Sovereign Military Hospitaller Order of Saint John v. Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John
702 F.3d 1279
| 11th Cir. | 2012Background
- Plaintiff Order and The Florida Priory dispute ownership and use of marks and historical lineage amid competing narratives from pre-1798 histories and post-Napoleonic reorganizations.
- District court held a three-day bench trial (Feb. 28, 2011) and canceled four Plaintiff Order service marks for fraud in PTO applications.
- District court found Plaintiff Order knew of The Ecumenical Order's domestic presence by 1983 but failed to disclose it in the applications.
- Florida Priory began operating circa 1977, incorporated in Florida in 2005, and uses marks associated with its parent Ecumenical Order.
- The district court ruled against Plaintiff Order on Lanham Act infringement, false advertising, and FDUTPA, and in favor on the fraud claim related to the marks.
- This court sua sponte vacated, reversed in part, vacated in part, and remanded for proper analysis under the correct standards.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Fraud on the PTO validity | Order did not know of Ecumenical Order, so oath could not be false | Priory showed fraud by misrepresentation in application oath | Fraud finding reversed; marks cancelled for fraud vacated |
| Lanham Act infringement viability | Order's design mark confused with Priory’s mark | Marks were visually dissimilar; no likelihood of confusion | Remanded for proper multifactor analysis; word marks also remanded |
| False advertising based on history | Priory falsely claims historic affiliation with Order of Malta | Priory as interdenominational; histories shared pre-1798; not deceptive | Affirmed false advertising ruling insofar as district court’s alternative ground (non-Catholic status) defeats deception; harmless error for admissibility of some testimony |
| FDUTPA and state-law claims | State claims depend on Lanham Act findings | State claims are derivative of federal claims | Vacated and remanded with instruction to revisit under correct standards after redesignated multifactor analysis. |
Key Cases Cited
- Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200 (11th Cir. 2008) (fraud on PTO requires clear and convincing evidence; declarant’s subjective belief matters)
- In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) (fraud requires knowledge/intention to deceive; standard sensitive to context)
- Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 206 (Supreme Court 2011) (knowledge may be required to prove willful infringement; willful blindness)
- United States v. Khanani, 502 F.3d 1281 (11th Cir. 2007) (harmless evidentiary error standard for trial testimony)
- Johnson & Johnson Vision Care, Inc. v. 1-800 Contacts, Inc., 299 F.3d 1242 (11th Cir. 2002) (false advertising elements; consumer deception and material effect)
- Wesco Mfg., Inc. v. Tropical Attractions of Palm Beach, Inc., 833 F.2d 1484 (11th Cir. 1987) (multifactor analysis for likelihood of confusion; not solely visual similarity)
- Sun-Fun Prods., Inc. v. Suntan Research & Dev., Inc., 656 F.2d 186 (5th Cir. Unit B 1981) (emphasizes totality of circumstances in confusion analysis)
- Coach House Rest. v. Coach & Six Rests., 934 F.2d 1551 (11th Cir. 1991) (confirms seven-factor test; not all factors must be explicit)
- Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200 (11th Cir. 2008) (fraud on PTO claim requires clear and convincing proof; declarant’s belief governs fraud)