Eleventh Circuit affirms lower court decision in favor of Georgia group on use of ANGEL FLIGHT mark

The Eleventh Circuit Court of Appeals last week reaffirmed a lower court’s decision upholding a Georgia organization’s senior rights to use the mark “Angel Flight” in Georgia, Alabama, South Carolina, Mississippi, North Carolina, and Tennessee. The court also upheld the lower court’s decision to cancel a trademark registration for the mark “Angel Flight” on the basis that it was acquired through fraud. See Angel Flight of Georgia, Inc. v. Angel Flight Southeast, Inc. et al, Case No. 07-11460 (11th Cir. April 4, 2008).

The case involves the group of organizations that operate under the name “Angel Flight” A man named Jack Welsh formed an organization called the American Medical Flight Support Team (“AMSFT”) in 1982 made up of volunteer pilots willing to provide free transportation for donated organs and medical patients. AMSFT chapters soon after began forming in other regions of the country.

In 1983, the Las Vegas chapter of AMSFT began using a mark with the words "The Angel Flight" with a winged caduceus. With permission from the Las Vegas chapter, the Los Angeles chapter of AMSFT (later known as Angel Flight West) also began using the same mark. After the Las Vegas chapter went defunct, Angel Flight West continued to use the mark, which it later modified slightly by altering the design of the wings and adding a stylized type to the words “Angel Flight” (picture above).

In 1983, an AMFST chapter was formed in Georgia (later known as Angel Flight of Georgia (“AFGA”)) and became the first organization to use the Angel Flight name in Georgia, Alabama, South Carolina, Mississippi, North Carolina, and Tennessee. In 1986, an AMFST chapter was formed in Florida (later known as Angel Flight Southeast (“AFSE”)) and operated primarily in Florida.

In 1987, Angel Flight West applied for registration of its modified “Angel Flight” mark (see ANGEL FLIGHT (and design) for transportation of human patients, tissue and organs, principally by air) after confirming that the Las Vegas organization was no longer in existence. The date of first use in commerce was claimed as November 21, 1983 (three years prior to the date Angel Flight West had created its modified “Angel Flight” mark). Angel Flight West, through its President at the time, signed the typical declaration (i.e., 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) – even though Angel Flight West certainly knew that other organizations were using the name Angel Flight in connection with similar air transportation services for medical patients and organs. The mark went on to be registered on June 7, 1988.

In 2000, many, but not all, of the regional Angel Flight organizations came together to form a national association known as Angel Flight America (“AFA”) which then divided the country into territorial zones and authorizing its members to operate in its designated geographical regions. Both AFSE and Angel Flight West joined AFA, but AFGA did not.

In May 2001, Angel Flight West agreed to assign its registered mark to AFA, which in turn licensed the mark to its affiliated member organizations.

Before joining AFA, AFSE originally served Florida patients and medical facilities, transporting patients and organs into and out of Florida; however, after joining AFA, AFSE began operating in Florida, Georgia, Mississippi, Alabama, and South Carolina. More significantly, AFSE began recruiting donors and promoting its services at trade shows and to medical facilities within those states. Sometime in 2001, AFGA became aware of AFSE's plans to open an office in Augusta, Georgia.

After becoming aware that donors and news media were confusing the two, AFGA on May 8, 2003, wrote to AFSE demanding that it cease and desist from promoting its services under the Angel Flight mark in Georgia, Alabama, South Carolina, Mississippi, North Carolina, and Tennessee. When AFSE refused, AFGA, on November 23, 2003, filed a lawsuit in the U.S. District Court for the Northern District of Georgia against AFSE alleging false designation of origin, false advertising, common law trademark infringement, common law unfair competition, and deceptive trade practices and other related state law claims. AFA later intervened in the lawsuit, and the AFA and AFSE filed similar counterclaims against AFGA

In July 2006, the district court ruled in favor of AFGA’s claims and against AFA/AFSE’s counterclaims. The district court issued a permanent injunction enjoining AFA and any of 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, promoting their services, or recruiting volunteers. In addition, the court ordered that AFA’s trademark registration be cancelled on the grounds that Angel Flight West had committed fraud in obtaining the registration by falsifying information in the application, specifically the incorrect date of first use as well as the failure to disclose the rights of others to use the mark.

On appeal to the Eleventh Circuit Court of Appeals, AFA and AFSE tried to argue that the district court erred by relying on hearsay testimony to support a finding of actual confusion, refusing to apply the doctrine of laches or acquiescence against AFGA, crafting an overly broad injunction, and canceling AFA’s registered trademark.

Hearsay Evidence of Actual Confusion
The district court found that AFGA was the senior user of the Angel Flight mark in the geographic region at issue. Much of the court’s conclusion of infringement was based on the similar manner in which AFSE was using the mark and AFGA’s evidence of actual confusion.

The evidence of actual confusion consisted of two AFGA employees who testified regarding conversations they had with donors and medical personnel. The district court allowed 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; however, in its order, the district court recounted such stories as fact (i.e. used the out-of-court statements for the truth of the matters asserted, which is hearsay).

The court noted, however, that evidence of actual confusion was just one part of the court’s overall determination that a likelihood of confusion existed. Even if such evidence were excluded, the court found sufficient evidence to support the district court's finding that confusion was likely (identical mark, identical services, targeting the same consumers, identical advertising methods, and AFSE intent to exploit AFGA’s goodwill with its opening of an office in Georgia and contacting established AFGA donors). Thus, the court found no error in the district court’s determination of a likelihood of confusion with respect to AFGA’s common law trademark rights..

Laches and Acquiescence
With respect to AFA’s argument that the district court erred in finding that AFA and AFSE had not proven the affirmative defenses of laches and acquiescence, the court found no abuse of discretion by the district court, which ruled that AFGA did not unreasonably delay before bringing its lawsuit. Specifically, before 2001, AFSE’s use of the mark in AFGA’s territory was limited to flying patients and organs in and out of the area before; however, after 2001, AFSE opened a branch office in the territory and began soliciting donations and promoting its services.

The court stated:

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.

Slip op. at 14.

The court noted further than even if AFA and AFSE had proven their affirmative defenses, it would not have precluded the court from issuing a permanent injunction in order to prevent a likelihood of confusion. See 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 31.10 (4th ed. 1997); see also SunAmerica Corp. v. Sun Life Assur. Co. of Canada, 77 F.3d 1325, 1337 (11th Cir. 1996); Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1564 (11th Cir. 1991). As such, the district court did not err in rejecting AFA/AFSE affirmative defenses of laches and acquiescence as grounds for barring AFGA’s injunctive relief

Permanent Injunction
AFA/AFSE, in trying to argue that the district court erred in granting a permanent injunction, argued that the district court was wrong in deciding that an injunction would serve the public interest. AFA/AFSE argued that the public interest at stake was the “interest in accessing free medical transportation,” which could be harmed by the court’s injunction.

In response to the argument that avoiding confusion is a legitimate public interest for granting an injunction, AFA/AFSE tried to argue that confusion “cannot be the only public interest considered by the court when deciding whether to issue an injunction . . . 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.” Id. at *19-20. The court, however, notes that indeed in most trademark infringement actions, complete injunctions are imposed against the infringing party for the simple reason that “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 *20.

Because the district court found a likelihood of confusion, the court found that the district court did not err in issuing an injunction to stop AFA/AFSE from using the Angel Flight mark in a way that would cause confusion in violation of AFGA’s senior rights. To that end, the court noted that the district court carefully crafted the injunction to allow AFA/AFSE to continue to use the mark in a way that it had before opening the Atlanta office. The district court’s injunction only prohibited 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 does not prevent AFA and its members from using the mark to identify its planes flying into and out of these states and does not prevent them from promoting their services or recruiting volunteers in other states. The court found no error on the district court’s part with respect to issuing the injunction or its scope.

Cancellation of Trademark Registration on basis of Fraud
Finally, the court upheld the district court’s cancellation of AFA’s trademark registration.

The court noted:

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) [sic]. 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).

Slip op. at 19.

The district court found that Angel Flight West, the original applicant, committed two acts of fraud in obtaining its registration: intentionally providing an incorrect first date of use for the registered mark and intentionally failing to disclose known use of the mark by others

Regarding the first act of fraud, the court noted that “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.” Id. at 20 (quoting Car Subx Serv. Sys., Inc. v. Exxon Corp., 215 U.S.P.Q. 345, 351 (P.T.O. T.T.A.B. 1982) and citing Pony Exp. Courier Corp. of America v. Pony Exp. Delivery Serv., 872 F.2d 317, 319 (9th Cir. 1989)). In this case, because Angel Flight West did not modify the earlier version of the mark created by the Las Vegas AMFST chapter until 1986, it could not have used such mark in 1983; nonetheless, the court found that Angel Flight West was using the modified mark before it filed for federal registration, and therefore, “the improper first use date contained in the application cannot be a basis for invalidating the registration.” Id. at 21.

However, with respect to the Angel Flight West’s failure to disclose in its application the fact that other organizations were using the term “Angel Flight” despite knowledge of other organizations rightfully using the name, the court noted that “[p]urposely 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).” Id.

Given the evidence that Angel Flight West was aware of other organizations using the “Angel Flight” name for similar transportation services at the time the application was filed and yet failed to disclose such material information to the PTO, the district court’s ruling that Angel Flight West had committed fraud was not clearly erroneous, and thus the district court did not err in canceling the registration on the basis of fraud.

Afterthought
AFA also has a second registration for the word mark ANGEL FLIGHT for “Transportation of human patients, tissue and organs by air.” The first date of use in commerce is cited as November 21, 1983 (the same date as the registration cancelled above). In addition, the registration suffers the same flaw as the above application – it was filed in January 28, 2003, and yet includes the same kind of declaration by AFA that 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 used on or in connection with the goods/services of such other person, to cause confusion, or cause mistake, or to deceive. AFGA filed extensions of time to file an opposition back when the mark was published for opposition, but did not follow through. AFGA would appear to have the necessary ammunition should it desire to cancel this registered mark as well.

Yoko Ono seeks to cancel musician's registration of LENNON service mark

TMZ.com reports on the effort by Yoko Ono to stop heavy-metal artist Lennon Murphy from performing her music under the name Lennon.

Murphy obtained a registration for the mark LENNON (for musical sound and video recordings and for entertainment services in the nature of live musical performances and providing online performances and information) on January 21, 2003 (claiming first use in commerce back to June 1997).

Nearly five years later (not a coincidence) on January 18, 2008, Ono – wife of the late John Lennon and ardent protector of the musician’s estate (just ask Paul McCartney) – filed a petition to cancel Murphy’s registration. See Yoko Ono Lennon v. Lennon Murphy, Cancellation No. 92048785 (T.T.A.B.). A copy of the Ono’s petition for cancellation can be downloaded here.

The petition describes the fame of John Lennon’s name as follows [feel free to begin humming “Imagine” here]:

The distinctive artistic brilliance that has come to be associated with the Lennon name, likeness, image and trademarks is of inestimable value to his successor: it represents Lennon’s inimitable genius and extraordinary talent.

Nonetheless, in addition to the general fame associated with John Lennon’s name, Ono cites to two registrations for the mark JOHN LENNON (stylized) (see below) – one for eyeglasses and the other for tote bags and address/date books.

Ono seeks cancellation of Murphy’s registration on the grounds of likelihood of dilution and fraud.

Without stating too many facts, Ono alleges that Murphy has been using her mark LENNON in a way that is likely to cause dilution by blurring and/or dilution by tarnishment that impairs the distinctiveness of John’s Lennon’s famous name.

With respect to Ono’s fraud allegations, Ono claims that when Murphy originally filed her trademark application on April 11, 2001, she filed it as a Section 1(b) intent-to-use application and did not disclose in such application that the mark “Lennon” was actually her first name. When the PTO finally rejected her application on the grounds that is primarily merely a surname (§2(e)(4) rejection), Murphy requested reconsideration of her application on the grounds of acquired distinctiveness under §2(f). On July 3, 2002, Murphy filed an Amendment to Allege Use which converted her application to a use-in-commerce application based on use of the name LENNON for the preceding five years (back to June 1997). The Amendment included a declaration by Murphy that she had been using the LENNON mark for over five years, and thus it had become distinctive of the services for which she applied.

While the petition cites little evidence for its claims that Murphy’s declaration of use was untrue and bases its claims upon information and belief, a short footnote notes that Murphy would have been fifteen years old in 1997, which is supposed to raise some doubts about her declaration that she was using the mark in commerce since that time.

However, Murphy, through her MySpace page (link here), addresses this particular point about when she began using the name in commerce:

When I first started playing music at 14, I was known for the most part as "The Lennon Murphy Band". Not a name I was very fond of, no one could ever agree on anything so it made sense. A few months later some of the shows started being marketed using my full name as well as some that just using "Lennon." There was never really any consistancy but there was well enough to justify stating that "Lennon" had been used in fact since 1997.

As for the allegations of dilution, Murphy recounts events prior to the trademark application being filed where she claim permission was sought and received by Ono to use the name:

In 2000 Arista Records addressed the issue of Yoko Ono potentially having a problem with our use of the name. My product manager at Arista was ironically the son of the lawyer who actually represents Yoko. So he approached Yoko, to make her aware of the use, evidently giving her blessing as Arista proceeded forward with the album release and at the same time filing for the trademark. Its takes time for all of the legal work to go through, but finally in 2003 I was granted by the United States Patent & Trademark office the ownership in the name Lennon for musical use.

The timing of Ono’s petition is not surprising – filed just under the five year time period in which most petitions for cancellation must be filed under §14(1) of the Lanham Act (15 U.S.C. §1064(1)) – although it should be noted that there is no time limit for petitioning for cancellation of a registration when the basis is that the “registration was obtained fraudulently” (see §14(3) of the Lanham Act (15 U.S.C. §1064(3))).

Nonetheless, by filing the petition just under the wire, Ono is able to assert trademark dilution in addition to fraud (15 U.S.C. §1064 specifically includes dilution as an adequate grounds for cancellation). But if dilution of her famous husband’s name is Ono’s concern, this begs the question – why did Ono take so long to seek cancellation of Murphy’s registration?

If Murphy does not have evidence to support her claims of use going back to 1997, her registration may be in jeopardy given the strong stance that the TTAB has taken lately with respect to fraud on the PTO. See prior blog post here on trademarks at risk for being canceled on the basis of fraud.

However, assuming that Murphy has sufficient evidence to overcome the allegations of fraud, Ono’s trademark dilution claim will come down to whether Murphy’s mark is likely to dilute Lennon’s famous name through blurring (i.e., whether the association arising from the similarity between a mark or trade name and a famous mark impairs the distinctiveness of the famous mark – where distinctiveness refers to the ability of the famous mark uniquely to identify a single source and thus maintain its selling power).

Ono has a viable case that the Lennon name is famous and has become distinctive (especially in the world of music), Murphy is using a mark in commerce that is allegedly is diluting the famous Lennon mark, and there is a similarity between the marks that gives rise to an association. This leaves only the issue of whether that association is likely to impair the distinctiveness of the famous mark (I choose to focus on blurring only and disregard allegations of dilution by tarnishment because its seems highly unlikely that Murphy’s use of the name Lennon has caused any tarnishment).

The Trademark Dilution Revision Act of 2006, 15 U.S.C. §1125(c), sets forth six non-exclusive factors for courts to consider in determining whether a junior mark is likely to dilute a famous mark through blurring: (i) The degree of similarity between the mark or trade name and the famous mark; (ii) The degree of inherent or acquired distinctiveness of the famous mark; (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (iv) The degree of recognition of the famous mark; (v) Whether the user of the mark or trade name intended to create an association with the famous mark; (vi) Any actual association between the mark or trade name and the famous mark. See 15 U.S.C. §1125(c)(2)(B).

There is a strong similarity between John Lennon’s name and mark and Murphy’s registered mark. The famous mark’s distinctiveness is not inherent, but rather acquired through John Lennon’s fame. As for exclusive use, the PTO does show one company using the mark LENNON for meats as well as a registration for the name LENNON for vinyl wallpaper, which was cancelled on January 7, 2006 for failure to file its 10 year §8 Affidavit of Use. There may be evidence of others businesses using the name Lennon given that it is a fairly common surname. The degree of recognition of the name is likely to be high -- a large majority of the population is at least aware of who John Lennon is and his place in our country’s pop culture. The evidence suggests that Murphy did not intend on creating an association with John Lennon – it is her own name after all and quite frankly, I doubt the association with John Lennon, known more for his Beatles’ tunes and folk music, would even help an aspiring heavy metal rocker. Finally, while Ono may not have any current evidence of an actual association between the two, Ono’s attorneys can probably conduct some study that will show that the participants associated the artist Lennon with John Lennon.

While Murphy has apparently spoken with some lawyers who say Ono has no case, from the above analysis, I would not be so quick to discount the validity of Ono’s dilution claim.

However, Murphy’s best defenses may be laches and acquiescence. Under the equitable defense of laches, Murphy can argue that Ono’s delay in bringing this action was unreasonable and that Murphy would be unfairly hurt by cancellation. As for acquiescence, if indeed Ono’s permission was sought and expressly or impliedly granted, then Murphy can argue that Ono acquiesced to Murphy’s use of the name. While Murphy has the burden of proof in establishing these defenses, her initial evidence seems compelling enough.

I would “imagine” (pun intended) that Murphy will ultimately prevail – based on a combination of Ono’s delay (whether intentional or unintentional) and the fact that it’s not so clear cut that Murphy’s use of the name impairs the distinctiveness of the Lennon name as it relates to John Lennon. But as Murphy recognizes on her MySpace page, she now has to hire a lawyer to fight this out.

All I can say is Ono should give peace a chance (isn’t that what John would have wanted?)

[02/16/08 Update: Click here for my subsequent post on Yoko Ono's response to the media reports about the cancellation complaint.]