backed by the study itself or performed by an

expert.

II. CONCLUSIONS OF LAW

A. Jurisdiction, Venue and Applicable Law

1. This action arises under the Lanham Act, 15 U.S.C. §§ 1051 et

seq., and under state law governing related claims that arise out of the same

operative facts. This Court has subject matter jurisdiction pursuant to 28

U.S.C. §§ 1331 and 1338 as well as 15 U.S.C. § 1338(b), and under the

doctrine of supplemental jurisdiction pursuant to 28 U.S.C. § 1367.

37“Q. My question was: It would have cost Angel Flight East to change its
name. A. Absolutely. The same costs as what Angel Flight Southeast would bear if
they had to change their name.” (Breckinridge Tr. p. 720, l. 11 – 15.)

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Personal jurisdiction and venue are proper in this Court pursuant to 28

U.S.C. § 1391.

2. AFGA has asserted the following claims against AFSE and AFA:

(1) a declaration that AFGA’s rights to the ANGEL FLIGHT mark are

superior to the defendants within the Territory at issue; (2) false designation

of origin in violation of the Lanham Act, 15 U.S.C. § 1125(a); (3) false

advertising in violation of the Lanham Act, 15 U.S.C. § 1125(a); (4) violation

of the Uniform Deceptive Trade Practices Act, O.C.G.A. § 10-1-370; (5)

violations of common law trademark infringement, unfair competition and

deceptive trade practices, and; (6) a declaration that AFA’s federal

registration of the ANGEL FLIGHT mark be cancelled due to fraud on the

Patent and Trademark Office pursuant to 15 U.S.C. § 1064.

3. Defendant AFA has also raised counterclaims against AFGA: (1)

trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1114;

(2) federal unfair competition in violation of the Lanham Act, 15 U.S.C. §

1125; (3) false advertising in violation of the Lanham Act, 15 U.S.C. §§ 1114,

1125; (4) fraudulent registration of a state trademark in violation of

O.C.G.A. § 10-1-449; (5) violation of the Uniform Deceptive Trade Practices

Act, O.C.G.A. § 10-1-372; and (6) common law unfair competition.

4. Trademark infringement is proven by establishing (1) rights in a

mark and (2) likelihood of confusion. Conagra, Inc. v. Singleton, 743 F.2d

-42-
1508, 1512 (11th Cir. 1984); see also Jellibeans Inc. v. Skating Clubs of Ga.,

Inc., 716 F.2d 833, 839 (11th Cir. 1983). The first element is established by

proving ownership or “priority” in a mark. See Allard Enters., Inc. v.

Advanced Programming Res., Inc., 249 F.3d 564, 572 (6th Cir. 2001)

(holding that the owner of a trademark is the first to use that trademark in

commerce). Violations of the Lanham Act, including false designation of

origin and false advertising, the Georgia Deceptive Trade Practices Act, and

the common law claims of unfair competition and infringement are all

determined on the basis of a likelihood of confusion. See Jellibeans, Inc.,

716 F.2d at 839; see also 15 U.S.C. § 1125(a) (prohibiting false designation of

origin likely to cause confusion); Foxworthy v. Custom Tees, Inc., 879 F.

Supp. 1200, 1209 (N.D. Ga. 1995) (the Lanham act “protects unregistered,

common-law trademarks from infringement by unauthorized users where

the unauthorized use would likely confuse the consuming public as to the

source or sponsorship of the goods or services”).

5. Plaintiff AFGA’s and Defendant AFA’s Georgia state law and

common law claims “involve[] the same dispositive question as the federal

Lanham Act count,” Jellibeans, Inc., 716 F.2d at 839, “provide[] for a similar

civil action to remedy infringement . . . and [are], both in structure and

purpose, similar to [their] federal counterpart,” Rolls-Royce Motors, Ltd. v.

A&A Fiberglass, Inc., 428 F.Supp. 689, 693 – 94 (N.D. Ga. 1977). Thus,

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 sufficient proof of likelihood of confusion made by the party with superior

rights in the Territory will entitle that party to relief based on all of the

above causes of action.

6. The fact that the parties are charities does not alter the analysis.

There is no “non-profit” or “charitable” business exception to trademark law.

A non-profit organization that develops rights in a mark is entitled to all of

the protection that a for-profit corporation would have in its mark. See

Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1199 & n.19

(11th Cir. 2001) (acknowledging that nonprofit-seeking ventures have

ownership rights in marks and the right to protect the marks against unfair

competition).

B. Ownership of the ANGEL FLIGHT Word Mark

1. Priority of Use in the Geographic Region

7. The first issue that must be addressed is a determination of

which party is entitled to priority of rights in the mark ANGEL FLIGHT.

“The first to use a mark in the sale of goods or services is the ‘senior user’ of

the mark and gains common law rights to the mark in the geographic area in

which the mark is used.” Allard Enters., 249 F.3d at 572.

8. While a federal trademark registration provides prima facie

evidence of the registrant’s “exclusive right to use” a mark nationally,

registration alone does not establish superior rights in a territory over a user

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who used the mark before the registration date. See id. Indeed, “[f]ederal

registration of a trademark or service mark cannot create rights and priority

over others who have previously used the mark in commerce”; rather, a junior

user’s trademark registration acts to limit the senior user to the geographic

area in which it had demonstrated use before the mark’s registration. See

id.; see also Burger King of Fla., Inc. v. Hoots, 403 F.2d 904, 907 (7th Cir.

1968) (stating that trademark owner had exclusive rights to the mark,

“except to the extent that such use infringe[d] what valid right the

defendants have acquired by their continuous use of the same mark prior to

plaintiffs’ federal registration”). Even the “incontestable” status of a mark

does not affect the rights of a senior user. See Marshak v. Treadwell, 240

F.3d 184, 198 n.10 (3d Cir. 2001).

9. Defendants’ assertion that the rights in the 1988 logo trademark

are effective as of the date of AFW’s stated date of first use in its application

is inaccurate. (Tr. p. 810, ll. 1 – 11, p. 810, ll. 18 – 25, p. 820, ll. 14 – 16.)

Because the federal registration at issue was filed before 1989, the year of the

Lanham Act’s applicable amendment, it is the registration date that

establishes national rights to the mark. See J. Thomas McCarthy, McCarthy

on Trademarks and Unfair Competition § 26:31.38 The 1989 Amendment was

38Certain applications for registration filed after the 1989 amendments may
claim that the application date provides constructive notice of use as of that date.
McCarthy § 16:19, 26:31. Even that amendment, inapplicable here, did not grant

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not retroactive. See ALPO Petfoods, Inc. v. Ralston Purina Co., 913 F.2d 958,

964 (D.C. Cir. 1990). Not only does the date of first use stated in an

application not establish the date the registrant can claim nationwide rights

in a mark, such stated first use in an application does not even provide any

proof of use whatsoever. See McCarthy § 16:18, 19 (“The registration, per se,

is proof of use only as of its filing date, not the date of first use claimed in a

use-based application”); see also Harvey Aluminum, Inc. v. Am. Screen Prods.

Co., 305 F.2d 479, 481 (C.C.P.A. 1962) (“[T]he cited decision is not authority

for giving a registrant the benefit of a date of first use alleged in its

application.”); Cambridge Rubber Co. v. Sun Valley Mfg. Co., 137 U.S.P.Q.

385, 386 (T.T.A.B. 1963) (applying same rule to incontestable registrations).

10. “Use in commerce” is broadly defined in the Lanham Act; a mark

is used “when it is used or displayed in the sale or advertising of services and

the services are rendered in commerce.” See 15 U.S.C. § 1127. The “service”

at issue in this case is benefit flying: the transportation of patients from a

state in the Territory to a facility within or without the Territory, and the

transportation of patients from states outside the Territory to a facility in the

Territory. Priority may also be established through use in “articles in

newspapers and trade publications, as well as in media outlets,” and through

(continued…)
nationwide rights to a registrant as of the stated date of first use in the application.
McCarthy § 16:19, 20:28.

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the public’s own use of the mark. See Johnny Blastoff, Inc. v. L.A. Rams

Football Co., 188 F.3d 427, 434-35 (7th Cir. 1999) (stating that the defendant

acquired common law rights to the mark through media coverage and public

association before the plaintiff registered the mark).

11. It is undisputed that the AFA design mark containing the words

“Angel Flight” at issue, United States Trademark Registration No. 1,491,541,

was formally registered on June 7, 1988; and that the word mark ANGEL

FLIGHT itself was not registered by AFA until October 19, 2004. The record

above establishes that AFGA was the first to use “Angel Flight” as a mark

throughout and to and from the Territory in commerce well prior to the date

of AFA’s earliest federal registration, and continuously since. 39 AFGA has

established through the testimony of Ms. Shafer, the testimony of pilots John

Popps, Lee Tedder, Jr. and Al Wilson, mission logs, thank you letters,

application and membership forms and other various documentation that it

used the term ANGEL FLIGHT at least as early as 1984 in conjunction with

39 Moreover, this analysis gives AFA the benefit of the 1988 logo registration
rather than a word mark registration. The 1988 federal registration includes the
stylized words ANGEL FLIGHT in conjunction with the logo: a caduceus, heart and
wings. That the trademark encompasses all of these elements is evidenced by the
mark and the formal registration. AFGA and AFA’s predecessor recognized this, as
(1) many different versions of logos have been used throughout the country by
various entities who are not associated with AFA, (2) AFW conceded in
correspondence that its logo registration did not give it rights to control use of the
word mark, (3) users, including AFA members, discussed in 1998 that no one entity
had nationwide rights, and (4) AFA did not apply for registration of the word mark
alone until 2003.

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its services. It has established flights in all states in the Territory before

1988. The record also shows that neither AFA (the holder of the federal

registration), nor its predecessor AFW, flew any missions or rendered any

services in AFGA’s Territory prior to 1988 or, indeed, at any other time.

Thus, Defendant AFA cannot claim common law priority rights in an area

where it never personally used the mark in commerce. See, e.g., Tumblebus,

Inc. v. Cranmer, 399 F.3d 754, 765-66 (6th Cir. 2005).40

12. Defendant AFSE’s common-law usage in the Territory is also

junior to AFGA’s prior rights. AFGA began flying in the Territory in 1983;

whereas, AFSE cannot show it even existed before 1986. AFSE presented no

evidence of specific flights or other activity outside of Florida before 1990. 41

40 AFA and AFSE have argued that AFW could claim common law priority
rights in the Territory because the services are in conjunction with aviation and
thus the natural zone of expansion is the entire United States. Courts construe the
zone of expansion doctrine very narrowly. See Accu Personnel v. Accustaff, Inc., 846
F. Supp. 1191, 1208-09 (D. Del. 1994), partial summary judgment granted, 38
U.S.P.Q. 2d 1443 (T.T.A.B. 1996) (“The proper inquiry, rather, is into what regions
did plaintiff actually plan to expand at the time defendant adopted and began using
its trademark”). Thus, even assuming AFW’s seniority is legitimate in light of
concurrent usage by AMSFT-Nevada, a zone of expansion that includes the entire
United States is inapplicable in this instance because (1) witnesses from both sides
testified that VPOs thought regionally and believed their area of service to be the
typical range of the planes being used for the service, roughly 500 miles, and (2)
AFA itself limits all member flights to 1000 miles or less.
41 AFSE claims priority because it registered the corporate name “Angel
Flight Southeast, Inc.” in each state in the Territory before AFGA registered as
“Angel Flight of Georgia, Inc.,” and because AFGA did not change its corporate
name until 1999. AFSE’s race to the secretaries of state in 1999 and 2000 does
nothing to establish seniority over AFGA in the Territory because AFGA has
established actual use in the Territory before AFSE, regardless of its official
corporate name. “[A] state does not pass upon the legality of a corporate name by

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AFGA has presented the earliest evidence in the record of specific missions

flown to, from or between each state in the Territory. Furthermore, until at

least 1997, AFSE’s flights were all tied to Florida.

13. AFA and AFSE argue that (1) AFGA has only produced a

“modicum of evidence” on priority and has thus failed to meet its burden and

(2) that even if the evidence were sufficient, AFGA has established priority of

use only in the cities in which it can prove it landed. These arguments must

fail. First, priority is established by preponderance of the evidence. West

Fla. Seafood Inc. v. Jet Rests., Inc., 31 F.3d 1122, 1125 – 26 (Fed. Cir. 1994).

“[O]ne should look at the evidence as a whole, as if each piece of evidence

were part of a puzzle when, fitted together, establishes prior use.” Id. AFGA

has provided sufficient testimony and documentation of use in the Territory

before AFA’s predecessors and AFSE; AFSE has produced no evidence to

demonstrate use anywhere before 1986, and no specific evidence of use in the

Territory before 1990. Second, while trademark rights may be delineated

within state boundaries, common law trademark rights have traditionally

(continued…)
merely permitting incorporation under that name.” Hulbert Oil & Grease Co. v.
Hulbert Oil & Grease Co., 371 F.2d 251, 254 (7th Cir. 1966). “A corporate name,
although derived through authority of the state, cannot be used in a manner which
will result in fraud or deception.” United States Ozone Co. v. United States Ozone
Co. of Am., 62 F.2d 881, 887 (7th Cir. 1932). Therefore, even though AFSE, in its
desire to expand its service area to comport with AFA’s regional aspirations, out-
filed AFGA, this does not prevent AFGA from asserting its common law rights to
the ANGEL FLIGHT mark.

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been assigned by state. See Armand’s Subway, Inc. v. Doctor’s Assoc., Inc.,

604 F.2d 849, 851 & n.3 (4th Cir. 1979) (granting plaintiff exclusive use in

the District of Columbia and defendant exclusive use in Connecticut).

Trademark boundaries may also be established by reputation. See Peaches

Entm’t Corp. v. Entm’t Repertoire Assoc., Inc., 62 F.3d 690, 693 (5th Cir.

1995) (stating that “[a] party who has established a reputation in an area

may acquire exclusive rights to its mark there, even though the product

bearing the mark is unavailable”) (internal citations omitted)). AFGA not

only flew to cities in the states in the Territory, but served these state’s

patients and hospitals and established offices in the states before AFSE.

AFSE did not begin to actually serve these states on its own until after the

termination of the Mission Coordination Agreement in 1999. Thus, at a

minimum, AFGA established actual use in the cities in which it landed and a

reputation throughout the Territory from promotion by its pilots and resident

patients.42

14. In sum, AFGA is entitled to exclusive use of the ANGEL FLIGHT

mark in commerce in the Territory. It has established priority of use over

AFA and over AFA’s members, including AFSE, AFSC, and AFMA in each

state in the Territory.

42 An injunction granting geographic carve-outs of rights in the Territory to
both AFSE and AFA would hardly cure the inevitable confusion of having two Angel
Flight organizations in the same geographic region, and it would be impossible for
the Court to effectively manage.

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 2. Potential Licenses with AMSFT-Nevada or AFA

15. AFA and AFSE appear to contend that even if AFGA is the senior

user in the Territory, it was operating as a licensee of some other entity and,

therefore, is estopped from claiming that it owns the rights in the ANGEL

FLIGHT mark that it established in the Territory.43 AFA and AFSE first

suggest that AFGA was a licensee of AMSFT-Nevada. Alternatively, AFA

and AFSE contend that AFGA was a licensee of AFA’s predecessor, AFW.

Neither contention has merit.

16. Since non-profit entities are subject to the same law as for-profit

corporations with respect to trademarks, a non-profit organization must

abide by the same standards as any other trademark owner when it

endeavors to license its mark to other organizations. See, e.g., Secular

Organ. For Sobriety, Inc. v. Ullrich, 213 F.3d 1125, 1130 – 31 (9th Cir. 2000)

(requiring same standards of proof of relationship between charitable alcohol

dependency organizations as traditional organizations).

a. AMSFT-Nevada as Licensor

17. No written or even oral license agreement has been produced or

testified to between AFGA and AMSFT-Nevada or any other entity.

43 Though estoppel by license is AFA’s and AFSE’s affirmative defense to

prove, because it affects the issue of which party or parties may claim priority in the
Territory, it is discussed here. See, e.g., Secular Organ. For Sobriety, 213 F. 3d at
1131-32 (rejecting argument that plaintiff was licensee, and thus estopped from
asserting priority, because defendant did not present sufficient evidence of control).

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Accordingly, AFA and AFSE are relegated to the argument that an implied

license existed between AMSFT-Nevada and AFGA. To establish an implied

license, the burden is on the party claiming rights from the alleged license.

See First Interstate Bancorp v. Stenquist, 1990 U.S. Dist. LEXIS 19426, at

*10-11 (N.D. Cal. July 13, 1990) (requiring the purported licensor to provide

evidence of actual control). A trademark license may be implied from the

circumstances of use or the parties’ relationship to one another (“the related

companies doctrine”), and disputes are “governed by general rules of contract

interpretation.” See, e.g., McCarthy §§ 18:43-44, 51 (stating that licenses and

corresponding obligations to control users may be established through “the

dealings of the parties”).

18. The evidence demonstrates that the parties never dealt with one

another as licensor-licensee, that they were not sufficiently related

organizations to imply a relationship, and that control was never exercised to

the extent that a license must be implied. First, there was no intent by the

parties for there to be a license for the word mark ANGEL FLIGHT. AFW,

the registrant and logo mark holder through 2002, admitted in a 1999 email

that AFGA had independent rights with respect to the word ANGEL FLIGHT

and that AFW had no authority to control AFGA’s use of that mark. At the

very least, an implied license, being contractual in nature, would require a

demonstrable intent to license on the part of the alleged parties thereto.

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 19. Second, and contrary to Defendants’ contention, Defendants

cannot establish a license under the related companies doctrine. The

Lanham Act defines a “‘related company’ as “any person whose use of a mark

is controlled by the owner of the mark with respect to the nature and quality

of the goods or services on or in connection with which the mark is used.” 15

U.S.C. § 1127 (emphasis added). Thus, to establish that companies are

related requires evidence of a “substantial relationship” of control between

the parties. See Secular Organ. For Sobriety, 213 F.3d at 1130 – 31. If such

a relationship is established, a user who does not own the mark is a licensee

and is estopped from claiming priority in the mark.

20. Although AMSFT-Nevada, AFGA and AFW shared a common

name (along with other entities throughout the country), this alone does not

demonstrate that they were related entities. Even common ownership or

similar directors, officers or stockholders among organizations does not alone

establish a “substantial relationship”; rather the mark’s owner must

demonstrate a pattern of quality control over the organizations using the

mark. See McCarthy §§ 18:50-51, 55; see also In re Raven Marine, Inc., 217

U.S.P.Q. 68, 69-70 (T.T.A.B. 1983) (stating that even a common president and

principal stockholder did not establish “related companies” under the

Lanham Act where no subsidiary ties were evidenced).

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 21. In Secular Organ. For Sobriety, Inc. v. Ullrich, the court held that

where there were no articles or bylaws binding local alcohol and drug

avoidance groups to a national organization, the parties were not related

companies. Id., 213 F.3d at 1130-1131. Further, while the “parent”

organization distributed handbooks with “guidelines” to regional leaders,

there was no evidence that suggested these guidelines could or would be

enforced by the “parent.” Id. Financial connection was lacking as well. Id.

Mere voluntary exchange of information between companies is not “exercise

of control” in order to establish relatedness for the purpose of the Lanham

Act. See Philip Morris, Inc. v. Imperial Tobacco Co., 251 F. Supp. 362, 379

(E.D. Va. 1965).

22. In this case, there were no common owners, directors, officers or

shareholders between AFGA and AMSFT-Nevada. There is no record of

AMSFT-Nevada requiring AFGA to be bound by any policies established by

AMSFT-Nevada. The record is devoid of articles or bylaws binding AFGA to

AMSFT-Nevada, of AFGA agreeing that AMSFT-Nevada or a similar

organization may act on its behalf, or of financial connections between the

organizations.

23. Third, even if AFGA and AMSFT-Nevada had been bound

through corporate structure, AMSFT-Nevada did not control the use of the

mark by AFGA. “[T]he Lanham Act places an affirmative duty upon a

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licensor of a registered trademark to take reasonable measures to detect and

prevent misleading uses of his mark by his licensees.” Dawn Donut Co. v.

Hart’s Food Stores, Inc., 267 F.2d 358, 366 (2d Cir. 1959). Courts have

determined that “reasonable measures to detect and prevent misleading

uses” may include inspection or supervision of the licensee’s operations, or

establishment of standards by the licensor. See First Interstate Bancorp,

1990 U.S. Dist. LEXIS 19426, at *10-11 (“where the courts have excused the

absence of a contractual right of control, they have still required that the

licensor demonstrate actual control through some sort of inspection or

supervision”); Turner v. HMH Pub. Co., 380 F.2d 224, 229 (5th Cir. 1967). In

First Interstate Bancorp, for example, the court found inadequate control

where the trademark owner did not

supervise [the purported licensee] or tell him how to

operate his business; [did] not supervise the activities
of his agents or employees; [did] not mandate that he
use any sales procedures or materials; and [did] not
interfere in any manner with the operation of the
business.

Id. at *11; see also Turner, 380 F.2d at 229 (finding adequate control where

the trademark owner “fully controlled and dictated the nature and quality of

the goods and services” by setting standards, supervising personnel, regularly

visiting and reporting on conditions, and requiring that all users of the mark

adhere to the same manual and operating procedure).

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 24. Defendants have presented no evidence that AMSFT-Nevada

ever set standards for AFGA, supervised its personnel, visited AFGA or

required AFGA to adhere to any procedures. The record establishes, at the

most, that the organizations amicably exchanged some information during

the period of AMSFT-Nevada’s existence, something that volunteer pilot

organizations did regardless of whether or not an organization used the mark

ANGEL FLIGHT.

25. AFSE and AFA claim that only a minimal standard of control is

required for a valid license. However, this is incorrect. The Defendants

confuse the issue by using the amount of control necessary to not abandon a

license in which a licensor and licensee have agreed bound them. See, e.g.,

Land O’Lakes Creameries, Inc. v. Oconomowoc Canning Co., 330 F.2d 667,

669 (7th Cir. 1964) (finding that where written license agreement existed and

licensor displayed licensee’s corporate name on the goods its sold, there was

no “naked licensing”). The amount of control needed to imply a license or

licensing relationship where no express license exists, however, is much

greater. See Secular Organ. For Sobriety, 213 F.3d at 1130-31.

26. Fourth, the “related companies doctrine” is inapplicable to marks

that were neither registered nor applied for even if sufficient control by

AMSFT-Nevada were demonstrated. The Lanham Act provides that “[w]here

a registered mark or a mark sought to be registered is or may be used

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legitimately by related companies, such use shall inure to the benefit of the

registrant or applicant for registration, and such use shall not affect the

validity of such mark or of its registration, provided such mark is not used in

such manner as to deceive the public.” 15 U.S.C. § 1055 (emphasis added).

There is no evidence that AMSFT-Nevada ever attempted to register the

mark during its organization’s existence.

27. Finally, AMSFT-Nevada never used the mark in the Territory at

issue before issuance of the federal registration. Had AMSFT-Nevada

attempted to license an unregistered mark for use in a place where it had

never previously used the mark, AMSFT-Nevada would in any event be

deemed to have abandoned the mark.

While a trade-mark extends to every market where

the trader’s goods have become known and identified
by his use of the mark, the mark itself cannot travel
to markets where the trader does not offer, or has not
offered, the articles for sale. Such permission . . .
would be a naked license and void, resulting in an
abandonment . . . of any rights to the mark in that
area.

Tumblebus, 399 F.3d at 765-66 (maintaining protection of a common law

mark in an area where it had not lost significance as to source) (citations

omitted). Accordingly, contrary to Defendants’ apparent contention, AFGA

was not an express or implied licensee of AMSFT-Nevada.

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 b. AFA and its Predecessors as Licensor

28. AFA and AFSE also cannot establish an implied license between

AFA and AFGA sufficient to divest AFGA of its own common law rights to

the ANGEL FLIGHT mark in the Territory.

29. AFA first appears to suggest that AFA’s predecessors somehow

acquired rights to the mark ANGEL FLIGHT from AMSFT-Nevada. AFA

presented no evidence establishing that it ever received a written or implied

assignment of rights from AMSFT-Nevada. An “assignment” in effect

transfers all rights to use the mark to another organization. See McCarthy §

18:1. While the sale of an “entire ongoing business” to another presumes

transfer or assignment of trademark rights, the sale of a business less than

its entirety does not “automatically vest[] the right to use the common

trademarks in the transferee.” See B.F. Goodrich Co. v. A.T.I. Caribe, Inc.,

366 F. Supp. 464, 470 (D. Del. 1973); see also McCarthy § 18:37. Absent

written agreement or actual sale of a business, “clear and uncontradicted oral

testimony of a person in a position to have actual knowledge” is required to

establish trademark assignment in order “to prevent parties from using self-

serving testimony to gain ownership of trademarks and to give parties

incentives to identify expressly the ownership of the marks they employ.”

TMT N. Am. Inc. v. Magic Touch GmbH, 124 F.3d 876, 884, 43 U.S.P.Q.2d

1912, 1918 (7th Cir 1997).

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 30. AFA has not demonstrated that AMSFT-Nevada ever assigned

any trademark rights to AFW, nor has it established “clear and

uncontradicted” testimony that any ANGEL FLIGHT marks were assigned to

AFW. AFW never operated under the belief that it was a subsidiary of

AMSFT-Nevada; AFW was never operated or controlled by AMSFT-Nevada;

and AFW never was legally connected to AMSFT-Nevada through

incorporation or bylaws. In fact, AFW distanced itself from AMSFT-Nevada

and disassociated with its founder before the organization dissolved.

31. Even if Defendants could establish an assignment to them from

AMSFT-Nevada, such a transfer would have constituted an assignment-in-

gross and would therefore be invalid. In addition to the requirement that an

assignment transfer all rights to use a mark to the assignee, the Lanham Act

requires that the good will of a mark be transferred concurrently. 15 U.S.C. §

1060. The good will of the mark could not have been transferred along with

the rights to use the mark because AFW did not purport to represent the area

AMSFT-Nevada had covered until years after AMSFT-Nevada ceased to

exist. Thus, even if AFGA were AMSFT-Nevada’s licensee that license ended

when AMSFT-Nevada dissolved; AFGA’s common law rights were its own as

of the dissolution and could not have transferred or defaulted to AFA’s

predecessor.

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 32. Second, AFA also appears to claim that, independent of AMSFT-

Nevada, AFA (or its predecessor AFW) had a license directly with AFGA at

some point. But AFA has not established that AFW ever used the mark in

the Territory and has not established that it ever supervised or directed

AFGA’s use of the mark in the Territory. No written license agreement

existed between AFGA and any of the AFSE, AFA or AFW organizations in

any of their incarnations. Therefore, AFA and AFSE must attempt to

establish an implied license.

33. AFA and AFSE argue that AFGA believed that its use of ANGEL

FLIGHT was licensed because it asked AFSE “permission” to continue using

the name in 1999 and because Ms. Biron stated that AFGA believed it had

permission to use the logo. This evidence does not demonstrate licensing for

three reasons. First, the request to use the name in 1999 was at the direction

of the Georgia Secretary of State in conjunction with a corporate name

registration, not trademark rights. (See discussion Part II.B, ¶ 11, supra.)

Second, the “permission” attested to by Ms. Biron was that AFW said nothing

about AFGA’s use of the logo. (Biron, p. 233, ll. 3 – 19.) AFW never approved

or disapproved or provided any indication to AFGA that its use was

conditional. Third, even if permission was given to use the logo, AFGA had

established rights in the words separately from the logo and any permission

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extended only to the logo itself, as evidenced by AFW’s belief that it had no

rights over AFGA’s use of the ANGEL FLIGHT name. (PX 13.)

34. For many of the same reasons stated above with respect to

AMSFT-Nevada, no implied license can be established between AFGA and

AFA to defeat AFGA’s common-law rights. By statute, the “related

companies” doctrine cannot apply to a mark under any circumstances prior to

the date that a federal trademark application is filed. See 15 U.S.C. §§ 1055,

1127. Moreover, AFA cannot in any event demonstrate the “substantial

relationship” of control required to invoke the benefits of “related companies.”

See Secular Organ. For Sobriety, 213 F.3d at 1131 – 32. No common

ownership or representation has been established. AFA has not

demonstrated that AFW acted as a “parent” organization. Nor has AFA

established that AFA (or its predecessor AFW) ever sought or exercised

control over AFGA’s operations or use of the ANGEL FLIGHT mark in the

Territory. References in passing to another organization as a “sister

organization,” and sharing the same information shared with other volunteer

organizations who do not use the mark ANGEL FLIGHT do not demonstrate

a “substantial relationship” of control.

35. Until the time AFA was created, AFA’s predecessors operated

under the assumption that AFGA and similar organizations -- such as Angel

Flight Oklahoma and Angel Flight East -- had independent rights to use the

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words ANGEL FLIGHT even though they were unaffiliated with AFA or its

predecessors. AFA made no attempt whatsoever to police any of these

organizations -- or to suggest that they were “licensees” or subject to AFA’s

control -- until after this suit was filed. AFA and AFSE cannot establish

that the “related companies” doctrine applies under these circumstances.44

36. Since AFGA had been using the ANGEL FLIGHT word mark in

the Territory prior to AFW’s registration of the ANGEL FLIGHT logo, AFGA

would have had no reason to submit to a license for something it already had

rights to use. At most, any implied license with AFW would have been

limited to the particular artwork in the logo and not the words themselves.

Moreover, if AFW claimed its 1988 logo gave it national rights to the words

ANGEL FLIGHT, AFW was obligated to notify the United States Patent and

Trademark Office of others who were using the work mark elsewhere. AFW

did not. The fact that AFA filed and obtained separate registration of the

word mark over fourteen years after the registration of the logo and only

when events that triggered this litigation were occurring is further evidence

44 Likewise, AFW did not exert control over other organizations to the extent
that would establish licensing of the ANGEL FLIGHT mark. No written license
agreements were ever made between AFW and other entities before federal
registration of the ANGEL FLIGHT logo. Even after registration, many
organizations continued to use the word mark without any indication from AFW
that they were required to use and display the mark according to AFW’s standards.
AFW never supervised, monitored or set enforceable guidelines for these entities.

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that AFW and its successors in interest to the 1988 mark did not license the

word mark ANGEL FLIGHT itself.

37. Defendants have failed to meet their burden of demonstrating

that AFGA had a license from anyone to use the words ANGEL FLIGHT in

the Territory. AFGA’s common-law rights resulting from its use of “ANGEL

FLIGHT” in the Territory since 1983 belong to AFGA and establish AFGA as

the senior user in the Territory.

C. Likelihood of Confusion

38. AFGA has established senior and superior common law rights

based on prior use of the ANGEL FLIGHT mark in the Territory. To succeed

on its remaining claims, AFGA must establish a likelihood of confusion

resulting from concurrent use of the mark by AFGA and AFSE or AFA in the

Territory. Likelihood of confusion is determined by a seven factor test in the

Eleventh Circuit:

(1) the strength of the plaintiff’s mark; (2) the

similarity between the plaintiff’s mark and the
allegedly infringing mark; (3) the similarity between
the products and services offered by the plaintiff and
defendant; (4) the similarity of the sales methods, i.e.,
retail outlets or customers; (5) the similarity of
advertising methods; (6) the defendants intent, e.g.,
does the defendant hope to gain competitive
advantage by associating his product with the
plaintiff’s established mark; and (7) the most
persuasive factor on likely confusion is proof of actual
confusion.

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Conagra, Inc., 743 F.2d 1508 at 1514 (emphasis added) (holding that the

plaintiff’s evidence of actual confusion “was such strong evidence of likely

confusion” that the mark was entitled to Lanham Act protection).

“[E]vidence of actual confusion weighs most heavily in the finding.”

SunAmerica Corp. v. Sun Life Assur. Co. of Can., 890 F. Supp. 1559, 1576

(N.D. Ga. 1994).45

39. Regarding factors two through five of the likelihood of confusion

test, it should be noted that the ANGEL FLIGHT word mark used by

Defendants AFA and AFSE in the Territory is identical to that used by AFGA

in the Territory for over twenty years.46 AFSE, AFA and AFGA all use the

mark ANGEL FLIGHT in conjunction with identical services, i.e., public

benefit flying. Moreover, AFSE, AFA, and AFGA also target the same

consumers – pilots, patients, hospitals and donors – in conjunction with these

identical services, and have identical advertising methods – radio, television

and fundraisers.

40. Evidence of actual confusion can take many forms. For example,

in SunAmerica, evidence demonstrated that customers “regularly call[ed] the

wrong company,” that customers “mail[ed] checks and applications to the

45“[E]vidence of actual confusion is not required, although it is especially

important when it does exist.” Foxworthy, 879 F. Supp. at 1214.
46No party argues that the ANGEL FLIGHT mark is not sufficiently strong
to warrant trademark protection.

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wrong address,” that “[p]oorly identified . . . advertisements create[d] buyer

interest in the competing company’s product,” that customer and employee

misidentification of representation occurred, and that “newspapers confuse[d]

the names of the parties in reporting.” Id.47

41. AFSE and AFA argue that AFGA’s testimony of actual confusion

is inadmissible hearsay. It is not. Witness testimony about conversations

the witness had with a declarant, evidencing that the declarant is confused,

is admissible because the statements are not offered to prove the truth of the

matter asserted, and where offered to prove the truth of the matter asserted,

they are admissible to show the declarant’s state of mind. See Fed. R. Evid.

801(c); 803(3); see also Armco, Inc. v. Armco Burglar Alarm Co., Inc., 693

F.2d 1155, 1160 n.10 (5th Cir. 1982).

The testimony about phone calls and conversations

was not being offered to show that Armco and Armco
Burglar Alarm were the same business, but to show
that people thought they were. Armco Burglar Alarm
claims that the statements were the equivalent of “I
believe that defendant and plaintiff are one and the
same or are related,” and were offered to prove the
truth of the matter asserted. Even so, they would be
admissible under the state of mind exception.

Id. (emphasis in original).

47 See also Conagra, 743 F.2d at 1515 (discussing evidence of actual confusion
consisting of defendant’s testimony that it received inquiries about competing direct
sales of plaintiff that did not occur, and calls from consumers or people in the trade
expressing confusion about the relationship between the parties).

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 42. Both Ms. Biron and Ms. Darnell testified about conversations

they personally had with confused pilots, hospital employees, donors,

patients, and others evidencing that these members of the public were

confused. For example, Ms. Darnell testified that while she was working at

an air show in Vidalia, Georgia, an individual approached her and said that

he had donated to AFGA at a different air show in St. Simons. (Darnell Tr. p.

308, l. 4 – p. 309, l. 11.) Ms. Darnell testified that AFGA was not at the air

show in St. Simons, and thus, the donation could not have been made to

AFGA. (Id.) The fact that this individual said he had donated to AFGA at an

airshow in St. Simons is not offered to prove that he actually donated to

AFGA at an airshow in St. Simons. It is offered to show that he thought he

had donated to AFGA at that airshow – an impossibility.

43. Next, Defendants argue that statements by AFSE to the confused

declarants are inadmissible. This too is inaccurate. Statements made to Ms.

Biron or Ms. Darnell about what AFSE said to them are admissible not only

to show the confused declarant’s state of mind but also to explain what the

declarant is confused about and how that confusion arose. Armco, 693 F.2d

at 1160 n.10. Furthermore, since such statements were made by AFSE, the

statements are admissible as admissions by a party opponent. Fed. R. Evid.

801(d)(2)(A); 805. “Hearsay included within hearsay is not excluded under

the hearsay rule if each part of the combined statements conforms with an

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exception to the hearsay rule provided in these rules.” Fed. R. Evid. 805. For

example, Ms. Darnell testified that she spoke with the coordinator of a

University of Alabama at Birmingham Hospital pediatric camp named

Wanda, and Wanda told Ms. Darnell that she had been directed by the

Leesburg office to contact that office for future Angel Flight missions related

to the camp. (Darnell Tr. p. 295, l. 17 – p. 297, l. 22.) The statement made by

Wanda to Ms. Darnell is admissible to show Wanda’s confusion – that Wanda

believed the Leesburg and the Atlanta offices of “Angel Flight” were related.

The statement made by AFSE to Wanda telling her to call Leesburg is

admissible to show why Wanda was confused, and it is also admissible

pursuant to Federal Rules of Evidence 801(d)(2)(A) and 805 as an admission

by a party opponent.

44. Defendants claim that Armco is misleading. The Armco Court

did not allow testimony from a witness about a conversation with a customer

indicating confusion because the testifying witness never spoke directly with

the confused consumer. Armco, 693 F.2d at 1160 n.10. Rather, the witness

attempted to testify about a conversation that a different employee had with

the confused consumer. Id. In the present case, the AFGA employees

testified about conversations they personally had with confused consumers.

Defendants also rely on Ocean Bio-Chem, Inc. v. Turner Network Television,

Inc., 741 F. Supp. 1546, 1558-59 (S.D. Fla. 1990). In that case, the court

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refused to admit an affidavit, which attested to the out-of-court confusion of

others; the admissibility did not turn on the hearsay contained in the

affidavit, but the fact that no applicable hearsay exception existed to admit

the affidavit itself. Id.

45. While AFSE and AFA are correct that the Court prefers live

testimony, the type of evidence AFGA presented is “entitled to some weight

and is credible evidence of actual confusion.” Popular Bank of Fla. v. Banco

Popular de Puerto Rico, 9 F. Supp. 2d 1347, 1362 (S.D. Fla. 1998). “How

much weight the evidence is entitled to is determined by the number of

consumers misled and the form of the testimony.” Id. at 1361 (citing

McCarthy § 23.02) (emphases added). In this case, there have been over a

hundred instances of actual confusion attested to. AFGA has presented

overwhelming evidence of actual confusion, in the form of testimonial and

documentary evidence. In addition, the record demonstrates confusion from

not only the general public, but also the media, volunteer pilots and even the

State of Georgia.

46. While this evidence of actual confusion alone is sufficient to

establish a likelihood of confusion inherent in the concurrent use of the

ANGEL FLIGHT mark by unrelated entities in the Territory, AFA and AFSE

themselves admit likelihood of confusion in their respective counterclaims for

trademark infringement, as well as in various correspondence to one another.

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 47. Finally, AFSE has displayed intent to gain from AFGA’s

reputation and goodwill. AFSE opened an office in metropolitan Atlanta --

AFGA’s headquarters -- after this case had been filed and was awaiting trial.

AFSE told people that AFGA had ceased operating. AFSE knowingly sought

out third parties with pre-existing relationships with AFGA, such as the

Paradise Café, Fuzzy’s, AutoPilot, and UAB, to insert itself into AFGA’s

relationships and benefit from the confusion AFSE caused. The ongoing

litigation did not deter AFSE from increasing its marketing in the area, and

recruiting pilots and requesting donations in the area.48 Based on all of the

above and the Court’s findings of fact, it is apparent that the Defendants’ use

of the ANGEL FLIGHT mark in the Territory renders likelihood of confusion

inevitable.

48. Defendants argue that AFGA might have benefited from some of

AFA’s national publicity, and thus, AFA and AFSE should not be enjoined.49

48AFSE’s purported “care” in distinguishing its organization from AFGA

through the use of “Southeast” or “SE” modifiers is self-defeating and only further
supports the inevitability of confusion because confusion persists. For example, Ms.
Auten testified that a reporter attended an AFSE meeting and received numerous
AFSE documents in preparing a story about AFSE’s North Georgia wing. Despite
this “education,” the reporter still mistook the opening of the wing to be a transfer
of AFGA’s operations from PDK airport to Buford, Georgia. Ms. Auten also testified
that she does not disclaim association with AFGA in conversations when
introducing AFSE. (Auten Tr. p. 682, l. 25 – p. 684, l. 1.)
49See, e,g., Powers Tr. p. 635, l. 21 – p. 636, l. 4; Biron Tr. p. 778, l. 14 – 22.
Even if this were relevant, Defendants have themselves benefited from AFGA’s
actions. (Biron Tr. p. 770, l. 16 – p. 772, l. 9; p. 773, l. 1 – 15, p. 778, l. 14 – 22;
Powers Tr. p. 634, l. 21 – p. 635, l. 14, p. 643, l. 24 – p. 644, l. 1.)

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To argue that the Court should allow confusion to continue because some of it

might benefit the parties on occasion turns on its head trademark law and its

basic purpose -- to protect the public from confusion. McCarthy § 31:10.

Regardless of potential benefits to competing organizations, where confusion

is inevitable, relief is fashioned to prevent “putting a judicial stamp of

approval on conduct which will confuse consumers.” Id. Though there is no

evidence of any specific instance in which AFGA received a benefit from the

public’s confusion, even if there were such evidence, the degree of benefit a

trademark owner may receive from the infringer’s use is not a factor in

assessing likelihood of confusion and is not appropriately considered. See

Conagra, 743 F.2d at 1514. The public’s confusion is the foremost

consideration in determining the likelihood of confusion, not whether on

occasion such confusion might be advantageous to one or more of the parties.

D. AFA’s and AFSE’s Other Affirmative Defenses

1. AFGA’s Alleged Abandonment Through Mission

Coordination or Lack of Policing Its Mark

49. AFA and AFSE argue that AFGA’s outsourcing of mission

coordination to AFSE and AFMA from 1997 to 1999 resulted in an

abandonment of AFGA’s prior common-law rights to the ANGEL FLIGHT

mark. Alternatively, AFSE and AFA argue that because AFGA did not police

the use of ANGEL FLIGHT by AFSE or other Angel Flight VPOs in its

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Territory, AFGA has lost its rights in the mark. AFA and AFSE have not

met their burden of establishing either abandonment defense.50

50. AFA and AFSE cannot demonstrate AFGA’s abandonment

through non-use of the ANGEL FLIGHT mark. To prove abandonment

through non-use, a defendant must demonstrate (1) that the plaintiff actually

abandoned the mark, and (2) the plaintiff intended to abandon the mark. See

15 U.S.C. § 1127; Conagra, 743 F.2d at 1516. A demonstration of

abandonment “require[s] strict proof.” Conagra, 743 F.2d at 1516. “In most

cases, the abandonment issue involves a situation in which, at the time of the

petition for cancellation, the use of the mark by its owner is nonexistent or

virtually nonexistent.” AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1550 (11th

Cir. 1986) (holding that trademark owner abandoned rights due to over forty

years of nonuse even when it resumed use before litigation) (emphasis

added).

50 Defendants have also argued that they and AFMA somehow acquired
rights to the mark by virtue of performing mission coordination services. They did
not. The Mission Coordination Agreement is silent as to trademark rights. AFSE
and AFMA coordinated missions on behalf of AFGA during this period and
performed no other functions for AFGA; therefore, this situation is analogous to a
manufacturer-distributor relationship where, absent an express agreement to the
contrary, trademark rights remain with the “manufacturer,” which in this instance
is AFGA. See Jerome Gilson, Trademark Protection and Practice, § 3.02[13][a-b]
(Matthew Bender & Co. 2006); see also, TMT N. Am., 43 U.S.P.Q. 2d at 1916 – 17
(“Such a distributor does not acquire ownership of a foreign manufacturer's mark
anymore [sic] than a wholesaler can acquire ownership of an American
manufacturer's mark, merely through the sale and distribution of goods bearing the
manufacturer's trademark” (citing McCarthy § 29:8) (internal quotations omitted)).

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 51. AFA and AFSE have not demonstrated either of the two required

elements. Importantly, Defendants have not established that AFGA stopped

using the ANGEL FLIGHT mark in commerce during the mission

coordination period. AFGA could not have intended to abandon the mark if it

continuously used the mark the entire time at issue.

52. AFA and AFSE argue that abandonment occurred because AFGA

used the mark only in coordination with AFSE and AFMA for over two years

in the Territory, and allegedly “merged” organizations with AFSE. The facts

show, however, that AFGA arranged for AFSE and AFMA to coordinate

AFGA’s missions for pay on AFGA’s behalf. Merger was discussed between

AFGA and AFSE, but no actual merger took place. During the period of the

Mission Coordination Agreement, AFGA continued to maintain its own

distinct organization, retain offices in Georgia, North Carolina and South

Carolina, carry out its fundamental purpose, recruit pilots and solicit its own

donations. Indeed, AFGA had to continue using the ANGEL FLIGHT mark

to raise funds to pay for the mission coordination services. AFGA’s own pilots

flew the missions under the belief that they were doing so on behalf of AFGA.

53. During the 1997-1999 time period, AFSE coordinated missions

for AFGA, and AFGA paid AFSE for these services. Similarly, AFMA

coordinated AFGA missions in Tennessee and North Carolina, for which

AFGA compensated AFMA with a lump sum payment. This evidence falls

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short of the “strict proof” that is necessary to prove abandonment by AFGA

anywhere in the Territory, but rather reflects continuous use by AFGA.

AFGA’s own newsletters for that time period show that AFGA had missions

to and from these states, including North Carolina and Tennessee, that

neither departed nor arrived in one of AFGA’s other states and were,

accordingly, attributable to AFGA only because of AFGA’s presence there.

Moreover, AFSE billed AFGA for flights that merely stopped in the Territory,

even if the patient was neither a resident of nor being treated in a state in

the Territory.

54. Even if the duration of mission coordination could somehow be

construed as a period in which AFGA did not actually use the mark, the time

period is insufficient to demonstrate a prima facie case of abandonment

under the Lanham Act. See 15 U.S.C. § 1127 (“[n]onuse for 3 consecutive

years shall be prima facie evidence of abandonment”). The mission

coordination arrangements lasted less than three years.51 Accordingly,

Defendants’ abandonment defense is without merit.

51 Similarly, Defendants have failed to establish that AFGA assigned any of

its rights to use the ANGEL FLIGHT mark to AFSE or AFMA through the mission
coordination agreements or otherwise. As discussed above, assignment requires
written transfer or “clear and uncontradicted oral testimony of a person in a
position to have actual knowledge.” See TMT N. Am., 43 U.S.P.Q.2d at 1918. There
was no transfer of rights in the mark or in AFGA’s business that can be read into
the agreements, and there is no uncontradicted testimony that would establish
assignment of AFGA’s rights to either AFSE or AFMA at any time.

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 55. AFA and AFSE further argue that AFGA’s tolerance of AFSE’s

presence in its Territory from 1986 to at least 1999 through hand-offs effected

an abandonment of its common law rights to the mark ANGEL FLIGHT.

Such is not the case. First, the evidence shows that such flights did not cause

a likelihood of confusion and that confusion began only when AFSE expanded

its operations into AFGA’s Territory in 2001. Thus, prior to 2001, there was

no reason for AFGA to police what AFSE was doing, as there was no

infringement for AFGA to police. Second, mere lack of policing is insufficient

to demonstrate abandonment without a demonstration that a term has

become generic and not entitled to be protected by any user. “To establish

the defense of abandonment, it is necessary to show . . . a course of conduct on

the part of the owner causing the mark to become generic or lose its

significance as a mark.” Hermes Int’l v. Lederer de Paris Fifth Avenue, Inc.,

219 F.3d 104, 110 (2d Cir. 2000) (emphasis added); see also 15 U.S.C. § 1127;

Gilson, § 3.05[9][a] (“If such infringement becomes sufficiently widespread . . .

that the public no longer associates the mark with a single source of goods or

services, the mark will be considered abandoned”).

56. The instances of confusion demonstrated in this case come from

people confusing Defendants with AFGA or attributing some relationship to

the parties. Accordingly, ANGEL FLIGHT identifies a source and not a type

of service and cannot be generic. Third, AFA and AFSE themselves do not

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contend that ANGEL FLIGHT is a generic term incapable of protection, as

such a ruling would cause everyone who uses the name ANGEL FLIGHT to

lose trademark protection, including AFA and AFSE. The ANGEL FLIGHT

name in the Territory has not lost its significance as a mark denoting AFGA’s

services.

57. AFSE and AFA attempt to equate AFGA’s failure to stop AFSE

from flying in the Territory under the name ANGEL FLIGHT (policing) with

the standards required to prevent abandonment in a licensing arrangement

(quality control); however, the two are not synonymous. A trademark owner

is not required to police or control infringers to avoid abandoning its mark.

See The Board of Regents of the University System of Georgia v. Buzas

Baseball, Inc., 176 F. Supp. 2d 1338, 1349 (N.D. Ga. 2001) (Pannell, J.)

(distinguishing between licensees, of which Georgia Tech had properly

controlled, and schools that were “mere third party users,” which “Georgia

Tech either was unaware of or tolerated for its own reasons”). “[F]ailure to

institute legal action against an infringer is insufficient to establish

abandonment of a trademark.” Id. (citing Babbit Electronics, Inc. v.

Dynascan Corp., 38 F.3d 1161, 1180 (11th Cir. 1994)). AFGA does not allege

that it licensed the name ANGEL FLIGHT to AFSE or anyone else.

Moreover, AFGA tolerated AFSE’s presence in its Territory just as all VPO’s

did and just as AFA members still do, because to AFGA’s knowledge, such

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was limited to linking flights. AFA agrees that such flying by its members

into other members’ territories does not change its member’s “exclusive”

rights to the name ANGEL FLIGHT within their territories. When AFSE’s

practices changed, AFGA timely responded.52

58. AFA and AFSE argue that, because AFGA tolerated AFSE’s

presence in its Territory through linking missions and, because of the unique

circumstances of this case, the parties should be permitted to any and all

uses of the mark ANGEL FLIGHT in the Territory. For support, AFA and

AFSE cite a single case -- Illinois High School Ass’n v. GTE Vantage, Inc. 99

F.3d 244, 247 (7th Cir. 1996). In Illinois High School Ass’n, the Court

prevented an injunction and allowed dual use where the media had taken the

phrase “March Madness” from IHSA, attached the term to the NCAA college

basketball tournament, and the public embraced it. Id. The Court

recognized the case as one of “first impression,” where free speech issues

trumped trademark rights because the media, rather than the NCAA, coined

the term for the tournament. Id. The Court also made no findings on

confusion, and acknowledged the approaching “genericness” of the term. Id.

Moreover, the Seventh Circuit distinguished between the services of IHSA,

52 To accept AFSE’s argument that since AFGA did not police AFSE in its
Territory and therefore cannot enforce its trademark rights against AFSE would
necessarily mean that AFSE could not assert its own rights against AFGA in
Florida, and other AFA members could not assert their rights in Louisiana,
Kentucky, Illinois, Virginia and other states, since there is ample evidence that
AFGA flew linking flights into those states.

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high school basketball, and the NCAA, college basketball, and limited its

relief specifically to preventing IHSA’s ability to enjoin the NCAA’s specific

use of the term. Id. at 248. The case is inapposite. The services of AFGA

and AFSE are identical, the ANGEL FLIGHT mark is not “on its way to

becoming generic,” confusion is inevitable, and no media free speech issue is

present. See id. at 247.

2. Estoppel by Laches, Acquiescence and Unclean Hands

59. AFA and AFSE have also raised the defenses of laches,

acquiescence and unclean hands against AFGA. They argue that such

defenses estop AFGA from the injunctive relief it requests. Defendants have

not met their burden on these defenses.

a. Laches, Acquiescence and Inevitable Confusion

60. Laches and acquiescence are inapplicable to the facts of this case

because the public is confused, and AFA and AFSE admit as much. Laches

or acquiescence do not preclude the Court’s issuance of an injunction to

prevent further acts of trademark confusion by AFA and AFSE. Even in

cases where these defenses bar a suit for damages due to inequity to the

infringer, the Court may still grant injunctive relief to avoid “putting a

judicial stamp of approval on conduct which will confuse consumers.”

McCarthy § 31:10; see also Kason Indus. v. Component Hardware Group, 120

F.3d 1199, 1207 (11th Cir. 1997) (“[I]f the likelihood of confusion is inevitable,

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or so strong as to outweigh the effect of the plaintiff’s delay in bringing a

suit,” a court may grant injunctive relief even though damages would be

barred); Rolls-Royce Motors, Ltd., 428 F. Supp. 689, 696 (N.D. Ga. 1977)

(Henderson, J.) (“[L]aches goes only to the propriety of damages, [and] does

not bar injunctive relief against future infringement . . . .”); Little League

Baseball, Inc. v. Daytona Beach Little League, Inc., 193 U.S.P.Q. 163, 164

(M.D. Fla. 1977) (defense of laches only precluding damages).

61. In order to protect the public, even an action that would have

been otherwise barred by delay is revived by inevitable confusion. Coach

House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1564 (11th Cir.

1991); Ultra-White Co., Inc. v. Johnson Chem. Indus., Inc., 465 F.2d 891, 893

(C.C.P.A. 1972) (laches may not be considered where the likelihood of

confusion is not reasonably in doubt); SunAmerica, 890 F. Supp. at 1579-80

(“[E]ven if a junior user establishes the equitable defense of acquiescence, the

prior user will not be estopped to assert trademark rights if the identity of

the marks and goods of the parties are such that confusion or mistake in

trade is inevitable” (internal quotations omitted)). In such circumstances of

inevitable confusion, the public interest is the “dominant consideration.”

Ultra-White Co., 465 F.2d at 893-94; Coach House, 934 F.2d at 1564 (finding

that the public interest is the “paramount” consideration).

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 62. Both AFSE and AFA concede that there is a likelihood of

confusion caused by the parties’ activities in the Territory. Indeed, since

AFSE opened an office in the Augusta area in 2001, there have been over a

hundred instances of actual confusion between AFGA and AFA and/or AFSE,

which demonstrates inevitable confusion. The record is replete with

instances in which AFSE’s recent conduct within AFGA’s Territory relating

to the use of the term ANGEL FLIGHT has caused confusion and

miscommunication among patients, healthcare facilities, airport personnel

and other members of the public. Because the public has already

demonstrated its confusion, and AFGA seeks only injunctive relief, AFA and

AFSE cannot defend themselves against AFGA’s claims on the grounds of

laches or acquiescence.

b. Elements of Laches

63. Even if laches were applicable, AFA and AFSE have not

established required elements of the defense. Laches requires: “(1) a delay in

asserting a right or claim; (2) that the delay was not excusable; and (3) that

there was undue prejudice to the party against whom the claim is asserted.”

Kason, 120 F.3d at 1203.

64. AFA and AFSE have not demonstrated that AFGA delayed in

asserting its claims. The determination of whether the plaintiff delayed

bringing suit involves measuring the time from which the plaintiff had a

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“provable claim of infringement.” Kason, 120 F.3d at 1206. “[A] plaintiff

should not be obligated to sue until its right to protection has ripened such

that plaintiff knew or should have known, not simply that defendant was

using the potentially offending mark, but that plaintiff had a provable

infringement claim against defendant.” ProFitness Physical Therapy Ctr. v.

Pro-Fit Orthopedic & Sports Physical Therapy, P.C., 314 F.3d 62, 70 (2d Cir.

2002) (emphasis added); Armco, 693 F.2d at 1162 (noting trademark owner’s

delay between the time that it first should have known of the infringing

activity and the time it “notified [the defendant] of its objections to the

alleged infringement”).

65. Though the Lanham Act does not contain a statute of limitations,

Eleventh Circuit courts have used a four-year Georgia statute of limitations

as a touchstone to decide whether the time between when the cause of action

accrued and the suit was brought was reasonable. See, e.g., Kason, 120 F.3d

at 1203. The four-year period is not, however, an absolute bar, like a statute

of limitations.

66. AFA and AFSE have not demonstrated that a cause of action

accrued to AFGA prior to the statute of limitations period. Even the

termination of the Mission Coordination Agreement occurred within the four-

year window between May 8, 1999 and May 8, 2003, the date AFGA formally

objected to AFSE’s presence in the territory. Moreover, the conduct by AFSE

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that triggered actual and likely confusion -- including AFSE’s opening of

offices within the Territory, fundraising within the Territory, and

promotional and outreach efforts within the Territory -- did not begin until

2001 or later.

67. AFA and AFSE argue that AFGA has existed for almost twenty

years with full knowledge of AFSE’s own use. But AFSE conceded that until

at least 1997 its activities were limited to flying patients to or from Florida,

and that it had no stand-alone operations outside of Florida. And there has

been no evidence of confusion resulting from hand-off missions. From 1997

through 1999, AFSE began to coordinate missions within AFGA’s Territory,

but was doing so on behalf of AFGA and being paid by AFGA for those

services. AFGA had no reason to claim infringement against AFSE for

coordinating AFGA’s own missions pursuant to contract.

68. The record shows that AFGA did not learn of Defendant AFSE’s

infringing activity within AFGA’s Territory until 2001, when AFGA

discovered that AFSE was planning to open an office in Augusta. Indeed, it

was AFA’s creation around 2000 or 2001 that caused AFSE -- AFA’s newly-

appointed member for the Southeast -- to encroach into the Territory.

Because AFA and AFSE have not established any actionable likelihood of

confusion in AFGA’s Territory for which AFGA could have brought suit prior

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to 2001, they cannot establish delay by AFGA for not asserting the instant

claims earlier.

69. AFA and AFSE have also failed to establish the second element

of laches -- that any delay was inexcusable. A delay in asserting trademark

infringement may be justified if a defendant user redirected its marketing

strategies to come into direct competition with a plaintiff. See Kason, 120

F.3d at 1205-06. Under the doctrine of progressive encroachment, “where a

defendant begins use of a trademark . . . in the market, and then directs its

marketing or manufacturing efforts such that it is placed more squarely in

competition with the plaintiff, the plaintiff’s delay is excused.” Id.; Conagra,

743 F.2d at 1517 (finding that a change in market position may excuse a

delay); Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088, 1103 (9th

Cir. 2004) (finding that “[a] defendant can encroach on a plaintiff’s mark by

expanding its business into different regions or into different markets

(emphasis added)); ProFitness Physical Therapy, 314 F.3d at 70 (progressive

encroachment questions “whether [the] defendant, after beginning its use of

the mark, redirected its business so that it more squarely competed with [the]

plaintiff and thereby increased the likelihood of public confusion of the

marks”).

70. AFA and AFSE assert that AFSE has not changed either the

nature or purpose of its operations since it was established in the mid-1980’s.

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That assertion is contradicted by the record. AFSE admits, for example, that

its operations were limited to Florida until at least 1997. From 1997 through

1999, AFSE was paid by AFGA to coordinate missions for AFGA within the

Territory, which were flown by AFGA pilots. AFSE did not establish any

offices in AFGA’s Territory until 2001. Also, in 2001, AFGA was precluded

from an important opportunity at the 2001 Augusta, Georgia air show

because AFSE told organizers that it would be representing “Angel Flight.”

With these changes and others, AFSE opened offices and began marketing

and encroaching into the Territory.

71. In sum, conduct by AFSE and AFA central to a finding of

likelihood of confusion did not begin until at least 2001. Accordingly, AFSE

and AFA have not established that AFGA’s filing of this action in 2003

reflected inexcusable delay.

72. Finally, there is insufficient evidence on the record to establish

that AFA and AFSE have been prejudiced by any purported delay in AFGA

asserting its rights. Even where a defendant may suffer some prejudice from

a delay in bringing a trademark action, an injunction may still issue because

“the public interest in preventing confusion around the marketplace is

paramount to any inequity caused the registrant.” Coach House Rest., 934

F.2d at 1564 (emphasis added); SunAmerica, 77 F.3d at 1337 (finding that

“the law demands” that the public not suffer from confusion even in

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circumstances of laches); Conagra, 743 F.2d at 1517, 1519. Any alleged

prejudice to AFSE or AFA is outweighed by the likelihood of confusion,

evidenced by multiple instances of actual confusion, and the defendant’s own

agreement that there is a likelihood of confusion.

c. Elements of Acquiescence

73. For many of the reasons already discussed above, AFSE and AFA

have also failed to establish that AFGA “acquiesced” in AFSE’s use of the

mark in the Territory. “‘Acquiescence’ is an equitable defense denoting active

consent by the trademark owner to another’s use of the mark.” SunAmerica,

890 F. Supp. at 1577. If proven, the owner of the mark cannot assert rights

against the defendant. Id. at 1578. Acquiescence requires:

(1) that the owner actively represented it would not

assert a right or claim; (2) that the delay between the
representation and the assertion of the right or claim
was not excusable; and (3) that the delay caused the
alleged infringer undue prejudice.

Id. If, as stated previously, AFA and AFSE cannot establish passive consent

through laches, they are unable to establish the active consent required of an

acquiescence defense.53

53 At the very most, all the parties have demonstrated acquiescence with
respect to the limited presence of the other in their respective territories for the
purpose of linking flights. However, AFGA has not challenged this limited use and
does not request injunctive relief barring this use by AFSE and other AFA
members.

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 74. AFA and AFSE have not shown that AFGA actively consented to

any use in the Territory by AFSE or AFA; the evidence weighs heavily to the

contrary. Therefore, the defense of acquiescence must fail.

d. Unclean Hands

75. AFA and AFSE also cannot establish unclean hands to estop

AFGA from validly asserting its senior rights to the use of the ANGEL

FLIGHT mark.

The unclean-hands maxim which bars a complainant

in equity from obtaining relief has reference to an
inequity which infects the cause of action so that to
entertain it would be violative of conscience. It must
relate directly to the transaction concerning which
complaint is made.

Whiten v. Murray, 599 S.E.2d 346, 352 (Ga. 2004). AFGA has demonstrated

rights in the Territory superior to the defendants, continuous use of the

ANGEL FLIGHT mark for over twenty years in the Territory, lack of

abandonment, assignment or acquiescence in the use of the mark, and a valid

state registration. Accordingly, there is no basis upon which to equitably bar

AFGA from obtaining relief.

E. AFA’s Federal Registration Must Be Cancelled Because It Was

Fraudulently Procured From the United States Patent and
Trademark Office

76. Defendant AFA’s predecessor-in-interest, AFW, committed fraud

on the USPTO when it applied to register the ANGEL FLIGHT logo in 1987.

Fraud before the USPTO results in cancellation of the registration. 15 U.S.C.

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§ 1064. Even though AFA’s mark has attained “incontestable” status under

15 U.S.C. § 1065, a petition to cancel a registration may occur “at any time”

where the mark was obtained fraudulently, regardless of the status of the

mark. See 15 U.S.C. § 1064; Marshak, 240 F.3d at 192-94.

77. When an applicant files a trademark application before the

Patent and Trademark Office, he or she is required to affirm under oath that

“to the best of the verifier’s knowledge and belief, no other person has the

right to use such mark in commerce either in the identical form thereof or in

such near resemblance thereto as to be likely ... to cause confusion.” 15

U.S.C. § 1051(a)(3)(D). “[A] challenging party must adduce evidence that the

registrant actually knew or believed that someone else had a right to the

mark” to successfully demonstrate fraudulent procurement of a trademark.

See Marshak, 240 F.3d at 196.54

78. The record establishes that: (1) AFW had actual knowledge that

other organizations had priority in the ANGEL FLIGHT word mark in their

respective areas of operation at the time of AFW’s application; (2) AFW had

actual knowledge that other organizations were using the logo created by

AMSFT-Nevada in their respective areas of operation at the time of AFW’s

application and (3) AFW did not advise the USPTO of the existing other users
54 Because it has been determined that AFGA is not a licensee of AFA or any
of its predecessors-in-interest, AFGA is not estopped from challenging the validity
of the federal registration of the ANGEL FLIGHT mark under 15 U.S.C. § 1064.
See McCarthy § 18.63.

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of the word mark and logo. AFW falsified its date of first use, relying on a

date used in connection with its use of AMSFT-Nevada’s logo. AFW could not

have had a “sincere belief that no one else had a right to the mark.” See

Marshak, 240 F.3d at 197.

79. AFA now claims in this action that the logo registration in 1988

gave AFW exclusive national rights to use the term ANGEL FLIGHT. If

AFW claimed rights in the term or claims that AFGA’s use of the name

ANGEL FLIGHT is confusingly similar to the logo, it should have disclosed

the use of the ANGEL FLIGHT word mark by others, as well as the use of the

AMSFT-Nevada logo by others, to the USPTO. AFW should have also

disclosed that it was attributing AMSFT-Nevada’s logo use dates as its own.

AFW did not. Because AFW committed fraud on the USPTO, AFA’s U.S.

Registration No. 1,491,541 should be and is hereby cancelled.

80. AFA and AFSE argue that since Mr. Torres, the representative of

AFW who signed the application’s oath, did not testify, AFGA cannot argue

as to his personal knowledge of other’s use of the term ANGEL FLIGHT, that

Mr. Torres was not an attorney, and that the federal registration was for the

logo. First, Mr. Torres, as AFW’s president, signed on behalf of AFW, and it

is evident from the record that AFW as an organization was aware of AFGA

and other organizations’ use of the term ANGEL FLIGHT at the time the

registration was filed. See, e.g., Bart Schwartz Int’l Textiles, Ltd. v. Fed.

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Trade Comm’n, 289 F.2d 665, 671 (C.C.P.A. 1961) (imputing widespread

industry knowledge of the use of the trademarked term to registrant).

Moreover, Mr. Davis was personally aware of the widespread use of the term,

personally participated in the development of the altered logo, and personally

participated in arranging for the registration. (Davis Tr. p. 329, l. 14 – 23, p.

330, l. 2 – 13, p. 334, l. 22 – p. 335, l. 11, p. 367, l. 3 – 12, p. 374, l. 4 – 23;

Davis Dep. p. 49, l. 2 – p. 50, l. 19.) Second, an attorney, Mr. Robbins,

assisted in the application. The record also shows that AFW was aware of

the problems that would arise if it attempted to change its name or establish

trademark rights had AMSFT-Nevada still been an active corporation. AFW

changed its legal name to what had been AMSFT-Nevada’s name and then

registered the trademark, citing a “use date” of 1983. These actions do not

demonstrate ignorance of trademark law or a good faith belief that AFW had

superior claim to the use of the mark nationally, but that AFW

opportunistically registered as soon as it became aware the Nevada

organization had dissolved.

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 F. AFGA’s Remaining Claims

81. AFGA has demonstrated priority of use in the Territory and

likelihood of confusion; therefore, AFA and AFSE are also liable under

AFGA’s remaining state claims.55

82. AFA and AFSE are liable for false advertising. See 15 U.S.C. §

1125(a); Johnson & Johnson Vision Care, Inc. v. 1-800 Contacts, Inc., 299

F.3d 1242, 1247 (11th Cir. 2002) (stating that to establish false advertising

one must show (1) a false or misleading description of fact or representation

of fact, (2) the advertisements deceived or had the capacity to deceive, (3)

there was a material affect on purchasing decisions, (4) the service affects

interstate commerce and (5) plaintiff has been damaged as a result). False

advertising includes any false or deceiving “promotion” of goods or services.

15 U.S.C. § 1125. AFSE’s use of the term ANGEL FLIGHT in the

55 All of the remaining claims depend upon a demonstration of the likelihood
of confusion and involve the same dispositive issues as the federal Lanham Act
count. See Kason, 120 F.3d at 1203-04 (11th Cir. 1997) (stating that the Uniform
Deceptive Trade Practices Act “provides a cause of action when a person ‘in the
course of business, vocation or occupation . . . causes likelihood of confusion or of
misunderstanding as to the source, sponsorship, approval or certification of goods or
services’”); Rolls-Royce Motors, Ltd., 428 F. Supp. at 693-94 (analyzing infringement
of a Georgia trademark under the same analysis as a federally registered mark);
Kay Jewelry Co. v. Kapiloff, 49 S.E.2d 19, 21 (Ga. 1948) (explaining that the
emphasis in unfair competition claim is on the injury suffered by the complaining
party and the public from the confusion caused by the acts of the infringer); Robarb
Inc. v. Pool Builders Supply of the Carolinas, Inc., 696 F. Supp. 621 (N.D. Ga. 1988)
(finding that the Georgia Uniform Deceptive Trade Practices Act and the common
law relating to unfair competition are analyzed under a likelihood of confusion test,
equivalent to that used under the Lanham Act); Jellibeans, Inc., 716 F.2d at 846
(affirming violation of deceptive trade practices and unfair competition under state
law without further analysis after finding defendant violated 15 U.S.C. § 1125).

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establishment of offices, outreach, fundraising and pilot recruitment in the

Territory constitutes misleading promotion and advertising. The ample

evidence of actual confusion presented, as well as the intent to confuse the

public demonstrated on the part of AFSE, shows that this promotion in fact

deceived the public. Moreover, the record demonstrates that this promotion

has had an effect on “purchasing decisions,” in that donations have been

misdirected, AFGA pilots have joined AFSE after mistakenly attending AFSE

events, and at least one person who scheduled with the wrong organization

and was cancelled chose to forego any VPO service. AFGA has presented

sufficient evidence to prevail on its false advertising claim.

G. AFA’s Counterclaims

83. AFA has asserted various counterclaims against AFGA: (1)

trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1114; (2)

federal unfair competition in violation of the Lanham Act, 15 U.S.C. § 1125;

(3) false advertising in violation of the Lanham Act, 15 U.S.C. §§ 1114, 1125;

(4) violation of the Uniform Deceptive Trade Practices Act, O.C.G.A. § 10-1-

372; (5) common law unfair competition; and (6) fraudulent registration of a

state trademark in violation of O.C.G.A. § 10-1-449.

84. Because it has been determined that AFGA’s rights to use the

ANGEL FLIGHT mark are superior to that of AFA and AFSE in the

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Territory, AFGA cannot be infringing AFA’s federal trademark rights or

violating state law. Accordingly, claims one through five must fail.

85. Furthermore, AFA’s claims also fail because the evidence shows

that Defendant AFA and its predecessors never exercised control or

supervision over the operation or trademark usage of organizations that AFA

previously alleged were “affiliates” or “licensees” -- not only AFGA but also

Angel Flight East and Angel Flight Oklahoma. (See Complaint of Intervenor

Angel Flight America, Inc. ¶ 15.) Defendants have, in any event, abandoned

the trademark rights that they purport to assert here.

86. Finally, AFA and AFSE claim that AFGA obtained its Georgia

registration through fraudulent means, and that the Georgia registration

should be cancelled. See O.C.G.A. §§ 10-1-444, 448-449. Specifically, AFA

and AFSE have claimed that AFGA obtained the registration with knowledge

that it did not own the mark. As AFGA has superior rights to Defendants in

the Territory, including Georgia, and is entitled to exclusive use of the mark

in commerce in the Territory, it did not commit fraud in obtaining the state

registration. The determination that AFGA is the rightful owner of a validly

registered mark in the state of Georgia precludes a fraudulent procurement

claim. See Rolls-Royce Motors, 428 F.Supp. at 700-701 (“It already having

been determined that the trademarks are valid, the . . . counterclaim [for

cancellation] must fall”).

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 87. Even if the evidence were sufficient to demonstrate that AFGA

did not believe that it owned the mark at the time of registration, AFGA

presented all information available to the Georgia Secretary of State, and

AFGA withheld no information. Liability for fraudulent procurement

requires a false statement, of which there was none. See O.C.G.A. § 10-1-444.

Accordingly, this claim must fail.

H. Defendants’ Joinder Arguments

88. Defendants asserted for the first time in the Pretrial Order that

AFMA and AFSC are necessary parties to this action; that their rights may

be affected by the outcome of the case; and that they must be joined if a

declaratory judgment pursuant to 28 U.S.C § 2201(a) is to be rendered with

respect to parts of Mississippi, North Carolina and Tennessee. Specifically,

Defendants argue that because AFGA asserts that it has common law rights

in the use of the word mark ANGEL FLIGHT in Mississippi, North Carolina

and Tennessee, and AFMA and AFSC are licensees of AFA in those states, a

declaratory judgment that AFGA has priority and exclusive rights to ANGEL

FLIGHT in those states would adversely effect AFMA’s and AFSC’s ability to

use the ANGEL FLIGHT mark in those states.

89. While AFA and AFSE are correct that AFMA’s and AFSC’s rights

may be adversely effected by a declaratory judgment that AFGA holds the

ANGEL FLIGHT trademark in Mississippi, North Carolina and Tennessee,

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those entities need not be joined to render such a decision. By admission of

AFA, AFMA and AFSC are licensees of AFA in the use of the trademarks at

issue; indeed, AFMA and AFSC did not exist until the 1990s, well after AFA’s

predecessor’s federal registration. The extent of AFMA’s and AFSC’s rights

in the marks are thus defined by AFA and enveloped by AFA’s own rights in

the marks. As a result, AFMA’s and AFSC’s absence from this litigation

“does not impair or impede their ability to protect their interest since as a

practical matter their interests are being actively and adequately protected

by the defendant.” Am. Plan Corp. v. State Loan & Fin. Corp., 278 F.Supp.

846, 848 – 49 (D. Del. 1968) (holding that Fed. R. Civ. P. 19 does not require

joinder of subsidiaries using a mark in the territory at issue).56

90. Even if it could be established that AFMA and AFSC have rights

independent of AFA that could be affected by this litigation, equity requires

rejection of such joinder arguments at such a late date. Defendant AFA

intervened in this action on May 7, 2004. The parties filed a joint

preliminary planning report on August 4, 2004, and no issue of joinder was

raised as a defense or otherwise, and no additional allegations have been

made by any party.

56 Additionally, any common law priority in the marks purportedly

established by AFMA and AFSC before their license with AFA or its predecessor
were subsumed by the license agreement. Thus, the scope of AFA’s rights represent
the totality of any rights of its admitted licensees.

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 91. Representatives of AFMA and AFSC attended the majority of

depositions in this case either on their own behalf, or as representatives of

AFA. A representative of AFSC verified the answers to AFA’s interrogatory

responses. AFMA produced documents in this case, and board members of

both AFMA and AFSC testified for the Defendants at trial. A representative

of AFSC served as head of AFA’s intellectual property board while litigation

was pending. Although AFMA and AFSC were aware of the substantive

issues raised and would be potentially affected by this litigation, they did not

previously seek to intervene but, instead, have relied on the named

Defendants to protect their interests. At this juncture, the parties are now

estopped from asserting the necessity of further joinder.

92. In any event, it has already been established in this action that

AFSC did not exist until 1991, and that AFGA’s use of the ANGEL FLIGHT

mark in Mississippi and Tennessee predates 1991.57 It is further established

that AFMA did not exist or use the term ANGEL FLIGHT before the mid-

1990s, and that AFGA’s use of ANGEL FLIGHT in Tennessee and North

Carolina predates AFMA’s use. Thus, even if AFMA and AFSC had been

57 The possibility that AFSC has flown into and held fundraisers in
Northwestern Tennessee for several years does not change the fact that AFGA’s use
of the name ANGEL FLIGHT in the Territory predates AFSC’s use of the name
ANGEL FLIGHT. (Breckinridge Tr. p. 692, l. 18 – 693, l. 10, p. 720, l. 16 – p. 721, l.
1.) Moreover, no evidence was submitted that demonstrated AFGA was even aware
of this activity occurring in the extreme borders of its Territory.

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joined as parties to this matter, they could not demonstrate priority of use of

the ANGEL FLIGHT mark in Mississippi, North Carolina or Tennessee.

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