Intellectual Property Law Society

Angels Who Lost Their Wings

Federal Trademark Owner Loses to Local Organization

by Jeffrey R. Kuester

We have all seen small airplanes flying around, and I occasionally wonder if my law partner, Dan McClure, might be flying one of them.  Though he obtained his pilot’s license as a hobby, he surprised me a few years ago when he told me that he also donates time and money by flying patients and their families to distant hospitals for treatment.  Dan’s generosity was not the part that surprised me since we both are committed to regular giving to our churches and other organizations, but I was surprised that there existed an organization that would facilitate free flights for people with medical needs.  Dan called them “Angel Flights,” and as a trademark lawyer hearing that particular organizational name, I remember thinking that it was a good choice for a trademark.  As it turns out, Angel Flight is indeed a good trademark according to a recent court decision.

For those of us who litigate trademark, false advertising, and unfair competition disputes in state and federal courts, as well as those of us who obtain trademark registrations for our clients, much can be learned from Angel Flight of Georgia, Inc. v. Angel Flight America, Inc., 522 F.3d 1200 (11^th Cir. 2008).  In this case, a Georgia non-profit corporation successfully defended its common law right to use its trademark, Angel Flight, against a national organization that was armed with a federal trademark registration covering the same words.  The Georgia company (Angel Flight of Georgia, “AFGA”) demonstrated a likelihood of confusion resulting from the national organization (Angel Flight America, “AFA”) moving into Georgia in recent years.  In addition, AFGA also convinced the 11^th Circuit Court of Appeals to cancel AFA’s federal trademark registration, resulting in a complete victory for the local organization.

Volunteer pilots in Georgia began operating through AFGA in 1983 to provide free flights for patients and donated organs using the name Angel Flight.  When AFA began promoting its own activities in Georgia in 2001 under the same name, donors and news media began confusing the two organizations.  While the 11^th Circuit Court of Appeals found that the District Court for the Northern District of Georgia had improperly relied upon hearsay in establishing evidence of actual confusion, the Court of Appeals considered that evidence to be largely superfluous in the overall finding of infringement.  In essence, the other standard factors in the likelihood of confusion analysis clearly showed that there was common law trademark infringement, e.g., the marks, services, consumers, and advertising media were all identical, and AFA’s intent was also determined to be improper. 

One interesting insight from this case is found in the intersection between Georgia common law trademark infringement and federal trademark law.  While the federal trial and appellate courts in this case explicitly applied state common law, they looked instead to federal case law as persuasive authority in view of the “paucity of Georgia cases addressing common law trademark infringement,” citing similar reliance on federal case law by Georgia courts.  Consequently, litigation experience in federal trademark cases continues to be useful in determining Georgia common law trademark infringement.

In addition, those of us who obtain federal trademark registrations for our business clients should note from this case that AFA’s federal trademark registration was canceled because it was found to have been obtained through fraud.  In keeping with a recent trend by courts in canceling federal trademark registrations on the basis of fraud for a variety of different reasons, this court found that AFA committed fraud on the federal Trademark Office by not disclosing the existence of other legitimate users of the Angel Flight mark, such as AFGA.  Interestingly, this fraud finding was upheld even though AFA’s first use (outside Georgia) occurred before AFGA’s first use, making this another example of how a junior common law user may be able to cancel a senior user’s federal trademark registration.

While this case ultimately shows that common law rights can overcome a federal registration in some instances, it should be remembered that common law rights never extend beyond their geographic areas of use.  Consequently, while federal registrations are still useful in obtaining constructive nationwide protection if other uses have not yet begun, concurrent use federal registration applications should be used in other circumstances to avoid the risk of fraud since federal trademark registrations for concurrent use are typically limited by geography.

Furthermore, business law attorneys should also remember that the simple reservation of a corporate name through the Georgia Secretary of State's office never establishes trademark rights.  In addition, unlike federal trademark registrations, it is settled law that Georgia trademark registrations also do not provide evidence of ownership rights.  Consequently, enforceable trademark rights may be much more difficult to establish at trial without the benefit of a federal trademark registration.

In conclusion, it is unfortunate that these two worthwhile charitable organizations were unable to settle their territorial disagreements without resorting to our court system.  Of course, these types of flights are desperately needed by people throughout our country, so we should all support their efforts.  If you happen to be a pilot, please consider volunteering, and if you are not a pilot, please consider contributing.  AFGA can be found online at www.angelflightsoars.org. 

Jeffrey R. Kuester (jeff@tkhr.com) is a partner with Thomas | Kayden, a patent, trademark, and copyright law firm based in Atlanta.