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UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF GEORGIA


ATLANTA DIVISION
)
ANGEL FLIGHT OF GEORGIA, INC., ) Civil Action No.
) 1:03-CV-3620-JTC
Plaintiff, )
vs. )
) POST-TRIAL FINDINGS OF
ANGEL FLIGHT SOUTHEAST, INC., ) FACT AND CONCLUSIONS
and ANGEL FLIGHT AMERICA, INC., ) OF LAW (JULY 28, 2006)
)
Defendants. )
)
)

On June 22 through June 28, 2006 this Court conducted a trial of this matter

without a jury. The claims presented to the Court by the Plaintiff Angel Flight of

Georgia (“AF-GA”) were:

1. The request of Plaintiff AF-GA for a declaratory judgment of its

rights as the senior user and owner of the mark “ANGEL FLIGHT” in a territory

consisting of the states of Georgia, Alabama, Mississippi, South Carolina, North

Carolina, and Tennessee, prohibiting defendants Angel Flight America (“AFA”)

and Angel Flight Southeast, Inc. (“AFSE”) from using the mark in the territory;

2. False designation of origin in violation of 15 U.S.C. § 1125(a) against

Defendants;

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3. False advertising in violation of 15 U.S.C. § 1125(a) against

Defendants;

4. Violation of the Uniform Deceptive Trade Practices Act, O.C.G.A. §

10-1-370 et. seq. by Defendants;

5. Common law trademark infringement, unfair competition, and

deceptive trade practices by Defendants; and

6. A declaration that United States Trademark Registration No. 1,491,51

owned by Defendant AFA and licensed to Defendant AFSE be cancelled pursuant

to 15 U.S.C. § 1064.

The claims presented to the Court by Defendants were:

1. Federal trademark infringement against AF-GA in violation of

15 U.S.C. § 1114;

2. Unfair competition in violation of 15 U.S.C. § 1125(a) against

Plaintiff AF-GA;

3. False advertising in violation of 15 U.S.C. § 1125(a) against Plaintiff

AF-GA;

4. Violation of the Uniform Deceptive Trade Practices Act, O.C.G.A. §

10-1-370 et. seq. by Defendants;

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5. Common law trademark infringement, unfair competition, and

deceptive trade practices by Defendants; and

6. Fraudulent registration of the state trademark “ANGEL

FLIGHT” in violation of O.C.G.A. § 10-1-449.

What follows are this Court’s Findings and Conclusions, set forth in

accordance with Fed. R. Civ. P. (“Rule”) 52(a). To the extent (if any) that the

Findings as stated may be deemed conclusions of law, they shall also be

considered Conclusions. Miller v. Fenton, 474 U.S. 104, 113-14 (1985). In the

same way, to the extent (if any) that matters later expressed as Conclusions may be

deemed findings of fact, they shall also be considered Findings. Id.

FINDINGS OF FACT

The Parties

ANGEL FLIGHT OF GEORGIA, INC.

1. Angel Flight of Georgia, Inc. (“AF-GA”) is a volunteer pilot

organization (“VPO”) and a § 501(c)(3) non-profit organization that provides free

air transportation for patients or families of patients who otherwise could not

afford to travel to receive medical care for needs that could not be filled in their

local areas.

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2. James Shafer founded “The American Medical Support Flight Team,

Georgia Chapter” (“AMSFT-GA”) in 1985 among a group of Georgia volunteer

pilots. (Pl. Exh. 109.) Mr. Shaffer was active in AMSFT-GA until his death in

1995.

3. AMSFT-GA formally incorporated in 1985 as a Georgia not-for-profit

corporation. Like other volunteer chapters of AMSFT around the country,

AMSFT-GA adopted “ANGEL FLIGHT” as its service mark.

4. For many years, AMSFT used as its service mark a winged caduceus

identical to the trademark registered by Angel Flight West and now owned by

Angel Flight America. (Defs. Exhs. 23, 24, 25, 26, 42, 145, 146)

5. AMSFT-GA formally changed its name to “ANGEL FLIGHT OF

GEORGIA, INC.” in 1999. (Defs. Exhs. 47,48)

ANGEL FLIGHT SOUTHEAST, INC.

6. Angel Flight Southeast, Inc. (“AFSE”) is a VPO and a § 501(c)(3)

non-profit organization that provides free air transportation for patients or families

of patients who otherwise could not afford to travel to receive medical care for

needs that could not be filled in their local areas. (Tr. 473:3 – 476:19) (Defs. Exhs.

10, 192)

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7. Mary Webb founded the American Medical Support Flight Team –

Central Florida (“AMSFT-Central Florida”) among a group of volunteer pilots in

1985. (Tr. 473: 3-6) Ms. Webb remained active in AMSFT-Central Florida until

her death in 1994. (Defs. Exh. 10, 30)

8. AMSFT-Central Florida was formally incorporated as a Florida not-

for-profit corporation in 1986. (Defs. Exh. 29)

9. Like AMSFT-GA, AMSFT-Central Florida adopted “ANGEL

FLIGHT” as its service mark. (Defs. Exhs. 10, 13, 29)

10. AMSFT-Central Florida formally changed its corporate name in 1992

to “ANGEL FLIGHT OF FLORIDA, INC.” (Defs. Exh. 10)

11. Angel Flight of Florida, Inc., formally changed its name to “ANGEL

FLIGHT SOUTHEAST, INC.” on March 31, 1997. (Defs. Exh. 10)

12. AFSE obtained a Certificate of Authority to transact business in

Georgia as “ANGEL FLIGHT SOUTHEAST, INC.” effective April 2, 1997.

AFSE qualified to do business as “ANGEL FLIGHT SOUTHEAST, INC.” in

South Carolina and Mississippi in 1999 and qualified to do business in Alabama as

“ANGEL FLIGHT SOUTHEAST, INC.” in 2000. (Defs. Exh. 10, 128).

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13. AFSE consistently uses the geographical term “SOUTHEAST” with

the “ANGEL FLIGHT” mark. (Defs. Exhs. 5, 6, 7, 16, 17, 35, 147, 149, 150, 151,

165, 168, 169, 197)

ANGEL FLIGHT AMERICA

14. Angel Flight America (“AFA”) is a national non-profit § 501(c)(3)

organization that, through the combined efforts of seven regional organizations,

provides free air transportation for people with a medical need that cannot be filled

in their local area. (Tr. 502:24 –511: 12; 512:20 – 513:8) (Defs. Exhs. 65, 66, 73,

75, 179, 180, 181, 182, 183, 184, 185, 186, 187, 188, 189, 190, 191, 192, 193)

15. In 2000, AFA was formed as a national network of six autonomous

regions to arrange for free flights to transport patients and their families in private

planes to hospitals for medical treatment. AFA’s programs, administered through

its regions, include fund-raising and education regarding charitable aviation. (Tr.

514: 17 – 520:12)

16. AFSE is the AFA region that covers Florida, Georgia, eastern

Mississippi, Alabama, and South Carolina. (Defs. Exh. 192). AF-GA is not part of

AFA.

17. AFA is the owner by assignment of U.S. Registration Number

1,491,541, the federal trademark registration of an “ANGEL FLIGHT” logo with

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wings and a medical caduceus symbol, in connection with “transportation of

human patients, tissue, and organs principally by air.” (Defs. Exh. 59)

Registration Number 1,491,541 has been properly maintained and renewed and is

incontestable under 15 U.S.C. § 1115. (Defs. Exh. 60)

18. AFA also owns U.S. Registration Number 2,895,251, the federal

trademark registration for the words “ANGEL FLIGHT” in connection with

“transportation of human patients, tissue, and organs principally by air.” (Defs.

Exhs. 2, 44)

19. AFA has entered into license agreements with each of its regions,

licensing them the right to use the mark “ANGEL FLIGHT.” (Tr. 744:6 –15)

Non-parties

20. Angel Flight East is a VPO that provides free air transportation for

patients or families of patients who otherwise could not afford to travel to receive

medical care for needs that could not be filled in their local areas. (Tr. 283:15-

284:9) Angel Flight East is not an AFA region or a member of an AFA region.

21. Angel Flight Oklahoma is a VPO that provides free air transportation

for patients or families of patients who otherwise could not afford to travel to

receive medical care for needs that could not be filled in their local areas. (Tr.

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253:11-22, 255:22-256:7) Angel Flight Oklahoma is not an AFA region or a

member of an AFA region.

22. AFW is a VPO that provides free air transportation for patients or

families of patients who otherwise could not afford to travel to receive medical

care for needs that could not be filled in their local areas. (Defs. Exh. 187)

23. AFW was formed in 1983 by a group of volunteer pilots. When it was

formed, AFW was named “American Medical Support Flight Team – Los

Angeles.” Like the other AMSFT chapters, AMSFT-Los Angeles adopted the

“ANGEL FLIGHT” service mark. (Tr. 325:1-328:25)

24. The AMSFT-Los Angeles chapter later changed its name to

“AMERICAN MEDICAL SUPPORT FLIGHT TEAM, INC.” (“AMSFT-Los

Angeles”) and subsequently to “Angel Flight West.” (Tr. 329:1-25) (Defs. Exh.

76, 78)

25. AMSFT-Los Angeles was the original applicant for United States

Registration No. 1,491,541 for the mark “ANGEL FLIGHT and design” in

connection with “transportation of human patients, tissue, and organs principally

by air.” AMSFT-Los Angeles commissioned the design of the mark and was the

first entity to use it in connection with ANGEL FLIGHT services. (Tr. 330:1-

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331:4) (Defs. Exh. 172) AFW assigned ownership of the trademark to AFA, and

licensed back the right to use the “ANGEL FLIGHT and design” mark.

26. While the owner of Registration Number 1,491,541, AMSFT-Los

Angeles chapter permitted other VPOs to use the mark “ANGEL FLIGHT,”

including the registered design, on the condition that they provided free air

transportation to patients and for other medical purposes.

27. Angel Flight South Central (“AFSC”) is a volunteer pilot organization

(“VPO”) and a § 501(c)(3) non-profit organization that provides free air

transportation for patients or families of patients who otherwise could not afford to

travel to receive medical care for needs that could not be filled in their local areas.

AFSC is an AFA region, and its territory includes western Mississippi. (Defs. Exh.

189)

28. Before becoming an AFA region, AFSC was named “Angel Flight of

Texas.” (Tr. 254:11-17).

29. Angel Flight Mid-Atlantic (“AFMA”) a volunteer pilot organization

(“VPO”) and a § 501(c)(3) non-profit organization that provides free air

transportation for patients or families of patients who otherwise could not afford to

travel to receive medical care for needs that could not be filled in their local areas.

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AFMA is an AFA region, and its territory includes North Carolina and Tennessee.

(Defs. Exh. 191)

30. Before becoming an AFA region, AFMA was named “Angel Flight of

Virginia.” (Tr. 526:19-22)

FACTUAL BACKGROUND

31. The first AMSFT chapter was organized in Las Vegas in about 1982

by Jack Welsh. The Las Vegas AMSFT chapter was the first to adopt “ANGEL

FLIGHT” as a service mark, before either the Georgia or the central Florida

chapters. (Tr. 338:19 –340:17)

32. Mr. Welsh recruited volunteers in the early 1980s to form the AMSFT

chapter in Los Angeles. He also recruited Mary Webb to form AMSFT-Central

Florida and he recruited James Shafer to start AMSFT-GA. (Tr. 405: 15-24, 415:

6-23, 441: 23 – 443:1)

33. The three AMSFT chapters – Los Angeles, central Florida, and

Georgia – quickly lost contact both with Mr. Welsh and the Las Vegas chapter of

AMSFT. (Defs. Exh. 79) Despite the lack of a formal organization, all three

AMSFT chapters continued to operate and to provide services to patients and their

families as VPOs. The Los Angeles chapter, which owned the federally registered

trademark, regarding the Central Florida and Georgia chapters as “sister

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organizations” and permitted them to use the trademark. (Tr. 343:22 – 344:2; 736:2

– 17).

34. The AMSFT chapters were aware of one another and worked

together. (Tr. 181: 1-25) They exchanged information regarding publicity, fund-

raising, outreach to the medical community, and best practices. (Tr. 736: 2-17)

AMSFT-GA and AMSFT-Central Florida worked together and held meetings

together. (Tr. 412:22 – 414: 4) AMSFT-GA used AMSFT-Los Angeles’s federally

registered trademark of the “ANGEL FLIGHT” logo with the wings and medical

caduceus symbol on its materials.

35. AMSFT-GA and AMSFT-Central Florida frequently were involved in

“hand offs” of patients or other passengers. The AMSFT-Central Florida flew into

and out of states outside of Florida, including Georgia, Mississippi, Alabama, and

South Carolina, using the service mark “ANGEL FLIGHT.” (Tr. 481: 24 –

482:20; Pl. Exh. 109; Def. Exhs. 21, 22, 23, 29, 30, 31, 32, 41, 43, 44, 112)

AMSFT-GA flew into and out of states outside of Georgia, including Florida,

Mississippi, Alabama, South Carolina, North Carolina, and Tennessee, also using

the service mark “ANGEL FLIGHT.” If a passenger needed to travel a distance

that was too far for a single flight, the first pilot would arrange to “hand off” the

passenger to a second private pilot, and at times a third or a fourth, to complete the

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journey. Both AMSFT-Central Florida and AMSFT-GA also did “hand offs” to

the organizations that are now AMSC and AFMA.

36. From its inception, AMSFT-Central Florida recruited pilots and

raised funds outside of Florida. (Tr. 477: 6-21, 484: 9 – 488:19) Fund-raising both

within and outside of Florida continued after the AMSFT chapter changed its name

to “Angel Flight of Florida, Inc.,” and later to “Angel Flight Southeast, Inc.”

37. Throughout the 1990s, volunteers around the country discussed the

prospect of forming a formal national network of VPOs. Mr. Shafer of AMSFT-

GA and Edward Boyer of what is now known as AFMA, and volunteers from

AMSFT-Central Florida were involved in the discussions. (Defs. Exh. 62)

38. In the mid-1990s, after the death of Mr. Shafer, AMSFT-GA was

unable to continue its operations. Its only employee was Mr. Shafer’s daughter,

Kathy Missel. Ms. Missel resigned her position, and in 1997 AMSFT-GA

contacted AMSFT-Central Florida (which by this time had changed its name to

“Angel Flight of Florida”) for assistance. (Defs. Exh. 56)

39. The two organizations reached a tentative agreement to merge. In

anticipation of the final merger, Angel Flight of Florida legally changed its name

to “Angel Flight Southeast, Inc.” With the knowledge and cooperation of

members of the AMSFT-GA board, AFSE qualified to do business under that

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regional corporate name in the state of Georgia. AFSE adopted a new logo

incorporating the “ANGEL FLIGHT” service mark that included the word

“SOUTHEAST.”

40. In 1997, AMSFT-GA entered into a formal, executed agreement with

AFSE for AFSE to take over AMSFT-Georgia’s mission coordination

responsibilities in Georgia, Mississippi, Alabama, and South Carolina. (Defs. Exh.

53) AFSE arranged for pilots on the AMSFT-GA roster to transport patients and

other passengers. AFSE also continued to coordinate its own missions.

41. The mission control agreement between ASFE and AMSFT-GA

defined an “AMSFT-GA mission” generally as one in which the patient/passenger

was a resident of Georgia, South Carolina, Alabama, or Mississippi, although the

agreement also applied to some residents of the Florida panhandle. From 1997

through 1999, AFSE coordinated its own missions and also coordinated AMSFT-

GA missions in Georgia, South Carolina, Alabama, and Mississippi. AFSE

charged AMSFT-GA a fee for each mission coordinated.

42. AFSE continued to use the “ANGEL FLIGHT” service mark in

Georgia, South Carolina, Alabama, and Mississippi after taking over mission

coordination for AMSFT-GA. AFSE also continued to raise funds and do outreach

in those states.

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43. AFSE did not coordinate missions for AMSFT-GA in North Carolina

and Tennessee under the mission coordination agreement. AF-Va took over all

responsibilities for flights and mission coordination in North Carolina and

Tennessee. (Defs. Exh. 56)

44. A trial, AF-GA executive director testified that Angel Flight of

Virginia was paid to coordinate AF-GA missions in Virginia and North Carolina

from 1997 through 1999. (Tr. 163:10 – 164:10) Ed Boyer of AFMA, the successor

to AF-VA, denied the existence of such an arrangement. (Tr. 540:5 – 541:20) No

formal mission coordination agreement or record of payment was entered into

evidence.

45. AMSFT-GA terminated the mission control agreement on October 15,

1999, and resumed coordination of its own missions. Following termination of the

mission control agreement, AFSE and AMSFT-GA disputed the amounts AFSE

claimed were due to be paid by AMSFT-GA. (Defs. Exhs. 35, 52) During the

course of their discussions, in an effort to avoid making payment for some mission

coordination, AMSFT-GA took the position that some of the missions coordinated

by AFSE outside of Florida were AFSE’s own missions and AMSFT-GA’s. (Tr.

217: 5 – 219:20; Defs. Exh. 36)

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46. Upon giving notice of termination, AMSFT-GA requested AFSE’s

permission to continue to use “ANGEL FLIGHT” as a service mark. AFSE

directed AMSFT-GA to contact Angel Flight West, the owner of the federally

registered trademark for “ANGEL FLIGHT and design.” (Defs. Exh. 50) AMSFT-

GA did not request permission from Angel Flight West to continue to use the

“ANGEL FLIGHT” service mark.

47. At trial, AF-GA testified that it “borrowed” the registered “ANGEL

FLIGHT” mark from Angel Flight West. (Def. Exh. 51)

48. AMSFT-GA formally changed its corporate name to “Angel Flight of

Georgia, Inc.” in 1999. (Tr. 189: 2-20, 190: 1 – 193:9) The Georgia secretary of

State required AF-GA to get permission from AFSE to use the words “ANGEL

FLIGHT” in its corporate name. AF-GA also commissioned the design of a new

logo, which features the “ANGEL FLIGHT” mark and registered that trademark in

the state of Georgia. (Defs. Exh. 36) AF-GA’s state trademark does not refer to

the state of Georgia.

The Dispute Among the Parties

49. AF-GA and AFSE continued to operate independently of one another

in Georgia, Mississippi, Alabama, and South Carolina from 1999 to the present.

Both continued to use the “ANGEL FLIGHT” service mark. AFMA continues to

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operate in AF-GA’s claimed territory in Tennessee and North Carolina using the

“ANGEL FLIGHT” service mark. AFSC continues to operate in western

Mississippi and western Tennessee using the “ANGEL FLIGHT” service mark.

50. When AFA was formed in 2000, AFSE became the region for the

southeastern United States, including Florida, Georgia, Alabama, Mississippi, and

South Carolina. (Defs. Exh. 64)

51. AFA received widespread national publicity, including a feature on

“THE TODAY SHOW.” (Tr. 712: 1 – 21) AFA featured each of its regions on its

website and solicited funds on the website. AFSE had a separate website that

identified its region, solicited funds, and promoted its services.

52. In May of 2003, AF-GA claimed that it was the senior user and

common law owner of the “ANGEL FLIGHT” service marks and that AFSE’s use

of an “ANGEL FLIGHT” service mark was likely to cause confusion between AF-

GA and AFSE in the minds of the public. AF-GA objected to AFSE’s continued

use of the “ANGEL FLIGHT SOUTHEAST” mark in Georgia, Mississippi, South

Carolina, and Alabama. AFA and AFSE did not object to AF-GA’s use of the

“ANGEL FLIGHT” mark in the region until after this lawsuit was filed.

53. If AFSE were prohibited from using the mark “ANGEL FLIGHT” in

part or all of its region, the national fund-raising activities and patient outreach of

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AFA would be severely impacted. (Tr. 519:9 – 520:12) An AFA representative

testified that the cost to AFA of a name change might approach $5,000,000. (Tr.

712:22-713:2) The National Advertising Council fee to develop a name change

project alone is estimated at $400,000. (Tr. 713:5-14) If AFA were to continue to

use the “ANGEL FLIGHT” mark in the rest of the country but not in the southeast,

it would have a negative impact on the national charitable work of AFA. (Tr. 708:

17-710:20; 710:25-715:14)

CONCLUSIONS OF LAW

DECLARATORY JUDGMENT

1. AF-GA seeks a declaratory judgment that it has superior rights to

AFA and AFSE in the mark “ANGEL FLIGHT” in the four-state region consisting

of Georgia, Alabama, Mississippi, and South Carolina, and to AFA and AFMA in

Tennessee and North Carolina. AF-GA must prove that it is the prior user and

owner of all rights in the ANGEL FLIGHT service mark in its claimed territory,

with the right to prohibit and exclude the defendants from licensing or using the

marks there.(First Amended Complaint, ¶30).

2. AF-GA challenges the validity of the federal registration owned by

AFA and licensed to AFSE and claims that its common law rights in the “ANGEL

FLIGHT” service mark pre-date, and are superior to, the rights of AFA and its

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licensees in the claimed region. To prevail on its claim to priority, AF-GA first

must establish that its common law rights in the ANGEL FLIGHT mark are

superior to the common law rights of AFSE, AFMA, and AFSC in the “ANGEL

FLIGHT” mark in each individual state in the claimed territory. Each of those

AFA regions existed independently before the formation of AFA, and each used

the “ANGEL FLIGHT” mark in the claimed territory. As AF-GA cannot establish

seniority in each state in the territory, AF-GA’s application for a declaratory

judgment must be denied.

3. Ownership of a trademark at common law is obtained by actual use of

the mark to identify goods or services and to distinguish them from the those

offered by others. Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088,

1093 (9th Cir. 2004). A party makes “use” of a service mark in interstate

commerce by offering its services across state lines, attracting customers across

state lines by advertising or promoting services, or if its licensees or franchisees

are located in more than one state. Use need not be extensive to establish

ownership or to qualify for federal registration. See Larry Harmon Pictures Corp.

v. Williams Restaurant Corp., 929 F.2d 662 (Fed. Cir.), cert. denied 502 U.S. 823

(1991) (mark used to identify restaurant services at a single location serving

interstate travelers is use in “interstate commerce.”)

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4. Beginning in the 1980s, AF-GA used the service mark “ANGEL

FLIGHT” in Georgia and other states in its region, specifically Mississippi,

Alabama, and South Carolina. AF-GA used the mark wherever its volunteers flew,

or solicited donations, or contacted medical professionals. AF-GA also made use

of the word mark “ANGEL FLIGHT” in North Carolina and Tennessee, before

abandoning the mark in those states in 1997, when it no longer had mission

coordination capabilities in those states.

5. AFSE has also used the “ANGEL FLIGHT” service mark since the

1980s in Georgia, Mississippi, Alabama and South Carolina, as well as in Florida,

wherever its volunteers flew, or solicited donations, or contacted medical

professionals. Like AF-GA, AFSE used the “ANGEL FLIGHT” mark in

connection with providing free air transportation for patients or families with

patients who otherwise could not afford to travel to receive medical care for needs

that could not be filled in their local areas.

6. It is impossible to determine, based on the record, if AF-GA used the

mark ANGEL FLIGHT before AFSE in South Carolina, Alabama, or Mississippi,

or if AFSE was the first user of the mark in those states. AF-GA’s executive

director testified that there was no accurate record of the first use of the mark

“ANGEL FLIGHT” by AF-GA in any of the states at issue. (Tr. 222:22 – 225:6) It

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is undisputed that AF-GA used the word mark “ANGEL FLIGHT” first in

Georgia, because AF-GA consisted of Georgia volunteers; and it is undisputed that

AFSE used the mark “ANGEL FLIGHT” first in Florida, because AFSE consisted

of Florida volunteers. The record does not establish which organization flew the

first mission using the “ANGEL FLIGHT” mark in any of the other states, or

which one solicited a contribution first, or first did outreach to a medical

organization. (Defs. Exh. 109)

7. Trademark rights arise from use, not adoption. Hanover Star Milling

Co. v. Metcalf, 240 U.S. 403, 60 L.Ed. 713, 36 S. Ct. 357 (1916). Without

establishing the date each entity first used the “ANGEL FLIGHT” mark in each

state, priority cannot be determined.

8. Even if priority could be established, priority of use would not be

dispositive of ownership in this case. Both AF-GA and AFSE have tolerated each

other’s use of the word mark “ANGEL FLIGHT” throughout the region. In the

1980s and 1990s, the two organizations cooperated with one another, and AF-GA

claimed to be one of several national “chapters” of the same volunteer

organization, AMSFT. (Tr. 412:22 – 414:4)

9. AFSE was using the “ANGEL FLIGHT” mark in Georgia,

Mississippi, Alabama, and South Carolina in 1997. AFSE’s use of the mark in

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those states increased that year, when AF-GA invited AFSE to expand its

operations by proposing a merger between the two organizations.

10. As part of the cooperative operations with AFSE, AF-GA was aware

of and consented to the corporate name change from “Angel Flight of Florida,

Inc.” to “Angel Flight Southeast, Inc.” While the Mission Coordination

Agreement was in effect, AFSE registered to do business in Georgia, South

Carolina, and Mississippi using the “ANGEL FLIGHT” mark as part of its

corporate name. AFSE adopted a corporate name that included the words

“ANGEL FLIGHT” in those states before AF-GA adopted a corporate name that

included the words “ANGEL FLIGHT.” The Mission Coordination Agreement

only added to AFSE’s use of the “ANGEL FLIGHT” mark in the states in dispute;

AFSE also used the mark with its own flights, its own fund-raising, and its own

outreach.

11. The Mission Coordination Agreement was silent as to trademark

rights. AFSE did not act as AF-GA’s agent in coordinating flights for trademark

purposes. AFSE enjoyed its own trademark rights in Georgia, Alabama,

Mississippi and South Carolina based upon its use in those states, and its use of the

mark in connection with mission coordination, even for AF-GA flights, further

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established its rights. AFSE’s use of the “ANGEL FLIGHT” mark did not inure to

AF-GA’s benefit.

12. When AF-GA terminated the Mission Coordination Agreement in

1999, AFSE continued to use the “ANGEL FLIGHT” mark in those states with

AF-GA’s knowledge and consent. At the time of termination, AF-GA requested

AFSE’s permission to continue to use the “ANGEL FLIGHT” mark. If a party

owns a trademark, it does not need to seek permission from another party, whom it

later accuses of infringement, to continue to use that mark. A&L Laboratories, Inc.

v. Bou-Matic LLC, 429 F.3d 775, 781 (8th Cir. 2005.)

13. AF-GA did not formally adopt the “ANGEL FLIGHT” corporate

name until 1999, more than two years after AFSE had registered to do business in

Georgia using the corporate name that included the mark “ANGEL FLIGHT,” and

more than seven years after AFSE had dropped “AMSFT-Central Florida” and

incorporated the mark “ANGEL FLIGHT” into its corporate name as “Angel

Flight of Florida, Inc.”

14. AF-GA did not object to AFSE’s continued use of the “ANGEL

FLIGHT” mark in Georgia, Alabama, Mississippi or South Carolina after the

termination of the Mission Coordination Agreement. AFSE did not object to AF-

GA’s use of the “ANGEL FLIGHT” mark in the claimed territory.

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15. Even if it were possible to determine seniority, it is undisputed that

each party accepted the use of “ANGEL FLIGHT” by the other throughout the

region. AF-GA and AFSE used the “ANGEL FLIGHT™” marks concurrently for

nearly two decades. The concurrent use of the trademark in connection with the

same service by two different parties is permitted when each of the two parties

have a legitimate claim to the mark. See, Illinois High School Ass’n v. GTE

Vantage, Inc., 99 F.3d 244, 247 (7th Cir. 1996) (finding that the term “March

Madness” was a “dual use” term and could be used by both parties.) In this case,

both parties enjoy rights to the word mark “ANGEL FLIGHT” in the region.

16. AF-GA also claims prior rights to the “ANGEL FLIGHT” word mark

in North Carolina and Tennessee and seeks a declaration of rights in those other

states. The Court finds that the testimony of the AF-GA executive director, who

testified that AF-GA paid AF-VA to coordinate mission in those states from 1997

through 1999, lacks credibility. The Court credits the contrary testimony of

Edward Boyer of AFMA. AF-GA’s own documents refute the testimony of its

executive director that AF-GA continued flights in Tennessee and North Carolina

in 1997 through 1999. (Defs. Exh. 56, 94). Moreover, no evidence of payment,

other than the testimony of the executive director, was submitted.

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17. AF-GA abandoned the “ANGEL FLIGHT” word mark in 1997 in

North Carolina and Tennessee when it stopped flying missions or coordinating

missions in those states. Abandonment of a trademark is found when use is

discontinued with an intent not to resume. An abandonment for three years creates

a rebuttable presumption of abandonment. 15 U.S.C. § 1127. At the time that AF-

GA ceased operations in Tennessee and North Carolina, and entered into merger

discussions with AFSE, which did not cover those states, AF-GA’s intent to

abandon was manifest. AmBrit, Inc. v. Kraft, Inc., 805 F.2d 974 (11th Cir. 1986)

(resumption of use two years after abandonment does not prove that there was no

intent to abandon when use ceased), opinion superseded by 812 F.2d 1531 (11th

Cir. 1986), cert. denied 481 U.S. 1041 (1987.)

18. After AF-GA stopped flights in Tennessee and North Carolina in

1997, AF-Va (now AFMA) began to coordinate and make the flights in those

states that otherwise may have been made by AF-GA. The AFMA flights in

Tennessee and North Carolina were done with AF-GA’s knowledge and consent.

Even after AF-GA resumed flights in those states after 1999, AF-GA did not object

to the use of the “ANGEL FLIGHT” word mark in those states by AFMA.

19. AF-GA’s request for declaratory judgment to ownership of the mark

“ANGEL FLIGHT” in Tennessee and North Carolina also is denied. AF-GA

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abandoned the mark in 1997 and following its resumption of its use of the mark

acquiesced to continue use by AFMA. AF-GA is estopped from asserted superior

rights to the mark in that territory.

20. An additional reason that AF-GA’s request for a declaratory judgment

as to Tennessee and North Carolina is denied is that AFMA is not a party to this

lawsuit. A declaratory judgment does not extend to non-parties or to persons

whose rights have not been adjudicated. An injunction against AFMA’s use of the

“ANGEL FLIGHT” mark in Tennessee and North Carolina, or against Angel

Flight South Central’s continued use of the mark in western Mississippi, is not

proper because they have not been brought into the lawsuit by AF-GA. Chase Nat.

Bank v. City of Norwalk, Ohio, 291 U.S. 431, 437, 54 S.Ct. 475, 78 L.Ed. 894

(1934) (stating that an injunction against independent nonparties "violates

established principles of equity jurisdiction and procedure.")

21. AF-GA has not established seniority over AFSE, AFSC, or AFMA in

the rights to “ANGEL FLIGHT” word mark anywhere, except possibly in the state

of Georgia. Even in the state of Georgia and in the remaining states in the region,

the record shows that AF-GA acquiesced to the use by AFSE and other “ANGEL

FLIGHT” organizations from at least the early 1990s forward. In 1997, AF-GA

invited AFSE to expand the use of its marks in Georgia, Mississippi, Alabama and

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South Carolina and cooperate in AFSE’s qualification to do business in those states

using a corporate name that included the words “ANGEL FLIGHT.” AF-GA

made no objection to the words “Angel Flight” as a mark by AFSE until 2003.

ACQUIESCENCE

22. For almost two decades, both parties acquiesced to the use by the

other of the word mark “ANGEL FLIGHT” in the region. Acquiescence ended in

2003 when AF-GA first objected. Acquiescence is the active or explicit consent

of the senior user to the use of an allegedly infringing mark. SunAmerica v. Sun

Life Assurance Co. of Canada, 77 F.3d 1325, 1334 (11th Cir. 1996). Acquiescence

requires an active representation by the senior user that it will not assert a claim,

and an inexcusable delay between that representation and assertion of that claim

that causes undue prejudice to the junior user of the mark. Id.

23. In a case of acquiescence, the duty to avoid future confusion is

mutual. Id. at 1336-1338. That is a fair result in this case, when neither party is

able to establish first use in most of the states of the region. To avoid confusion,

AFSE consistently uses the mark “ANGEL FLIGHT” in connection with the

geographical term “SOUTHEAST.” In 1999, AF-GA adopted an “ANGEL

FLIGHT” logo that does not include a geographic modifier (i.e., such as “ANGEL

FLIGHT OF GEORGIA”) or another disclaimer to distinguish it from other Angel

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Flight organizations. Geographic modifiers are permitted to eliminate likelihood

of confusion if they are not the dominant feature in the mark. A disclaimer is one

where both parties have rights in the mark and the disclaimer eliminates the

likelihood of confusion through a clear statement that is prominently and

conspicuously placed.

24. Confusion created by the similarities between marks may be reduced

or eliminated by geographic or location modifiers. Four Seasons Hotels, Ltd. v.

Koury Corp., 776 F.Supp. 240, 248 (E.D.N.C. 1991). AFSE consistently uses the

term “SOUTHEAST” in connection with “ANGEL FLIGHT” in its marks.

Consistent employment of the word “GEORGIA” or the abbreviation “GA” with

AF-GA’s use of “ANGEL FLIGHT” would further reduce the likelihood of

confusion.

25. AF-GA’s “evidence” of actual confusion consisted of hearsay

statements and is not persuasive. It does not overcome the determination that

acquiescence (or estoppel by laches, which follows) act to bar AF-GA’s claims.

Although the Court heard testimony from AF-GA witnesses regarding incidents of

actual confusion, that testimony is entitled to little or no evidentiary weight

because it was almost entirely hearsay. Popular Bank of Florida v. Banco Popular

de Puerto Rico, 9 F.Supp.2d 1347, 1362 (finding that testimony regarding

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telephone calls from allegedly confused customers by plaintiff’s employee “should

not be given the substantial weight accorded to in-court testimony”). The

executive director of AF-GA, Ms. Biron, testified that a fixed based operator at the

Peachtree-DeKalb airport, Mr. Rimmell, received a letter from AFSE regarding

fuel discounts, and that he “came down the hall” because “he was confused why he

was getting a letter from Florida without my name on it, when our office was down

the hall.” (Tr. 111: 8-112: 9; Exh. 148.) Although at one point in her testimony,

Ms. Biron characterized Mr. Rimmell as “confused,” she later added that “really, I

think the purpose in him doing it was to give me a hard time, because he doesn’t

sell fuel, so he is not in a position to give fuel discounts.” (Tr. 112: 6-9.) Mr.

Rimmell, a resident of Georgia who was within the subpoena power of the court,

was not called to testify or to explain whether he was, in fact, confused, was giving

Ms. Biron “a hard time,” or had some other impression of the communication from

AFSE.

26. Ms. Biron also testified about a letter that Steve Shaner, who owns

American Air Flight Training at Peachtree De-Kalb Airport, received from AFSE

soliciting donations. (Tr. 120: 10-21; Pl. Exh. 50.) She further testified that other

pilots had received solicitations for donations from AFSE (Tr. 120: 22- 121: 1-8),

but did not testify if they were “confused.” The pilots did not testify. Other

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testimony regarding alleged confusion involving McKessin Corporation (Tr. 121: 9

- 122: 26; 122: 10-17;) a pilot who attended an AFSE event (Tr. 123: 23 -124: 2, 6-

10; Pl. Exh. 126,) Mr. Epps, the fixed based operator at Peachtree De-Kalb Airport

(Tr. 129: 12-131:5); Cynthia Mickleberry of the “Club of Hearts” for Georgia

Power Southern Company (Tr: 133: 25 - 135: 8), a reporter for the Atlanta Journal

of Constitution (Tr. 136: 21- 137: 10; Exh. 139) a Dr. Dawson (Tr. 138: 2-16); a

reporter for FOX® television (Pl. Exh. 29; Tr. 140: 11 –141: 12,) and other

Georgia media (Tr. 141: 13 - 142: 5,) and an official of the Georgia state

government (Pl. Exh. 202; Tr. 148: 10 - 150: 4.) All of this testimony consisted

Ms. Biron’s characterization of the thoughts of third parties and her repetition of

their purported statements. All of the witnesses were within the subpoena power of

the court. None of these witnesses testified, however, and the Court cannot

determine if any of them in fact made the statements reported by Ms. Biron, if any

of them in fact were confused, or if in fact they were not confused and simply

wished to call to Ms. Biron’s attention the fact that they had been contacted by

another entity with the words “Angel Flight” in its name.

27. Another AF-GA witness, mission coordinator Bernadette Darnell

(who is Ms. Biron’s mother), also testified about alleged instances of confusion.

Her testified also was replete with hearsay statements attributed to persons who

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were not in the courtroom, and not subject to cross-examination. Ms. Darnell

testified about witnesses whose names that she knew well, all of whom were

within the subpoena power of the Court. Ms. Darnell offered testimony

purportedly evidencing actual confusion attributable to a pilot named “Mark,” who

flies a “King Air 350” (Tr. 302: 16- 303: 7; 303: 21- 304: 9); a Georgia Club of

Hearts patient (Tr . 304: 15 - 305: 22); A hospital “that we work with a huge

amount” (Tr. 7-25); Pilot Jim Hayes (Tr. 307: 18 - 308: 23); Paradise Café (Tr.

311: 15- 312: 22); Fuzzy’s Restaurant (Tr. 312: 23 - 313: 24); and radio personality

Scott Slade (Tr. 313: 25 - 314: 23). All of these reported instances of actual

confusion involve witnesses within the subpoena power of the court who AF-GA

failed to call to testify directly to give their actual mental impressions as to whether

or not they were confused by the activities of Angel Flight Southeast in the state of

Georgia.

28. AF-GA’s evidence of actual confusion consisted of hearsay

statements that the Court affords little or no weight. AF-GA’s evidence of actual

confusion is an insufficient basis for the Court to conclude that if each party used a

geographic designation or disclaimer, most confusion would be eliminated.

29. Moreover, in those cases in which there has been actual confusion,

appropriate corrective action was taken. When AFSE received a charitable

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donation intended for AF-GA, it passed along the funds to AF-GA. (Tr. 201: 6 –

202: 2) In either event, the donor’s money went to charitable aviation.

30. Each hearsay statement evidence must be considered on a case-by-

case basis in order to determine its admissibility. Although courts in the Eleventh

Circuit may have found that some evidence of actual confusion may be admissible

regardless of the hearsay rule, they have made it clear that, if used, this exception,

only applies to testimony containing one level of hearsay. See Armco, Inc. v.

Armco Burglar Alarm Co, Inc., 693 F. 2d 1155, 1160 n.10 (5th Cir. 1982) (finding

that trial judge should not have permitted testimony in which the witness testified

as to another person’s statements of yet a third person’s confusion). As one district

court in this circuit has held, “[s]uch double hearsay is not admissible under the

state of mind exception” in the context of a trademark action. Ocean Bio-Chem,

Inc. v. Turner Network Television, Inc., 741 F. Supp. 1546, 1559 (S.D. Fla. 1990)

(citing Armco).

31. Even if some evidence is not considered hearsay because it is not

offered for the truth of the matter asserted, such evidence, even if admissible,

should not be given the same amount of weight as live testimony. One court in this

circuit has addressed the situation this way:

The plaintiff has not submitted its evidence of actual confusion in the
best, most complete manner. By making reasonable efforts, [plaintiff]
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could have presented its evidence of actual confusion directly through
the in-court testimony of at least several confused callers, thus
allowing the defendants an opportunity to cross-examine them about
the precise cause of their confusion.

Popular Bank of Florida, 9 F. Supp. 2d at 1362.

32. Finally, the same AF-GA witness who testified about actual confusion

also flatly stated that no confusion resulted from passengers who allegedly had

been “stranded” by AFSE pilots. Ms. Darnell testified as follows:

Q: Ms. Darnell, has anybody ever accused Angel Flight of Georgia


ever doing the, ever, type of stranding you mentioned, that being
telling a patient you were going to fill a mission, and then not filling
it?

A: No, ma’am.

Q: Has anybody ever accused Angel Flight of Georgia of doing that?

A: No.

(Tr. 302: 8-15.)

ESTOPPEL BY LACHES

33. The equitable defense of estoppel by laches also bars AF-GA’s claims

for infringement of common law trademarks brought under the Lanham Act if the

purported trademark owner has delayed unreasonably in asserting its claims.

Conagra, Inc. v. Singleton, 743 F.2d 1508, 1517 (11th Cir. 1984).

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34. To assert a defense of estoppel by laches, a defendant ordinarily must

demonstrate the presence of three elements: (1) a delay in asserting a right or a

claim; (2) that the delay was not excusable; and (3) that there was undue prejudice

to the party against whom the claim is asserted. AmBrit, Inc. v. Kraft, Inc., 812

F.2d 1531, 1545 (11th Cir. 1986).

35. In the present case, AF-GA’s claims have been brought outside the

four-year statute of limitations applicable to Lanham Act claims in Georgia.

Therefore, AF-GA’s infringement claim is subject to a presumption of laches.

35. The statute of limitations applies from the closest analogous state law

to Lanham Act infringement claims. Kason Industries, Inc. v. Component

Hardware Group, Inc., 120 F.3d 1199, 1203 (11th Cir. 1997). The applicable

statute of limitations for infringement claims under the Lanham Act, 15 U.S.C. §

1125, is the four-year statute of limitations applied under the Georgia’s Uniform

Deceptive Trade Practices Act (“UDTPA”). Kason, 120 F.3d at 1203-1205.

36. The start of the limitations period and the length of the delay must be

“measured from the time at which the plaintiff knows or should know” it has a

provable claim for infringement. Id. at 1206. A party is deemed to have had a

provable claim for infringement when the party first learned of the use of the mark

and had the ability to demonstrate a likelihood of confusion. Id.

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37. AF-GA operated for almost 20 years with full knowledge of AFSE’s

use of the “ANGEL FLIGHT™” marks in the context of an identical service for an

identical purpose. AF-GA had sufficient knowledge and grounds for an

infringement claim from that time to the present.

38. Because AF-GA’s unreasonable delay will cause AFSE severe

prejudice if AFSE now were to be enjoined from using the “ANGEL FLIGHT™”

marks, AF-GA’s claims are barred by the doctrine of estoppel by laches.

39. Alternatively, even if the Court were to disregard AF-GA’s

knowledge of AFSE’s use of the ANGEL FLIGHT™ marks up to the time that

“Angel Flight of Florida” changed its name to Angel Flight Southeast, AF-GA’s

claims are barred by the doctrine estoppel by laches. AFSE changed its name on

March 31, 1997.

40. If a trademark infringement claim is filed within the analogous state

limitations period, a strong presumption is created that laches is inapplicable: if the

claim is filed after the analogous limitations period has expired, the presumption is

that laches is a bar to some or all remedies sought in the suit. J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition § 31:23 (4th ed. 2005); see

Nartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 408 (6th Cir. 2002), cert.

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denied 538 U.S. 907 (2003) (finding “a delay beyond the three-year statutory

period is presumptively prejudicial and unreasonable.”

41. If AF-GA had wished to assert superior rights in the “ANGEL

FLIGHT™” marks, the time to do so began, at the latest, when it terminated its

contractual relationship with AFSE in October of 1999. AF-GA failed to act until

November of 2003, more than four years later. AF-GA’s unreasonable delay of

four years and a month in asserting its claims is an additional basis for this court to

find that its claims are barred by the doctrine of estoppel by laches.

42. AF-GA has not met its burden of demonstrating that its long delay in

bringing its claims was in any way reasonable or justifiable. If a plaintiff had

knowledge and could have proven infringement, its delay may only be justified if a

defendant user redirected its marketing strategies to come into direct competition

with a plaintiff. See Kason, 120 F.3d at 1205-1206. Under this doctrine of

progressive encroachment, a delay may be excusable if an alleged infringer at first

sells “different products in a different market through different distribution

channels,” then later redirects its use to come into competition with the plaintiff.

Kason, 120 F.3d at 1206. See also ProFitness Physical Therapy Center v. Pro-Fit

Orthopedic and Sports Physical Therapy P.C., 314 F.3d 62, 70 (2d Cir. 2002).

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43. Growth does not constitute infringement. Prudential Ins. Co. of

America v. Gibraltar Financial Corp. of California, 694 F.2d 1150, 1154 (9th Cir.

1982) (finding laches and no progressive encroachment where defendant user did

not change its position to come in direct competition with plaintiff). See also

Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 498 (2d Cir.) cert.

denied 386 U.S. 520 ( 1961)(laches barred infringement claim because plaintiff

failed to act while defendant was small); Dwinell-Wright Co. v. White House

Milk Co., 132 F.2d 822 (2d Cir. 1943) (holding laches barred injunctive relief

because, although plaintiff knew of the defendant’s use for 16 years, where “the

plaintiff did nothing to stop that use” but instead “merely stood aside and watched

the business grow”). No progressive encroachment can be asserted by AFA

against AFSE because AFSE increased its use of the mark in the service of

volunteer medical aviation, rather than changing the services associated with the

mark.

44. AFSE’s use of the mark has at all times been in connection with

services identical to those offered by AF-GA in connection with the “ANGEL

FLIGHT™” marks. No encroachment has occurred in this case and AF-GA had

the opportunity to bring its claims from the moment of AFSE’s first use in Georgia

and the neighboring states. See Grupo Gigante, 391 F.3d at 1103. (rejecting

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plaintiff’s progressive encroachment argument to uphold a laches decision barring

injunctive relief where defendant’s use of its mark had not changed for four years).

45. AFSE acted to its detriment in reliance on AF-GA’s failure to assert

its claim. An “owner’s delay in asserting his rights may lead the defendant to build

up innocently an important reliance on the publicity of his mark, so that its loss

would cost dearly.” Chandon Champagne Corp. v. San Marino Wine Corp., 335

F.2d 531, 535 (2d Cir. 1964) (upholding dismissal of infringement claim where

plaintiff delayed 10 years in bringing suit). AFSE and its licensor, AFA, have

invested time, effort, and dollars in having AFSE serve as the “ANGEL FLIGHT”

region for the southeastern United States. It would prejudice both AFSE and AFA

- - and the five other regions of AFA - - if AFSE were restricted in its use of the

“ANGEL FLIGHT™” marks.

46. The Court will not issue an injunction against AFSE’s use of the

“ANGEL FLIGHT” marks after this long silence by AF-GA. To do so would be

inequitable. The maxim that a party who seeks equity must do equity is applicable

in every type of case, including unfair competition. Eastman Kodak Co. v.

Fotomat Corp., 317 F.Supp. 304 (1969). See also, West v. Equifax Credit

Information Services, Inc., 23 Ga App. 41, 495 S.E. 2nd 300 (1997). (rule that “he

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who would have equity must do equity refers to equitable rights with respect to the

subject matter of the action; if it does not embrace outside matters.)

47. Although AFSE does not claim territorial rights in Florida, it sought to

solicit donations and funds in Florida, specifically in Leesburg, Florida, the

headquarters of AFSE, during the course of this litigation. Such inequitable

conduct will not be rewarded. AF-GA demonstrated bad faith in pursuing this

claim be admitting, apparently without embarrassment, that it attempted to create

confusion with Angel Flight Southeast. AF-GA ran advertisements in the state of

Florida, particularly in Orlando and Leesburg, Florida, the headquarters of Angel

Flight Southeast, soliciting funds on Thanksgiving Day weekend, 2005. AF-GA’s

chief executive officer testified that the purpose of the advertisementss “was really

to give – get – give them back just a small taste of the medicine that they’ve been

giving us for a few years, so that maybe they would understand how difficult it is

to try to overcome this level of confusion in your backyard every day.” (Tr. 151:

13-25; Tr. 152: 1-14; Defendant’s Exh. 195 and 196.) These advertisements were

run in contravention of AF-GA’s stated policy not to purchase advertising. (Tr.

204:18 – 205:3) The Court will not grant equitable relief to a party who has acted

in bad faith.

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UNFAIR COMPETITION UNDER THE LANHAM ACT

48. The elements of the Lanham Act claim for unfair competition are

ownership of the trademark and likelihood of confusion created by competitive use

of the same or confusingly similar mark. 15 U.S.C. § 1125(a)(1). As AF-GA

cannot establish senior rights in the trademark, its claim calling for unfair

competition must be denied.

FALSE ADVERTISING

49. The elements of a false advertising claim under 15 U.S.C. § 1125 are

(1) AFSE’s advertisements were false or misleading; (2) the advertisements

deceived, or had the capacity to deceive, consumers; (3) the deception had a

material effect on purchasing decisions; (4) the misrepresented product or service

affects interstate commerce; and (5) AF-GA has been—or is likely to be—injured

as a result of the false advertising. Hickson Corp. v. Northern Crossarm Co., Inc.,

357 F.3d 1256, 1260 (11th Cir. 2004).

50. AF-GA’s claims are based on its claim to rights in the “ANGEL

FLIGHT” mark senior to those of AFSE and AFA. As AF-GA has failed to

establish seniority, its claims for false advertising fail as a matter of law.

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51. No evidence was presented that AFSE’s advertisements are in any

way false or misleading. AFSE consistently uses the “ANGEL FLIGHT” marks in

conjunction with the word “SOUTHEAST.”

52. Regardless of whether AF-GA could establish a claim for false

advertising, however, its claim is barred by acquiescence and laches, for the same

reasons that the Lanham Act unfair competition claim is barred. “It is well

established that laches is a valid defense to Lanham Act claims, including those for

false advertising.” Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829,

835 (9th Cir. 2002) (citing e.g., Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813,

820-21 (7th Cir. 1999); Conopco, Inc. v. Campbell Soup Co., 95 F.3d 187, 191

(2nd Cir. 1996); see also GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199,

1209 (9th Cir. 2000)). The same equitable principles apply and require the Court

not to enjoin AFSE and AFA from using the “ANGEL FLIGHT” marks.

DECEPTIVE TRADE PRACTICES

53. A claim under § 43(a) of the Lanham Act and O.C.G.A. § 10-1-372

provide analogous causes of action and are governed by the same standards.

Kason Industries, Inc., 120 F.3d at 1203; Rolls-Royce Motors, Ltd. v. A&A

Fiberglass, Inc., 428 F. Supp. 689, 693-94 (N.D. Ga. 1977). The test for deceptive

trade practices and unfair competition under Georgia law is the same as the test for

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infringement under Lanham Act, namely, whether defendant’s use of the mark is

“likely to cause confusion, mistake, or deception.” See Amstar Corp. v. Domino’s

Pizza, Inc., 615 F.2d 252, 258-59 (5th Cir. 1980); see also Jellibeans, Inc. v.

Skating Clubs of Georgia, Inc., 716 F.2d 833, 839 (11th Cir. 1983).

54. As AF-GA’s claim for unfair competition under the Lanham Act fails

due to its failure to establish rights in the ANGEL FLIGHT mark superior to those

of AFSE and AFA, its claim for Deceptive Trade Practices is rejected.

COMMON LAW TRADEMARK INFRINGEMENT

55. The likelihood of confusion standard that applies under O.C.G.A. §

10-1-372 also applies under the Georgia’s common law causes of action for

trademark infringement, unfair competition and deceptive trade practices in the

context of trademark use. Robarb, Inc., v. Pool Builders Supply of the Carolinas,

Inc., 696 F. Supp. 621, 629, n.3 (N.D. Ga. 1988); see also Amstar Corp., 615 F.2d

at 258-59; Rolls-Royce Motors, 428 F. Supp. at 697.

56. As AF-GA’s claim for unfair competition under the Lanham Act fails

due to its failure to establish rights in the ANGEL FLIGHT mark superior to those

of AFSE and AFA, its common law infringement claim is rejected.

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CANCELLATION

57. AF-GA asks the Court to cancel the United States registration owned

by Angel Flight America and licensed to AFSE and AFMA for the mark “ANGEL

FLIGHT” and design.

58. United States Registration No. 1,491,541 for the mark “ANGEL

FLIGHT and design” is incontestable pursuant to 15 U.S.C. § 1065.

Incontestability is conclusive evidence of validity and of the registrant’s right to

use the mark in commerce. 15 U.S.C. § 1115(b). Incontestability is subject to the

defense that the registration was obtained fraudulently. 15 U.S.C. § 1115(b)(1).

59. To prove that a party obtained a federal registration fraudulently, the

party charging fraud must establish that the acts alleged to be fraudulent were

performed in bad faith, with a fraudulent purpose, and also with the intent to secure

a federal registration by deception. Stocker v. General Conference Corp., 39

U.S.P.Q.2d 1385 (TTAB 1996).

60. “Fraud” for the purposes of 15 U.S.C. § 1115(b)(1) must be

distinguished from “false.” An inadvertently false statement on a trademark

application is not “fraud.” The concept of fraud implies an intentional deceitful act

of omission or commission through which a party has sought to obtain something

to which it was not otherwise entitled. Torres v. Cantine Torresella S.r.l.¸808 F.2d

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46 (Fed. Cir. 1986). The act must be intentional and deceitful, and must be

material to the issuance, maintenance, or renewal of the registration. A fraudulent

representation involves an intent to deceive. Rogers Corp. v. Fields Plastics &

Chems., Inc.¸176 U.S.P.Q. 280 (TTAB 1982).

61. AF-GA has not borne its burden of showing that when American

Medical Support Flight Team, Inc. (now “Angel Flight West”) applied for

registration, it deceived, or intended to deceive the United States Patent &

Trademark Office (“USPTO”). In fact, no evidence to that effect was offered.

62. United States Registration No. 1,491,541 is for a design mark, the

words “ANGEL FLIGHT” with wings and a medical caduceus symbol. That

design was commissioned by and original to the AMSFT chapter that is now Angel

Flight West. There is no evidence that at the time the application was submitted

that any other party had rights to that mark or to a confusingly similar mark in

connection with “transportation of human patients, tissue, and organs principally

by air.”

COUNTERCLAIMS

63. AFA and its licensee, AFSE, have asserted counterclaims for

infringement of the federal registered mark “ANGEL FLIGHT and design.”

Applying the legal standards set forth above for violations of the Lanham Act

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prohibitions on unfair competition and false advertising, as well as the state

statutory and common law standards, judgment must be entered in their favor.

AF-GA’s use of its design mark, without disclaimer or geographic designation, is

likely to cause confusion.

64. In order to show there is entitled to a declaratory judgment, AFA and

its licensee must show that they have prior rights in the “ANGEL FLIGHT” mark

and that the use of a confusingly similar mark by the infringer is likely to cause

confusion among the public.

65. AFA owns United States Registration No. 1,491,541 is for a design

mark, the words “ANGEL FLIGHT” with wings and a medical caduceus symbol.

The registration is incontestable.

66. In 1999, with knowledge of the existence and ongoing use of United

States Registration No. 1,491,541 by AFW, AF-GA adopted a design mark that

included the words “ANGEL FLIGHT” and did not include a disclaimer or

geographic description or designation.

67. AF-GA was aware of United States Registration No. 1,491,541 at the

time that it adopted the design mark and registered that mark in the state of

Georgia. AFSE directed AF-GA, which was not then formally named “ANGEL

FLIGHT OF GEORGIA,” to contact AFW, the then-owner of the design mark, to

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request its consent. AF-GA had previously used the design mark with the consent

of AFW.

68. AFA did not contact AFW for permission. Even after it became

aware of AF-GA’s new design mark, AFW and its assignee AFA did not object to

AF-GA’s adoption of the “ANGEL FLIGHT” mark. They treated AF-GA as a

related company, 15 U.S.C. § 1055, or as licensee, because it performed the same

mission of providing free air transportation to medical patients and their families.

They similarly treated other “Angel Flight” organizations, such as Angel Flight

Oklahoma and Angel Flight East, as “sister organizations,” because they met the

same standards of providing free flights by volunteer pilots to patients and their

families. (Tr. 283:15 – 284:9; Tr. 253:11-22, 255:22 – 256: 7) Although quality

control standards were minimal, they were appropriate in light of the nature of the

services and the fact that all organizations were composed primarily of volunteers.

A trademark owner does not abandon its rights when it proceeds on the good faith

belief that the putative licensee would continue to operate under the same

standards and course of dealings that previously had governed the actions of the

parties. Hurricane Fence Company et al. v. A-1 Hurricane Fence Company, Inc. et

al., 468 F.Supp. 975, 988 (S.D. Ala. 1979)

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69. Only after AF-GA took a position adverse to the trademark owner that

its status as a related company or licensee terminated. The court declares that,

because of the incontestable status of United States Registration No. 1,491,541,

and the similar nature of the AF-GA mark (which has no geographic designation or

disclaimer), that AFA owns the rights to the “ANGEL FLIGHT” marks claimed by

AF-GA in the territory.

70. The use by AF-GA of a logo featuring the words “ANGEL FLIGHT,”

without a geographic designation or disclaimer is likely to cause confusion among

the public. Infringement occurs when the defendant’s use is likely to cause

confusion, or to cause mistake, or to deceive. 15 U.S.C. § 1114(1). AFA and its

licensees have an incontestable right to use the mark depicted in Registration No.

1,491,541 in interstate commerce. 15 U.S.C. § 1115(b). AF-GA thus is responsible

for any confusion that has occurred between its services and the services of any

other “ANGEL FLIGHT” entity in its region. AF-GA has committed trademark

infringement, unfair competition, and false advertising in violation of the Lanham

Act, as well as a violation of the Uniform Deceptive Trade Practices Act and

common law trademark infringement.

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71. The elements of fraudulent state registration are a submission of a

state registration knowing that someone has a prior or equal claim to the mark

within the state.

72. AF-GA’s registration in the state of Georgia of “ANGEL FLIGHT

and design” was obtained with knowledge of the federal registration owned by

AFW and after receipt of a specific admonition to request AFW’s permission prior

to adopting an “ANGEL FLIGHT” mark. The state registration was made despite

AF-GA’s awareness that AFSE actively provided services under the “ANGEL

FLIGHT” mark in the state of Georgia and was registered to do business there

under the “ANGEL FLIGHT” name.

73. A claim for cancellation of a Georgia trademark is analyzed under the

same standards as would apply to a federal trademark. Rolls-Royce Motors, 428

F.Supp. at 700-01.

74. Registration of the state service mark by AF-GA was intentional and

deceitful due to AF-GA’s failure to disclose to the state the existence of an

incontestable federal registration or of another organization in the state that used a

similar “ANGEL FLIGHT” mark (with the geographic designation

“SOUTHWEST”) and provided the same services.

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75. AF-GA’s state registration and logo using the words “ANGEL

FLIGHT” without a geographic designation or disclaimer are hereby cancelled.

RELIEF GRANTED TO DEFENDANTS

This Court sits as a court of equity in this matter and has broad latitude and

discretion in fashioning relief. SunAmerica, 77 F.3d 1325, 1334. Based upon the

Findings of Fact and Conclusions of Law set forth herein, judgment shall be

entered in favor of Angel Flight America and Angel Flight Southeast, Inc. and

against Angel Flight of Georgia, Inc., on all counts. Angel Flight of Georgia is

hereby permanently enjoined from using the term “ANGEL FLIGHT” in

connection with charitable aviation or fund-raising or outreach therefore except in

connection with the geographic designation, i.e. “GEORGIA” in all uses of the

mark.

LET JUDGMENT BE ENTERED ACCORDINGLY.

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