[PUBLISH]
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT FILED
________________________ U.S. COURT OF APPEALS
ELEVENTH CIRCUIT
April 4, 2008
No. 07-11460
THOMAS K. KAHN
________________________
CLERK
D. C. Docket No. 03-03620-CV-JTC-1
ANGEL FLIGHT OF GEORGIA, INC.,
Plaintiff-Appellee,
versus
ANGEL FLIGHT AMERICA, INC.,
Intervenor-Defendant,
Appellant,
ANGEL FLIGHT SOUTHEAST, INC.,
Defendant-Appellant.
________________________
Appeal from the United States District Court
for the Northern District of Georgia
_________________________
(April 4, 2008)
Before ANDERSON, BLACK and HILL, Circuit Judges.
BLACK, Circuit Judge:
Since the early 1980s, private pilot organizations have operated throughout
the United States, arranging for volunteer pilots to transport needy patients and
donated organs to hospitals around the country. Historically, many of these
organizations have used the service mark “Angel Flight” to promote their services
and solicit donations.
In 2000, a number of private pilot organizations banded together to form a
national association known as Angel Flight America (AFA). The new association
divided the country into territorial zones, authorizing its members to operate in
designated geographical regions using the Angel Flight mark. For reasons that are
unclear, several longstanding Angel Flight organizations, including Angel Flight
Georgia (AFGA), did not become members of AFA. Nevertheless, these
organizations continued operating in their home territories using the Angel Flight
mark.
When AFA member Angel Flight Southeast (AFSE) established offices in
Georgia and began soliciting donations in areas where AFGA had traditionally
operated, AFGA sued AFA and AFSE for common law trademark infringement
and various related violations of state and federal law. AFA counterclaimed for
infringement of its United States Trademark No. 1,491,541 (the Angel Flight
mark) and other related claims.
2
Following a five-day bench trial, the district court found in favor of AFGA
on all claims and later issued a permanent injunction prohibiting 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 or promoting their services, or recruiting volunteers.
I. FACTS
A. History of Angel Flight
In 1982, Jack Welsh, a pilot living in California, formed an organization
called the American Medical Flight Support Team (AMFST). The organization
consisted of volunteer pilots who agreed to provide free transportation for donated
organs and medical patients to ensure the timely receipt of needed medical
services. Chapters of the new organization sprang up across the country. Many of
these chapters eventually adopted the name “Angel Flight” as their service mark.
Over time, the chapters lost their connection to the original organization, but they
continued their mission of providing free air transportation for medical services.
The organizations continued to use the Angel Flight mark.
In 1983, an AMFST chapter was formed in Georgia. It later took the name
Angel Flight of Georgia (AFGA). The organization was the first group east of the
Rocky Mountains to use the name Angel Flight and the first group to use the mark
3
in each of the six states in which it operates (Georgia, Alabama, South Carolina,
Mississippi, North Carolina, and Tennessee). AFGA used the Angel Flight mark
continuously from the 1980s onward.
In 1986, an AMFST chapter formed in Florida. This group later became
known as AFSE. The organization operated primarily within the state of Florida,
but made periodic handoffs in the AFGA territory. For several years during the
1990s, AFGA contracted with AFSE to coordinate AFGA’s flights; the
arrangement ended in 1999. At some point during the 1990s, AFSE and AFGA
considered merging, but failed to do so.
In 2000, a number of regional Angel Flight organizations came together to
form AFA. Although many regional Angel Flight organizations joined the
association, several did not. Among those was AFGA. Members of the newly-
formed organization divided the country into geographic regions, with each
accepting responsibility for a region.
Before joining AFA, AFSE served Florida patients and medical facilities,
transporting patients and organs into and out of the state of Florida. After joining
AFA, AFSE began operating in Florida, Georgia, Mississippi, Alabama, and South
Carolina. AFSE also began recruiting donors and promoting its services at trade
shows and to medical facilities within AFGA’s territory.
4
In 2001, AFGA became aware of AFSE’s plans to open an office in
Augusta, Georgia. On May 8, 2003, after AFGA allegedly learned donors and the
news media were confusing the two organizations, AFGA wrote to AFSE, asking
it to stop promoting its services under the Angel Flight mark in Georgia, Alabama,
South Carolina, Mississippi, North Carolina, and Tennessee. When AFSE refused
to do so, AFGA filed suit.
B. The Registered Mark
Sometime in the early 1980s, an AMSFT chapter in Las Vegas, Nevada,
developed a mark that combined the words “The Angel Flight” with a winged
caduceus. During the same period of time, a Los Angeles-based AMSFT chapter
(later known as Angel Flight West) began using the same mark, with permission
from the Las Vegas chapter. When the Las Vegas group later became defunct,
Angel Flight West continued to use the mark, which it modified slightly by
altering the design of the wings and adding a stylized type to the words “Angel
Flight.”
In 1987, after confirming the Las Vegas organization was no longer in
existence, Angel Flight West applied for registration of the modified mark. The
registration application was completed by Dennis Torres, then-president of Angel
Flight West. On the application, Torres listed a “first use” date of November 21,
5
1983. That date preceded the creation of the modified logo by more than three
years.
In the same trademark application, Torres represented that Angel Flight
West was the owner of the mark and, to the best of his knowledge and belief, no
other person, firm, corporation, or association had the right to use the mark in
commerce, either in an identical form or a near resemblance such as would be
likely to cause confusion or mistake or deceive. Despite this representation, at the
time the registration application was completed, other organizations were using
the name Angel Flight (or The Angel Flight) in connection with volunteer pilot
efforts in other states. Some of these groups were in contact with Angel Flight
West.
On June 7, 1988, the Patent and Trademark Office issued U.S. Trademark
No. 1,491,541 to Angel Flight West for the following combination of words and
symbols:
In May 2001, Angel Flight West assigned the registered mark to the newly-formed
AFA. In turn, AFA licensed the mark to its affiliated member organizations.
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C. Proceedings in the District Court
On November 23, 2003, AFGA filed suit against AFSE alleging AFSE had
engaged in false designation of origin and false advertising under the Lanham Act
and common law trademark infringement, unfair competition, deceptive trade
practices, and other related state law claims. When AFA intervened in the lawsuit
six months later, AFA and AFSE raised counterclaims mirroring those brought
against them by AFGA.
In July 2006, the district court conducted a five-day bench trial. Afterward,
the court issued a 95-page opinion, adopting with slight modification the facts and
legal conclusions propounded by AFGA. The district court ruled in AFGA’s favor
on all its claims, and against AFA and AFSE on each of their counterclaims. The
court determined Angel Flight West had committed fraud on the Patent and
Trademark Office by falsifying information on its application for trademark
registration, including the date of first use and its knowledge of others’ right to use
the mark in an identical or nearly identical fashion. Four months later, the court
entered a permanent injunction, enjoining defendant AFA and its members from
using the Angel Flight mark in Georgia, Alabama, Mississippi, Tennessee, North
Carolina, or South Carolina for the purpose of soliciting donations, advertising,
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promoting their services, or recruiting volunteers. At the same time, the court
cancelled U.S. Trademark No. 1,491,541.
II. DISCUSSION
AFA and AFSE raise four issues on appeal. They contend the district court
erred by (1) relying on hearsay testimony to find their use of the Angel Flight
mark in AFGA’s territory resulted in actual confusion, and thus constituted
infringement; (2) refusing to apply the doctrine of laches or acquiescence to bar
AFGA’s enforcement of its common law rights in the mark; (3) crafting an overly
broad, “draconian” injunction; and (4) cancelling United States Trademark No.
1,491,541 on the ground Angel Flight West procured it fraudulently.
A. Infringement
Following trial, the district court found AFGA was the senior user of the
Angel Flight mark in the relevant geographical region—a finding appellants do
not challenge on appeal. As the senior user of the mark, AFGA had the right to
use the mark in its territory and to enjoin others from doing so in a manner likely
to cause confusion. See Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508
F.3d. 641, 647 (11th Cir. 2007) (“[T]he touchstone of liability in a trademark
infringement action is not simply whether there is unauthorized use of a protected
mark, but whether such use is likely to cause consumer confusion.”); Jellibeans,
8
Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833, 839 (11th Cir. 1983) (noting test
for service mark infringement has “been expressed as whether or not the offending
mark is ‘likely to cause confusion’”).1
In its order following trial, the district court provided two reasons for
concluding AFA and AFSE had infringed AFGA’s common law rights. First, the
court found consumer confusion was likely given the manner in which AFSE used
the mark in the relevant territory. Second, the court found AFSE’s use of the mark
had resulted in the actual confusion of hospital employees and would-be donors on
more than 100 occasions.
AFA and AFSE object strongly to the evidentiary basis for the incidents of
“actual confusion” referred to in the district court order, contending it was
inadmissible hearsay. No confused donors or medical personnel testified at trial;
rather, two AFGA employees testified regarding the content of conversations they
1
In their arguments before the district court, the parties cited only federal cases when
discussing AFGA’s trademark claims and the equitable defenses AFA and AFSE raised to those
claims. They have done the same in this Court. However, it is clear from the complaint that
AFGA’s trademark infringement claim arose under state law, not federal law. Cpt. ¶ ¶ 41-42; see
also Dist. Ct. “Findings of Fact and Conclusions of Law” dated Nov. 20, 2006, at 3-4 (hereinafter
“Dist. Ct. Order”) (cataloging AFGA’s claims, including its claim of “common law trademark
infringement”). Georgia law therefore governs the trademark claims at issue on appeal.
Nevertheless, recognizing the paucity of Georgia cases addressing common law trademark
infringement, we look to federal law as persuasive authority, as Georgia courts themselves have
done on occasion. See Ackerman Sec. Sys., Inc. v. Design Sec. Sys., Inc., 201 Ga. App. 805, 807,
412 S.E.2d 588, 590 (Ga. Ct. App. 1991).
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allegedly had with would-be donors and medical personnel, in which the donors
reported misdirecting donations and the medical professionals reported problems
with medical transportation. In all cases, third parties allegedly confused AFGA
with AFSE, and vice-versa.
During trial, the district court received the evidence under Fed. R. Evid.
803(3), the hearsay exception permitting receipt of out of court statements for the
purpose of showing the declarant’s “confused” state of mind. In its opinion,
however, the district court recounted as fact the stories of actual confusion relayed
by AFGA’s employees. By finding the incidents described to the employees by
the out of court declarants had actually taken place, the court used the statements
as evidence of the truth of the matters asserted—a classic hearsay purpose. Fed.
R. Evid. 801(c).
What AFA and AFSE overlook, however, is that although the evidence of
actual confusion occupied a large portion of the district court opinion, it was
largely superfluous to the court’s ultimate finding of infringement. Again, it is
essential to remember infringement turns on whether a likelihood of confusion
exists. Jellibeans, Inc., 716 F.2d at 839. To determine whether it does, Georgia
courts examine many factors, including “the strength or distinctiveness of the
trademark at issue; similarity or overall impression created by the designs;
10
similarity of product; identity of retail outlets and purchasers; identity of
advertising media used; defendant’s intent; and actual confusion.” Ackerman Sec.
Sys., Inc. v. Design Sec. Sys., Inc., 201 Ga. App. 805, 806, 412 S.E.2d 588, 589
(Ga. Ct. App. 1991) (citing AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1538 (11th
Cir. 1986)). The best evidence, of course, is proof of actual confusion, but such
evidence is not essential to a common law infringement claim. Id.
To prove infringement, AFGA was not required to show consumers were
actually confused, but rather that consumer confusion was likely to result from the
manner in which AFSE used the mark in the relevant territory. Even if the
evidence of actual confusion were excluded, there remains ample evidence to
support the district court’s finding that confusion was likely. As the court
explained:
[T]he 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. 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.
Dist. Ct. Order at 64. In addition, the district court found appellants had
intentionally exploited the goodwill associated with AFGA’s mark by opening a
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new office in Atlanta during the course of litigation and had reached out to
established AFGA donors to insert itself into AFGA’s relationships with those
donors. Id. at 69. In short, AFGA, AFA and AFSE used the same mark in the
same territory directed to the same entities by the same means. The risk of
confusion was self-evident; therefore, the district court did not err by concluding
consumers were likely to be confused by the concurrent use of the Angel Flight
mark in the same territory by both AFSE and AFGA and that AFSE therefore
infringed AFGA’s common law trademark rights.
B. Laches and Acquiescence
When the district court has weighed the proper factors in determining
whether a defendant has proven the elements of a laches defense, we review the
district court’s decision for abuse of discretion. See AmBrit, Inc., 812 F.2d at
1545-46. The same standard applies to review of a decision regarding the defense
of acquiescence. Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d
1551, 1558 (11th Cir. 1991).
To prove the affirmative defense of laches under Georgia law, a defendant
must show it would be inequitable to allow the plaintiff to enforce his legal rights.
Whiten v. Murray, 267 Ga. App. 417, 422, 599 S.E.2d 346, 352 (Ga. Ct. App.
2004). “Whether laches should apply depends on a consideration of the particular
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circumstances, including the length of the delay in the claimant’s assertion of
rights, the sufficiency of the excuse for the delay, the loss of evidence on disputed
matters, [and] the opportunity for the claimant to have acted sooner. . . .” Id. In
the context of trademark infringement, a defendant invoking laches typically must
show the plaintiff inexcusably delayed in enforcing its trademark rights, thereby
causing the defendant undue prejudice. Citibank, N.A. v. Citibanc Group, Inc.,
724 F.2d 1540, 1546 (11th Cir. 1984).
The defense of acquiescence requires proof of three elements: (1) the
plaintiff actively represented it would not assert a right or claim; (2) the delay
between the active representation and assertion of the right or claim was not
excusable; and (3) the delay caused the defendant undue prejudice. Coach House
Rest., 934 F.2d at 1558. “The difference between acquiescence and laches is that
laches denotes passive consent and acquiescence denotes active consent.” Id.
Appellants argue strenuously the district court erred when it concluded they
had not “met their burden” of proving the affirmative defenses of laches and
acquiescence. They focus particularly on the court’s finding that AFGA did not
unreasonably delay before bringing its lawsuit, offering many reasons why they
believe their position was correct. They do not, however, provide any reason why
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this Court should find, as a matter of law, the district court abused its discretion by
crediting AFGA’s evidence rather than their own.
After hearing the evidence, the district court found AFSE’s use of the mark
had been limited within the territory until shortly after AFA was formed. The
court also found that before 2001 AFSE’s only use of the mark within the territory
related to flying patients and organs in and out of the area. After 2001, AFSE
opened branch offices in the territory and began soliciting donations and
promoting its services.
Under the doctrine of progressive encroachment, “delay is to be measured
from the time at which the plaintiff knows or should know she has a provable
claim for infringement.” Kason Indus., Inc. v. Component Hardware Group, Inc.,
120 F.3d 1199, 1206 (11th Cir. 1997); see also 6 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition § 31.19 (4th ed. 1997) (“The senior user
has no obligation to sue until the likelihood of confusion looms large. . . .”). The
district court found AFSE’s change of tack in 2001 justified the timing of AFGA’s
lawsuit. That finding was supported by the evidence and was not an abuse of
discretion.
Furthermore, even if AFA and AFSE had proven their affirmative defenses,
AFGA would still be entitled to a permanent injunction because the court found
14
that the concurrent use of the Angel Flight mark by AFSE and AFGA had caused
and would continue to cause confusion among members of the public. As the
district court explained:
Laches and acquiesence are inapplicable to the facts of this case
because the public is confused, and AFA and AFSE admit as much.
Laches or acquiesence 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 consumer.”
Id. at 77-78 (quoting 6 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 31.10 (4th ed. 1997)). “When inevitable confusion occurs in
the marketplace due to unrestricted dual use of a trademark, the paramount value
of the public interest demands some adjustment to the status quo,” even in cases
involving acquiesence. SunAmerica Corp. v. Sun Life Assur. Co. of Canada, 77
F.3d 1325, 1337 (11th Cir. 1996). See also Coach House Rest., 934 F.2d at 1564
(“[I]f there is an inevitability of confusion, [a] petitioner’s law suit may be revived
from estoppel”).
In this case, confusion was inevitable. Consequently, regardless whether
AFGA’s delay in bringing suit was excusable, the district court did not err in
rejecting appellants’ affirmative defenses as bars to injunctive relief.
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C. Permanent Injunction
Under traditional equitable principles, a plaintiff seeking a permanent
injunction must demonstrate (1) it has suffered an irreparable injury; (2) remedies
available at law, such as monetary damages, are inadequate to compensate for that
injury; (3) considering the balance of hardships between the plaintiff and
defendant, a remedy in equity is warranted; and (4) the public interest would not
be disserved by a permanent injunction. eBay Inc. v. MercExchange, L.L.C., 547
U.S. 388, 391, 126 S. Ct. 1837, 1839 (2006). After hearing argument and
receiving evidence from all parties, the district court made findings with respect to
each of these factors and issued an injunction prohibiting AFA and its members
(including AFSE) from using the Angel Flight mark in Georgia, Alabama,
Mississippi, Tennessee, North Carolina, and South Carolina for the purpose of
soliciting donations, advertising or promoting their services, or recruiting
volunteers. The injunction allows AFA and its members to continue using the
mark to identify planes flying into and out of these states and to continue their
promotional and recruitment efforts in other states.2
2
As an example, AFSE volunteers could use the mark while flying patients from Florida
to Georgia. However, AFSE volunteers could not display the mark on materials used to recruit
pilots or solicit donations in the State of Georgia.
16
We review the decision to grant an injunction and the scope of the
injunction for abuse of discretion. Fed. Election Comm’n v. Reform Party of the
United States, 479 F.3d 1302, 1306 (11th Cir. 2007) (grant or denial of
injunction); CBS Broad., Inc. v. EchoStar Commc’ns Corp., 450 F.3d 505, 517
n.25 (11th Cir. 2006) (scope of injunction).
AFA and AFSE challenge the district court’s determination that a
permanent injunction would not harm the public interest. They argue the public
interest at stake in this case is the interest in accessing free medical
transportation—an interest they contend is compromised by the terms of the
injunction. AFGA disagrees and points to a long line of trademark cases in which
this Court has explained the “public interest” relevant to the issuance of a
permanent injunction is the public’s interest in avoiding unnecessary confusion.
See, e.g., Davidoff & CIE, S.A. v. PLD Intern. Corp., 263 F.3d 1297, 1304 (11th
Cir. 2001) (“[T]he public interest is served by preventing consumer confusion in
the marketplace.”); SunAmerica Corp., 77 F.3d at 1334 (noting even in cases
involving acquiescence, “the public interest in preventing confusion around the
marketplace is paramount to any inequity caused the junior user” by issuance of
injunction); Coach House Rest., 934 F.2d at 1564 (“[P]ublic interest in preventing
confusion around the marketplace is paramount. . . .”).
17
Although AFA and AFSE concede avoiding confusion is a legitimate public
interest, they insist it cannot be the only public interest considered by the court
when deciding whether to issue an injunction. Appellants take the position that
because no litigant can win a trademark infringement lawsuit without proving it
likely that the public will be confused by similarities between the original and
infringing marks, the “public interest” in an injunction must be more than a mere
interest in avoiding confusion. Were that not the case, an injunction would issue
in every trademark action where infringement has been shown.
Appellants’ observation is not far off the mark. As this Court has stated
previously, in “ordinary trademark infringement actions . . . complete injunctions
against the infringing party are the order of the day.” SunAmerica Corp., 77 F.3d
at 1336. The reason is simple: the public deserves not to be led astray by the use
of inevitably confusing marks—even in cases in which more than one entity has a
legal right to use the mark. Id. at 1336-37.
Having found confusion was inevitable, the district court was entitled to
enjoin AFSE and AFA from uses of the mark that would continue to cause public
confusion. The court crafted an injunction that permitted AFSE and AFA to use
the mark in AFGA’s territory in the same manner AFSE had done prior to 2001.
Under the terms of the injunction, AFSE and AFA may use the mark in connection
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with flying patients into and out of the relevant territory. They are enjoined only
from soliciting funds and promoting their services within AFGA’s territory—the
actions that prompted AFGA’s decision to bring this lawsuit. We find no error in
the decision to issue the injunction or in the injunction’s scope.
D. United States Trademark Registration No. 1,491,541
In any action involving a registered mark, a court may order the cancellation
of the registration, in whole or in part, when such action is warranted. See 15
U.S.C. § 1119. One ground on which a party may petition to cancel a registered
service mark is that the registration was obtained fraudulently. 15 U.S.C.
§ 064(3). Fraud occurs when an applicant knowingly makes false, material
representations of fact in connection with an application for a registered mark.
Metro Traffic Control, Inc. v. Shadow Network Inc., 104 F.3d 336, 340 (Fed. Cir.
1997). The party seeking to cancel a mark bears the burden of proving the alleged
fraud by clear and convincing evidence. Citibank, 724 F.2d at 1544.
The district court cancelled AFA’s registered Angel Flight mark after
finding Angel Flight West (the original owner of the Angel Flight mark)
committed two acts of fraud when applying for registration. Specifically, the court
found Angel Flight West’s president, Dennis Torres, (1) intentionally provided an
incorrect first date of use for the registered mark; and (2) purposely failed to
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disclose use of the term “Angel Flight” by other organizations (such as AFGA and
AFSE) even though he was aware other groups were using the name and had a
right to do so. We review for clear error the district court’s finding that fraud was
committed. Id.
“A misstatement of the date of first use in the application is not fatal to the
securing of a valid registration as long as there has been valid use of the mark
prior to the filing date.” Car Subx Serv. Sys., Inc. v. Exxon Corp., 215 U.S.P.Q.
345, 351 (P.T.O. T.T.A.B. 1982); see also Pony Exp. Courier Corp. of America v.
Pony Exp. Delivery Serv., 872 F.2d 317, 319 (9th Cir. 1989). At trial Gary Davis,
a board member of Angel Flight West and the only witness to provide extensive
testimony at trial regarding Angel Flight West’s acquisition and modification of
the registered mark,3 testified AMFST-Las Vegas began using an early version of
the mark in or before 1983. Angel Flight West began using the same early version
of the mark soon thereafter. Although Angel Flight West did not modify the mark
to its current form until sometime shortly before it filed the registration application
in 1986 (making a first use date of 1983 a technical impossibility), it is clear from
3
Angel Flight West’s pro bono counsel, Billy Robbins, testified by deposition. His
testimony, however, was limited to confirming that he had filed the registration application on
behalf of Angel Flight West. Robbins denied knowledge of the history of Angel Flight West’s
use of the mark or knowledge of any other organizations’ use of the Angel Flight mark.
20
Davis’s testimony and documents admitted into evidence that Angel Flight West
began using the modified mark before it applied to register the mark.
The district court found Angel Flight West committed fraud by intentionally
providing an incorrect first date of use on its registration application. However,
because the uncontroverted testimony established Angel Flight West made valid
use of the mark prior to the date it filed its registration application, the improper
first use date contained in the application cannot be a basis for invalidating the
registration.
The more difficult question is whether sufficient evidence supports the
district court’s finding that Dennis Torres purposely failed to disclose on the
registration application other organizations’ use of the term “Angel Flight” even
though he was aware organizations throughout the country were using the name
and had a right to do so. Purposely failing to disclose other users’ rights to use the
same or similar marks may qualify as a material omission justifying cancellation of
a trademark. See L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 1352 (Fed. Cir.
1999) (suggesting proof of noninfringing, consequential use by others may
invalidate applicant’s claim when combined with proof of intent to deceive).
Therefore, if the evidence was sufficient to support the district court’s finding, the
mark was properly cancelled.
21
When applying to register the Angel Flight mark, Torres declared:
that he is President of applicant corporation and authorized to execute
this Declaration on behalf of said Corporation; he believes said
corporation is the owner of the mark sought to be registered; that to
the best of his knowledge and belief no other person, firm,
corporation, or association has the right to use said mark in
commerce, either in the identical form thereof or in such near
resemblance thereto as may be likely, when applied to the goods of
such other person, to cause confusion, or cause mistake, or to
deceive; that all statements made herein on information and belief are
believed to be true; and further that these statements were made with
the knowledge that willful false statements and the like so made are
punishable by fine or imprisonment or both . . . and that such willful
false statements may jeopardize the validity of the application or
document or any registration resulting therefrom.
To conclude Torres defrauded the Patent and Trademark Office by signing this
statement, the district court had to find Torres was aware other organizations were
using the Angel Flight mark (either in an identical form or a near resemblance)
and “knew or believed” those other organizations had a right to use the mark.
Because Torres himself did not testify at trial, the district court’s findings rest on
the testimony of Gary Davis.
Davis’s trial testimony revealed Angel Flight West was aware other
organizations were using names such as “The Angel Flight” at the time the
registration application was filed, but did not disclose that information to the
Patent and Trademark Office. It was possible for the trial court to infer the reason
22
Torres concealed this information was because he knew or believed the other
Angel Flight organizations had an equal right to use of the Angel Flight mark.
The district court ruled Angel Flight West committed fraud in connection
with its trademark application when Dennis Torres represented that, to “the best of
his knowledge and belief no other person, firm, corporation, or association ha[d]
the right to use” the Angel Flight mark. That ruling was not clearly erroneous;
consequently, the district court did not err by invalidating United States
Trademark Registration No. 1,491,541 on the basis of the alleged fraud.
III. CONCLUSION
We AFFIRM the district court’s ruling in its entirety. The district court did
not err in ruling (1) AFSE infringed AFGA’s common law trademark rights by
using the mark in a manner that created a substantial risk of confusion; and
(2) AFGA had not acquiesced to AFSE’s infringing use and was not estopped by
laches from enforcing its common law rights in the mark. Similarly, the injunction
entered by the district court, which was tailored to protect AFGA’s rights and
ensure the public would not be confused, was properly entered. Finally, the
district court did not clearly err by cancelling United States Trademark No.
1,491,541 on the ground the registration had been obtained through fraud.
AFFIRMED.
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