Eleventh Circuit applies doctrine of inevitable confusion
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In Angel Flight of Georgia Inc v Angel Flight America Inc (Case 07-11460, April 4 2008), the US Court of Appeals for the Eleventh Circuit has held that the district court did not err in ruling that Angel Flight Southeast Inc infringed Angel Flight of Georgia Inc’s common law trademark rights by using the mark ANGEL FLIGHT in a manner that created a substantial risk of confusion. The case involved the doctrine of inevitable confusion and the issue of fraud in obtaining a trademark registration.
Angel Flight America (AFA), founded in 2000, is a national organization of volunteer pilots dedicated to transporting needy patients and donated organs to hospitals around the United States. The organization authorized its members to operate in designated geographical areas using the ANGEL FLIGHT service marks. For reasons that are unclear, Angel Flight of Georgia did not become a member of AFA. When Angel Flight Southeast, a member of AFA, opened offices and began soliciting donations in Angel Flight of Georgia’s operating area, Angel Flight of Georgia sued Angel Flight Southeast for common law trademark infringement and other related violations of state and federal law. Six months later, AFA intervened in the lawsuit. AFA and Angel Flight Southeast raised counterclaims mirroring the claims brought by Angel Flight of Georgia against them.
Following a five-day bench trial in July 2006, the district court issued a verdict in favour of Angel Flight of Georgia on all claims and against AFA and Angel Flight Southeast on their counterclaims. Four months later, the district court entered a permanent injunction enjoining AFA and its members from using the ANGEL FLIGHT mark in Georgia, Alabama, Mississippi, Tennessee, North Carolina and South Carolina for the “purpose of soliciting donations, advertising, promoting their services or recruiting volunteers.” AFA and Angel Flight Southeast appealed.
AFA and Angel Flight Southeast raised the following four issues:
- The district court erred in relying on hearsay testimony to find that AFA's and Angel Flight Southeast's use of the mark in Angel Flight of Georgia’s territory resulted in actual confusion and therefore constituted infringement;
- The district court did not apply the doctrine of laches or acquiescence to bar Angel Flight of Georgia’s enforcement of its common law rights in the mark;
- The district court entered an overly broad, "draconian" injunction; and
- The district court erred in cancelling the federally registered ANGEL FLIGHT mark (Registration 1,491,541), which is owned by AFA, on the basis of fraud.
The Eleventh Circuit rejected all of these arguments. Specifically, the court found that even if evidence of actual confusion were excluded, ample evidence remained to substantiate the district court’s finding that confusion was likely, especially since AFA and Angel Flight Southeast used the "same mark in the same territory, directed to the same entities by the same means". The court further reasoned that because there was an inevitability of confusion, AFA's and Angel Flight Southeast's affirmative defence of laches was not applicable and thus did not bar injunctive relief.
Finally, the Eleventh Circuit held that the district court had not erred in holding that AFA committed fraud on the US Patent and Trademark Office by falsely stating in an affidavit that no other organization had the right to use the mark, while knowing that others were in fact using it. Therefore, the district court had not clearly erred in cancelling the trademark ANGEL FLIGHT on the grounds that the registration had been obtained through fraud.
Irina R Kushner, McDermott Will & Emery LLP, Washington
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