Order JMOL Dist CT

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
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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.)
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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).
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– 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
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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.
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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.)
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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.)
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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.)
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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.)
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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.)
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“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.)
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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.)
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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.)
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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.)
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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.
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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.)
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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.)
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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.)
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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.
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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.)
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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.
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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 –
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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.)
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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).
-55-
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.
-82-
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
-83-
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.
-84-
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.
-85-
§ 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.
-86-
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.
-88-
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).
-89-
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
-90-
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”).
-91-
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,
-92-
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.
-93-
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.
-94-
joined as parties to this matter, they could not demonstrate priority of use of
the ANGEL FLIGHT mark in Mississippi, North Carolina or Tennessee.
-95-

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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF GEORGIA

ANGEL FLIGHT OF GEORGIA,

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

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

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

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

FLIGHT designation to provide services. AFGA and AFSE once worked

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

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,

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

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

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

After AFGA's informal attempts to resolve the conflict were

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

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

Court, are appended to this Order.

(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. §

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

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.

counterclaims against Plaintiff AFGA: (1) trademark infringement in

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

parties are encouraged to confer and jointly submit a proposed injunction

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

submissions or schedule an injunction hearing.

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.

ANGEL FLIGHT OF GEORGIA,

v. CIVIL CASE NO.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

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