Filed: Dec. 18, 2012
Latest Update: Mar. 26, 2017
Summary: [PUBLISH] IN THE UNITED STATES COURT OF APPEALS FOR THE ELEVENTH CIRCUIT _ No. 11-15101 _ D.C. Docket No. 9:09-cv-81008-KLR SOVEREIGN MILITARY HOSPITALLER ORDER OF SAINT JOHN OF JERUSALEM OF RHODES AND OF MALTA, llllllllllllllllllllllllllllllllllllllllPlaintiff - Counter llllllllllllllllllllllllllllllllllllllllDefendant - Appellant, versus THE FLORIDA PRIORY OF THE KNIGHTS HOSPITALLERS OF THE SOVEREIGN ORDER OF SAINT JOHN OF JERUSALEM, KNIGHTS OF MALTA, THE ECUMENICAL ORDER, llllllllllllllllllll
Summary: [PUBLISH] IN THE UNITED STATES COURT OF APPEALS FOR THE ELEVENTH CIRCUIT _ No. 11-15101 _ D.C. Docket No. 9:09-cv-81008-KLR SOVEREIGN MILITARY HOSPITALLER ORDER OF SAINT JOHN OF JERUSALEM OF RHODES AND OF MALTA, llllllllllllllllllllllllllllllllllllllllPlaintiff - Counter llllllllllllllllllllllllllllllllllllllllDefendant - Appellant, versus THE FLORIDA PRIORY OF THE KNIGHTS HOSPITALLERS OF THE SOVEREIGN ORDER OF SAINT JOHN OF JERUSALEM, KNIGHTS OF MALTA, THE ECUMENICAL ORDER, lllllllllllllllllllll..
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[PUBLISH]
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT
________________________
No. 11-15101
________________________
D.C. Docket No. 9:09-cv-81008-KLR
SOVEREIGN MILITARY HOSPITALLER ORDER OF
SAINT JOHN OF JERUSALEM OF RHODES AND OF MALTA,
llllllllllllllllllllllllllllllllllllllllPlaintiff - Counter
llllllllllllllllllllllllllllllllllllllllDefendant - Appellant,
versus
THE FLORIDA PRIORY OF THE KNIGHTS HOSPITALLERS OF THE
SOVEREIGN ORDER OF SAINT JOHN OF JERUSALEM, KNIGHTS
OF MALTA, THE ECUMENICAL ORDER,
llllllllllllllllllllllllllllllllllllllllDefendant - Counter
llllllllllllllllllllllllllllllllllllllllClaimant - Appellee.
________________________
Appeal from the United States District Court
for the Southern District of Florida
________________________
(December 18, 2012)
Before WILSON, PRYOR, and MARTIN, Circuit Judges.
WILSON, Circuit Judge:
We sua sponte vacate and reconsider our original opinion in this matter. We
substitute the following opinion for our original opinion.
Plaintiff-Appellant Sovereign Military Hospitaller Order of Saint John of
Jerusalem of Rhodes and of Malta (Plaintiff Order) is a religious order of the
Roman Catholic Church that undertakes charitable work internationally.
Defendant-Appellee The Florida Priory of the Knights Hospitallers of the
Sovereign Order of Saint John of Jerusalem, Knights of Malta, The Ecumenical
Order (The Florida Priory) is also a charitable organization, having an expressly
ecumenical, rather than Catholic, association. Although The Florida Priory
incorporated in Florida in 2005, it is associated with a parent organization, Knights
Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta,
the Ecumenical Order (The Ecumenical Order), which was first incorporated in the
United States in 1911. The Ecumenical Order is not associated with the Catholic
Church, although approximately sixty percent of its members are Catholic.
Plaintiff Order filed suit against The Florida Priory in July of 2009 asserting
infringement and false advertising claims under the Lanham Act, 15 U.S.C. § 1051
et seq., as well as state law claims for unfair competition and violation of the
Florida Deceptive and Unfair Trade Practices Act (FDUTPA), Fla. Stat. § 501.201
2
et seq. The infringement claims were based on The Florida Priory’s alleged use of
marks that are confusingly similar to those for which Plaintiff Order has obtained
federal registrations. In the false advertising claim, Plaintiff Order charged that
The Florida Priory (through its parent) falsely claimed a historic affiliation with
Plaintiff Order going back to the eleventh century. The state law claims derive
from these same allegations. The Florida Priory counterclaimed, alleging that
Plaintiff Order committed fraud on the United States Patent and Trademark Office
(PTO) in applying for its service marks due to Plaintiff Order’s failure to disclose
its knowledge of the domestic presence of other organizations that used similar
marks in commerce.
The district court ruled in favor of The Florida Priory on all counts of
Plaintiff Order’s complaint and The Florida Priory’s counterclaim. This appeal
followed, and after thorough consideration, we affirm in part, reverse in part, and
vacate in part the judgment below and remand for further proceedings.
I. Facts and Procedural History
Starting on February 28, 2011, the district court held a three-day bench trial
on the claims and counterclaims asserted by the parties. The vast majority of
testimony related to the histories of the organizations involved, including The
Ecumenical Order. Because of the fact-intensive nature of this case, we
3
summarize the trial proceedings and the resulting findings of fact and conclusions
of law by the district court, which were reported in a published opinion. See
Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of
Malta v. The Fla. Priory of Knights Hospitallers of the Sovereign Order of St. John
of Jerusalem, Knights of Malta, The Ecumenical Order, 816 F. Supp. 2d 1290
(S.D. Fla. 2011).
A. Plaintiff Order’s History and Service Mark Registrations
1. Trial Testimony Regarding History
As part of its case, Plaintiff Order presented the testimony of Geoffrey
Gamble, a representative of Plaintiff Order, and Dr. Theresa Vann, an expert
historian, to trace the history of Plaintiff Order from its founding to present.
According to these witnesses, Plaintiff Order was founded in Jerusalem in the
eleventh century. (D.E. 144, 37:11–12.) It relocated to the City of Acre and later
to the island of Rhodes, where it was known as the Knights of Rhodes. (Id. at
37:12–16.) After spending about two hundred years on the island of Rhodes, the
group located in Malta (becoming the Order of Malta), which had been ceded for
the Order’s use by Emperor Charles V. (Id. at 37:16–18.) Organizationally,
multiple priories—a term which Gamble explained references canonical religious
4
bodies where people are housed, (id. at 48:25–49:1)—existed across Europe. 1 At
some point there existed priories in Poland, Bavaria, and England, though the
Polish priory had been lost when Poland was partitioned. (D.E. 145,110:12–18.)
Around 1797 or 1798, the Order of Malta was suffering financial hardship
and sought monetary support from Czar Paul I of Russia. (Id. at 108:20–109:3.)
Two knights went to Russia seeking to obtain the property of the former Polish
priory, and out of this visit came an agreement to create a Catholic-affiliated
Russian priory. (Id. at 110:25–111:9.)
In 1798, Napoleon expelled the Order of Malta and its knights from the
island of Malta, and the organization relocated to present-day Italy. (D.E. 144,
37:17–19; D.E. 145, 111:13–25.)2 The Order of Malta’s Grand Master at the time,
Ferdinand von Hompesch zu Bolheim, wrote to Czar Paul I for support after this
expulsion. (D.E. 145, 111:12–18.) Czar Paul I, in response to the request for
assistance and “for reasons best known to himself,” created a non-Catholic order
for the non-Catholic members of his court. (Id. at 112:6–10.) What happened
next forms the crux of both parties’ historical arguments. Plaintiff Order contends
1
Depending on the size, these bodies could be classified as sub-priories, priories, or a
grand priory. (D.E. 114, 49:6–10.)
2
Dr. Vann testified that many of the Knights of Malta returned to their homeland, but she
was unsure of how many (if any) specifically fled to Russia. (D.E. 145, 112:1–4.)
5
that the Czar illegitimately declared himself Grand Master 3 of the entire Order,
commencing a short-lived usurpation that ended with his assassination in 1801.
(Id. at 112:8–21.) The Czar’s heir, Alexander I, took no interest in the Order’s
work.
In the early 1800s, the two Russian priories, along with the other European
priories, elected Giovanni Battista Tomassi as Grand Master. (Id. at 118:16–19.)
Eventually, Czar Alexander I stripped both Russian priories of their land. (Id. at
115:6–8, 116:15–22.)
Grand Master Tomassi served for only several years, and the next Grand
Master was not confirmed by the Pope until 1879. (Id. at 123:3–7.) The title of
Grand Master was in abeyance for that period because of the warfare in Europe
and, importantly, because Plaintiff Order was without land, a headquarters, or
revenue. (Id. at 121:16–122:16.) Plaintiff Order utilized that interim period to
redefine its responsibilities and focus on its hospitaller, rather than its military,
activities. (Id. at 119:24–120:5, 122:18–23.) Likewise, over the past century,
Plaintiff Order has served to provide hospital accommodations and serve as a
religious order of the Catholic Church. (Id. at 124:3–6.) It is currently
headquartered in Rome. (Id.)
3
Gamble and Dr. Vann testified that this was a de facto title, since Czar Paul I did not
meet any of the requirements to be Grand Master. (D.E. 145, 112:20–113:7.)
6
Plaintiff Order began operating in the United States in 1926 or 1927 when it
established the American Association in New York. (D.E. 144, 90:11–12.) Later,
Plaintiff Order established the Western Association, based in San Francisco, and
the Federal Association, based in Washington, D.C. (Id. at 106:7–9, 107:8–10.)
There are about three thousand Knights and Dames of Plaintiff Order within the
United States. (Id. at 190:23.)
2. Service Mark Registrations
Plaintiff Order has obtained the following registrations for its service marks:
Registration No. Mark First Use in Registration
Commerce Date Date
2,799,898 12/31/1926 12/30/2003
2,783,933 SOVEREIGN 12/31/1926 11/18/2003
MILITARY
HOSPITALLER
ORDER OF ST.
JOHN OF
JERUSALEM OF
RHODES AND
OF MALTA
2,783,934 KNIGHTS OF 12/31/1926 11/18/2003
MALTA
2,915,824 HOSPITALLERS 4/28/1927 1/4/2005
OF ST. JOHN OF
JERUSALEM
7
3,056,803 ORDER OF ST. 4/28/1927 2/7/2006
JOHN OF
JERUSALEM
The applications for these service marks were executed by Dean Francis Pace, a
member of Plaintiff Order. He attested on each application that he was authorized
to execute the application, that he believed Plaintiff Order to be the owner of the
specific mark, that he believed Plaintiff Order was entitled to use the mark in
commerce, and that to the best of his knowledge no other entity had the right to use
a similar mark. (D.E. 127-2, 69, 86–87.) After some back and forth with the
PTO, 4 Plaintiff Order’s marks were registered.
B. The Florida Priory’s History and Relevant Service Mark
Registrations
1. Trial Testimony Regarding History
The Florida Priory’s account of history mirrors Plaintiff Order’s up until
1798. The Florida Priory disputes Plaintiff Order’s characterization of Czar Paul I
as a de facto Grand Master. Instead, The Florida Priory argued that the Czar
became a de jure Grand Master, establishing a continuous interdenominational
Order that persisted all the way to the point where Grand Duke Alexander of
4
The examining attorney of the PTO found a collective membership mark previously
registered by an affiliate of The Ecumenical Order. (D.E. 127-2, 76–77.) Plaintiff Order was
able to distinguish that mark and successfully register its service marks.
8
Russia accepted the title of Grand Master in 1913 at the Waldorf-Astoria Hotel in
New York City. (D.E. 146, 25:3–16, 33:6–12); (D.E. 25-11, 16). It was not, of
course, the district court’s obligation to rule on the legitimacy of Czar Paul I’s title,
in much the same way that no Article III court could be asked to rule on the
propriety of King Henry VIII’s declaration of independence from the Vatican. See
Act of Supremacy, 1534, 26 Hen. VIII, c. 1 (Eng.).
In January of 1911, The Ecumenical Order incorporated in New Jersey
under the name “The Knights of Malta, Inc.” (the New Jersey Corporation). 5 (D.E.
25-1, Exh. 2; D.E. 146, 40:2–9.) A companion and successor organization to the
New Jersey Corporation was formed in Delaware in August of 1956 under the
name “Sovereign Order of Saint John of Jerusalem, Inc.” (the Delaware
Corporation). (D.E. 25-1, Exh. 3; D.E. 146, 37:7–10; 75:17–25.) The late 1970s
brought turmoil to the group, and in 1981, The Ecumenical Order severed ties with
the leadership of the Delaware Corporation. (D.E. 146, 47:16–51:25.) The
Ecumenical Order raises funds and undertakes charitable activities notwithstanding
its present unincorporated status. Approximately sixty percent of The Ecumenical
Order’s members are Catholic. (D.E. 145, 24:22–23.)
The Florida Priory began operating as early as 1977. (D.E. 146, 7:1, 47:22–
5
This corporation was administratively dissolved in 1989.
9
48:3.) The Florida Priory has used the marks of its parent, The Ecumenical Order,
since its founding. In 2005, The Florida Priory incorporated in Florida, (id. at 7:9),
and its principal place of business is located in West Palm Beach.
2. Service Mark Registrations
In 1958, The Ecumenical Order (acting through the Delaware Corporation)
obtained Registration No. 659,477, “SOVEREIGN ORDER OF SAINT JOHN OF
JERUSALEM KNIGHTS OF MALTA,” as a collective membership mark, which
indicates membership in an organization. This registration reflects that the
collective membership mark was first used in commerce in January 1911. This
registration remains active today. 6
C. Purported Communications Between The Ecumenical Order
and Plaintiff Order
The Florida Priory submitted three specific instances of communication
among members of Plaintiff Order and The Ecumenical Order.7 First, in
6
Although two of Plaintiff Order’s American groups petitioned to cancel this collective
membership mark in the 1980s, that petition was dismissed with prejudice upon its withdrawal
by the petitioning parties. (D.E. 25-3, Exh. 8.)
7
These three correspondences are in the record in support of The Florida Priory’s motion
for summary judgment on Plaintiff Order’s claims. The district court relied on them largely to
support The Florida Priory’s claim of fraud on the PTO. Some of these documents—particularly
the letter from Guy Stair Sainty—are simply printouts from the Internet and, therefore, of
questionable veracity. Nevertheless, we include them in the recitation of facts because, even if
we consider them to be accurate depictions of the truth, they are insufficient to sustain a claim of
fraud on the PTO, as discussed later.
10
November 1983, Grand Chancellor Thorbjorn Wiklund of The Ecumenical Order
sent a letter on the organization’s letterhead to Plaintiff Order’s Rome
headquarters. (D.E. 25-3, Exh. 7.) Through this letter, Wiklund alerted Plaintiff
Order to a trademark dispute involving a corporation that registered a similar name
in October 1979. (Id.) The letter requested assistance from Plaintiff Order in
helping to stop the activities of the newly registered organization. (Id.)
Second, in April 2000, Guy Stair Sainty, a current member of Plaintiff
Order, appears to have sent a letter to a member of The Ecumenical Order named
Rick Joyner. (D.E. 26-1, 6–8.) Stair Sainty is presently a member of Plaintiff
Order and serves on its committee on false orders. He is also the author of “The
Self-Styled Orders of Saint John,” a publication in which he mentions the existence
of The Ecumenical Order. (Id.) Joyner, an author himself, has previously written
Courage that Changed the World: The Extraordinary History of the Knights of St.
John, which promotes The Ecumenical Order and its history. (Id. at 1–6.) Stair
Sainty’s letter, sent after he came across Joyner’s book, informed Joyner that The
Ecumenical Order is a modern-day invention with no connection to the eleventh
century order (of which the only legitimate successor is Plaintiff Order). (Id. at 7.)
Stair Sainty also included with the letter a copy of his publication in hopes of
correcting Joyner’s perception of history. (Id.) At the time the letter was sent in
11
2000, Stair Sainty was not a member of Plaintiff Order. (D.E. 144, 208:8–14; D.E.
146, 152:12–15.)
In July 2000, Chancellor Prince Boudewijn de Merode, a member of
Plaintiff Order, wrote a letter to Joseph Frendo Cumbo, former Prince Grand
Master of The Ecumenical Order. (D.E. 25-7, Exh. 13.) Cumbo was
Papanicolaou’s predecessor and, in the letter, it was apparently acknowledged that
The Ecumenical Order could dub knights. (Id.)8
D. The District Court’s Ruling
1. Findings of Fact
The district court’s findings of fact recounted the histories of Plaintiff Order,
The Ecumenical Order, and The Florida Priory. Most significant for this appeal,
the district court found that up until 1798, Plaintiff Order and The Ecumenical
Order shared a history through a common predecessor. Sovereign Military
Hospitaller, 816 F. Supp. 2d at 1293–94 & n.1. Upon Napoleon’s invasion of
Malta, the knights scattered, and some of them ended up in Russia. Id. at 1293.
There, both a Catholic order and a non-Catholic order were established, and this is
where the groups diverge. Id. at 1294. The Catholic Order in Russia is the
8
The original letter is written in Dutch, and following its entry in the record is an
unverified translation of its contents. Again, we assume this is an accurate translation because,
accepting it as true, it still does not help to establish The Florida Priory’s claim of fraud.
12
predecessor to Plaintiff Order, and the non-Catholic order is the predecessor to The
Ecumenical Order (and, in turn, The Florida Priory). Id.
2. Conclusions of Law
The district court first examined The Florida Priory’s claim of fraud on the
PTO. The district court canceled four of Plaintiff Order’s service mark
registrations 9 based on its finding that Plaintiff Order committed fraud in executing
the oath that accompanies the federal registration applications. Sovereign Military
Hospitaller, 816 F. Supp. 2d at 1299–1300. Specifically, the district court found
that Plaintiff Order was aware of the domestic presence of The Ecumenical Order
since as early as 1983 but failed to disclose that fact in its applications. Id. at 1300.
Next, the district court considered the Lanham Act claims, beginning with
the infringement allegation. Because four marks had been canceled for fraud, this
required only an examination of Plaintiff Order’s design mark, Registration No.
2,799,898. The district court found that Plaintiff Order’s registered mark was
visually dissimilar from The Florida Priory’s mark and, therefore, ruled there was
no likelihood of confusion between the two. Id. at 1301. Regarding the false
advertising claim, the district court decided that The Florida Priory could not be
9
These marks were Registration Nos. 2,783,933 (“SOVEREIGN MILITARY
HOSPITALLER ORDER OF ST. JOHN OF JERUSALEM OF RHODES AND OF MALTA”);
2,783,934 (“KNIGHTS OF MALTA”); 2,915,824 (“HOSPITALLERS OF ST. JOHN OF
JERUSALEM”); and 3,056,803 (“ORDER OF ST. JOHN OF JERUSALEM”).
13
held liable for false statements based on two reasons: (1) because it did, in fact,
share a pre-1798 history with Plaintiff Order; and (2) because “the Florida Priory
expressly associates itself with the Ecumenical Order, a non-Catholic
organization.” Id. at 1301–02.
On the state law claims, the district court evaluated the unfair competition
claims with regard to the marks it had canceled and found no likelihood of
confusion. Id. at 1302. Because it found no likelihood of confusion between either
of the parties’ marks and no merit to the false advertising claim, the district court
denied Plaintiff Order’s FDUTPA claim. Id. at 1303.
II. Standard of Review
“After a bench trial, we review the district court’s conclusions of law de
novo and the district court’s factual findings for clear error.” Proudfoot Consulting
Co. v. Gordon, 576 F.3d 1223, 1230 (11th Cir. 2009). Specifically, we review for
clear error the district court’s findings that a mark was procured by fraud, Citibank,
N.A. v. Citibanc Grp., Inc.,
724 F.2d 1540, 1544 (11th Cir. 1984), and that two
marks are not likely to be confused, Dieter v. B & H Indus. of Sw. Fla., Inc.,
880
F.2d 322, 325 & n.2 (11th Cir. 1989). In the context of a false advertising claim,
we similarly review for clear error the district court’s conclusion that a statement is
not false. Osmose, Inc. v. Viance, LLC,
612 F.3d 1298, 1309 (11th Cir. 2010).
14
III. Discussion
Plaintiff Order raises multiple issues on appeal. First, it contests the
cancellation of four registered service marks, which the district court found were
procured by fraud. Plaintiff Order also contends that the district court committed
reversible error in evaluating the merits of its Lanham Act infringement and false
advertising claims, as well as its state law claims. We address each in turn.
A. Fraud on the PTO
At any time, a party may petition to cancel a registered mark on the ground
that the registration was procured by fraud, even if that mark has become
incontestable. 15 U.S.C. §§ 1064(3), 1119. An applicant commits fraud when he
“knowingly makes false, material representations of fact in connection with an
application for a registered mark.” Angel Flight of Ga., Inc. v. Angel Flight Am.,
Inc., 522 F.3d 1200, 1209 (11th Cir. 2008). Fraud further requires a purpose or
intent to deceive the PTO in the application for the mark. In re Bose Corp.,
580
F.3d 1240, 1243, 1245 (Fed. Cir. 2009); see also Angel Flight, 522 F.3d at 1210–
11 (affirming cancellation on the basis of the applicant’s purposeful failure to
disclose a superior user of the mark). The party seeking cancellation on the basis
of fraud must prove its claim by clear and convincing evidence. Angel Flight, 522
F.3d at 1209. This is necessarily a heavy burden, and “any doubt must be resolved
15
against the charging party.” Bose, 580 F.3d at 1243.
The district court found that Plaintiff Order committed fraud on the PTO
through execution of the oath that accompanies a service mark application, which
requires the applicant’s representative—in this case Dean Francis Pace—to attest
to the following:
The undersigned, being hereby warned that willful false statements and the
like so made are punishable by fine or imprisonment, or both, under 18
U.S.C. § 1001, and that such willful false statements may jeopardize the
validity of the application or any resulting registration, declares that he/she
is properly authorized to execute this application on behalf of the applicant;
he/she believes the applicant to be the owner of the trademark/service mark
sought to be registered, or, if the application is being filed under 15 U.S.C.
§ 1051(b), he/she believes applicant to be entitled to use such mark in
commerce; to the best of his/her knowledge and belief no other person, firm,
corporation, or association has the right to use the mark in commerce, either
in the identical form thereof or in such near resemblance thereto as to be
likely, when used on or in connection with the goods/services of such other
person, to cause confusion, or to cause mistake, or to deceive; and that all
statements made of his/her own knowledge are true; and that all statements
made on information and belief are believed to be true.
(D.E. 127-2, 37); see also 15 U.S.C. § 1051(a)(3) (setting forth the applicant’s
verification requirements); 6 McCarthy on Trademarks § 31:75 (4th ed. 2012)
(“The type of fraud allegation that has given rise to the largest number of cases is
the charge that registrant signed the application oath knowing of use of the mark
by others. . . . While such charges of fraud and nondisclosure have uniformly been
rejected, litigants continue to pursue them vigorously . . . .”). The district court
16
explained that Pace was personally unaware of the existence of The Ecumenical
Order at the time he signed the applications and the accompanying oath. Sovereign
Military Hospitaller, 816 F. Supp. 2d at 1298, 1300.
Nonetheless, the district court canceled Plaintiff Order’s registered word
marks based on Plaintiff Order’s failure to disclose the existence of The
Ecumenical Order to the PTO. According to the district court, Plaintiff Order
knew of The Ecumenical Order’s domestic presence as early as 1983 and had a
duty to disclose that fact in the application. The district court based this finding of
knowledge on (1) the 1983 letter, written on The Ecumenical Order’s official
letterhead, sent to Plaintiff Order’s headquarters abroad; (2) the letter from Stair
Sainty to a member of The Ecumenical Order challenging its claimed connection
to Plaintiff Order; and (3) the letter from de Merode to The Ecumenical Order
expressing the view that the latter organization could dub knights. 10
To prove the fraud claim based on misrepresentations in the declaration
oath, The Florida Priory was required to establish that Pace “was aware other
organizations were using the . . . mark (either in an identical form or a near
resemblance) and ‘knew or believed’ those other organizations had a right to use
10
Although it is questionable whether these facts even establish that Plaintiff Order as an
institution knew of the existence of The Ecumenical Order, we need not address the validity of
these factual findings because the fraud claim fails even accepting that Plaintiff Order knew of
The Ecumenical Order.
17
the mark.” Angel Flight, 522 F.3d at 1211 (analyzing a similar declaration). The
declarant-focused text of the application oath requires the signatory’s good-faith,
subjective belief in the truth of its contents. See, e.g., Bose, 580 F.3d at 1245
(“Subjective intent to deceive . . . is an indispensable element in the [fraud]
analysis.”); Marshak v. Treadwell, 240 F.3d 184, 196 (3d Cir. 2001) (“[A]pplicants
attest[] only to their own subjective knowledge and belief.”); United Phosphorus,
Ltd. v. Midland Fumigant, Inc.,
205 F.3d 1219, 1227 (10th Cir. 2000) (“[W]e focus
on the ‘declarant’s subjective, “honestly held, good faith” belief.’” (quoting San
Juan Prods., Inc. v. San Juan Pools, Inc.,
849 F.2d 468, 472 (10th Cir. 1988))); see
also 6 McCarthy on Trademarks § 31:76 (“The oath is phrased in terms of a
subjective belief such that it is difficult, if not impossible, to prove objective falsity
and fraud so long as the affiant or declarant has an honestly held, good faith
belief.”). This requirement is implicit in our holding in Angel Flight, where we
upheld a district court’s cancellation of a mark because the declarant purposefully
failed to disclose the right of others to use the mark at issue “even though he was
aware organizations throughout the country were using the [mark] and had a right
to do so.” 522 F.3d at 1210 (emphasis added). Unlike the situation in Angel
Flight, Pace had no awareness that any other organization was using the marks for
which Plaintiff Order sought federal protection. This fact alone compels reversal
18
of the fraud finding, as Pace could not have intended to deceive the PTO in
attesting to an oath that he believed was entirely accurate. 11
To support its finding of fraud, the district court analogized to the Supreme
Court’s recent decision in Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. ___,
131 S. Ct. 2060 (2011). Global-Tech considered whether knowledge of
infringement was required to sustain a claim that a party actively induced
infringement of a patent under 35 U.S.C. § 271(b). Id. at 2063. The Supreme
Court held that knowledge, rather than deliberate indifference, was required to
sustain a claim under § 271 and that “willful blindness” was sufficient to satisfy
that knowledge element. Id. at 2068. Utilizing this concept, the district court
explained that “[t]o the extent that a willful blindness standard applies here, the
Court concludes that [Plaintiff Order]’s failure to inform Pace of the existence of
11
We find it curious that the district court canceled four of Plaintiff Order’s marks even
though it found that they were not likely to be confused with those of The Florida Priory. See
Sovereign Military Hospitaller, 816 F. Supp. 2d at 1302–03. We have explained that fraud
requires a showing that the applicant’s representative knew that other organizations were using
the mark “either in an identical form or a near resemblance.” Angel Flight, 522 F.3d at 1211; see
also Coach House Rest. v. Coach & Six Rests., 934 F.2d 1551, 1559 (11th Cir. 1991) (noting that
a petitioner seeking to cancel a mark must prove “that the registered mark resembles petitioner’s
mark”). This requirement is based on the explicit language of the oath, in which the declarant
affirms that “to the best of his/her knowledge and belief no other [entity] has the right to use the
mark in commerce, either in the identical form thereof or in such near resemblance thereto as to
be likely, when used on or in connection with the goods/services of such other person, to cause
confusion, or to cause mistake, or to deceive.” Thus, even if Pace actually knew about other
organizations using the mark—which he indisputably did not—the district court’s own finding
on the confusion issue is inconsistent with its disposition of the fraud claim.
19
[T]he Ecumenical Order is evidence of willful blindness on [Plaintiff Order]’s
part.” 816 F. Supp. 2d at 1300.
It was error to look to this case for the applicable standard to analyze a claim
for fraud on the PTO. We have been admonished to exercise caution before
importing standards from one area of intellectual-property law into another. See
Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 439 n.19, 104 S.
Ct. 774, 787 (1984). The Florida Priory has not pointed to any authority to
establish the sort of “historic kinship” that may justify translation of a patent-
infringement standard into the mark-application context. Id. at 439, 104 S. Ct. at
787; see also United Drug Co. v. Theodore Rectanus Co.,
248 U.S. 90, 97, 39 S.
Ct. 48, 50 (1918) (noting “little or no analogy” between trademark rights and those
of patent or copyright); McLean v. Fleming,
96 U.S. 245, 254 (1877) (“Property in
the use of a trade-mark . . . bears very little analogy to that which exists in
copyrights or in patents for new inventions or discoveries . . . .”). The Florida
Priory does not make an argument to otherwise justify the district court’s use of
this standard. To the extent the district court relied on the inapplicable “willful
blindness” standard to find the required intent to deceive the PTO, it erred. 12
12
In this context, the district court also wrote that “[e]ven if [Plaintiff Order] disputes
actual knowledge, no adequate explanation has been offered for [its] subjective ignorance” of
The Ecumenical Order and The Florida Priory. Sovereign Military Hospitaller, 816 F. Supp. 2d
at 1300. Analyzing the information that Plaintiff Order or Pace “should have known”
20
There is one additional aspect of the fraud analysis that the district court did
not address. If the declarant subjectively believes the applicant has a superior right
to use the mark, there is no fraud, even if the declarant was mistaken. See Bose,
580 F.3d at 1246 (“There is no fraud if a false misrepresentation is occasioned by
an honest misunderstanding or inadvertence without a willful intent to deceive.”).
Here, The Florida Priory did not put forth any evidence to establish that Pace—or
Plaintiff Order, for that matter—knew or believed that The Ecumenical Order or
The Florida Priory had a superior right to the marks at issue. See Angel Flight, 522
F.3d at 1211; Citbank, 724 F.2d at 1545 (rejecting a defendant’s fraud claim where
the plaintiff was the “senior use[r] of th[e] term”); see also Sovereign Order of
Saint John v. Grady, 119 F.3d 1236, 1241 (6th Cir. 1997) (“[A] valid trademark
registration requires only that the registrant ‘believe’ himself to be the owner of the
mark.” (quoting 15 U.S.C. § 1051)). Even assuming knowledge of The
Ecumenical Order as of 1983, Plaintiff Order’s relevant service mark registrations
provide that the marks were first used in commerce in 1926 and 1927. 13 The bare
knowledge that The Ecumenical Order existed as of 1983 does not undermine
impermissibly lowers the standard for fraud on the PTO, which contemplates the honestly held,
good-faith belief of the declarant. See Bose, 580 F.3d at 1244.
13
Registration Nos. 2,783,933 and 2,783,934 listed a date of December 31, 1926.
Registration Nos. 2,915,824 and 3,056,803 listed April 28, 1927.
21
Plaintiff Order’s claim to be the senior user of those marks because, even knowing
of The Ecumenical Order’s existence, Plaintiff Order could justifiably believe that
its marks were superior based on their first use dating back to the 1920s. See Star
Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008)
(explaining that even though circumstantial evidence may be used to prove intent,
the evidence “must still be clear and convincing, and inferences drawn from lesser
evidence cannot satisfy the deceptive intent requirement”). In any event, The
Florida Priory failed to proffer any evidence to show that Pace (or Plaintiff Order)
believed that The Ecumenical Order had a right to use the objected-to marks in
commerce. This is fatal to the claim of fraud. See Angel Flight, 522 F.3d at
1210. 14
In sum, the district court clearly erred in finding that Plaintiff Order
fraudulently obtained its marks. The district court’s evaluation of the fraud claim
was factually unsupported and legally incorrect, and we reverse the cancellation of
the four marks.
B. Lanham Act Infringement
14
It is also worth pointing out that, looking at the broader picture, no entity in this
scenario has even been misled by the purported nondisclosure at issue. When Plaintiff Order
applied for federal service mark protection, the examining attorney at the PTO found a mark
registered by The Delaware Corporation—an entity associated with The Ecumenical Order—and
required Plaintiff Order to distinguish itself from that prior registration, which Plaintiff Order
successfully did. The PTO therefore knew about the prior uses that Pace and Plaintiff Order
allegedly withheld from it, removing the possibility that the PTO was misled by the application.
22
Plaintiff Order next challenges the district court’s finding that its registered
design service mark was not confusingly similar to the identifying design used by
The Florida Priory. The Lanham Act prohibits the unauthorized use of a mark in
commerce that is confusingly similar to a registered service mark. 15 U.S.C.
§ 1114(1)(a). To prevail on a civil infringement claim brought under 15 U.S.C.
§ 1125, a plaintiff must establish that (1) its mark is entitled to protection and (2)
the defendant “adopted an identical or similar mark such that consumers were
likely to confuse the two.” Int’l Stamp Art, Inc. v. United States Postal Serv., 456
F.3d 1270, 1274 (11th Cir. 2006) (per curiam). In determining whether two marks
are likely to be confused, the district court must consider seven factors: (1) the type
of mark, (2) the similarity of the marks at issue, (3) the similarity of the services
the marks represent, (4) the similarity of the parties’ service outlets and customers,
(5) the nature and similarity of the parties’ advertising media, (6) the defendant’s
intent, and (7) any actual confusion. Frehling Enters. v. Int’l Select Group, Inc.,
192 F.3d 1330, 1335 (11th Cir. 1999); Coach House Restaurant, Inc. v. Coach &
Six Restaurants, Inc.,
934 F.2d 1551, 1561 (11th Cir. 1991). “The extent to which
two marks are confusingly similar cannot be assessed without considering all seven
factors to ensure that the determination is made in light of the totality of the
circumstances.” Wesco Mfg., Inc. v. Tropical Attractions of Palm Beach, Inc., 833
23
F.2d 1484, 1488 (11th Cir. 1987). At the same time, we recognize that a district
court need not “specifically mention each of the seven factors in order to avoid
reversal on appeal.” Univ. of Ga. Athletic Ass’n v. Laite,
756 F.2d 1535, 1542
(11th Cir. 1985); see also Wesco Mfg., 833 F.2d at 1489 (“[W]e may affirm an
ultimate finding on the issue of confusion that is not clearly erroneous, even when
the district court fails to consider all seven factors.”). Ultimately, our ability to
consider the district court’s likelihood-of-confusion determination depends on
whether the lower court found sufficient facts to permit meaningful appellate
review. See Wesco Mfg., 833 F.2d at 1489. If it has not, then we may remand for
the district court to conduct the proper analysis. Id.
In evaluating whether Plaintiff Order’s service mark was likely to be
confused with The Florida Priory’s unregistered symbol, the district court
described the visual appearance of the two graphics and then stated: “The Florida
Priory’s design contains two crosses, whereas [Plaintiff Order]’s registered mark
contains only one. [Plaintiff Order]’s mark contains no crown. These marks are
easily distinguishable, thus removing any possibility for consumer confusion.”
Sovereign Military Hospitaller, 816 F. Supp. 2d at 1301. Thus, it appears as
though the district court’s entire analysis of the likelihood of confusion was based
on the visual dissimilarity of the marks—namely that The Florida Priory’s symbol
24
contained a cross and crown that Plaintiff Order’s mark did not. The district court
did not make any additional factual findings related to the infringement claim or
address the applicability (or inapplicability) of any other factor germane to the
infringement analysis.
It is beyond any real dispute that the district court erred in focusing “solely
on the degree of visual similarity between the two marks.” Wesco Mfg., 833 F.2d
at 1489. The other factors bearing on the likelihood of confusion are “[e]qually as
significant as the general appearance of the trademarks.” Sun-Fun Prods., Inc. v.
Suntan Research & Dev., Inc., 656 F.2d 186, 189 (5th Cir. Unit B Sept. 17, 1981)
(quotation omitted). As such, when a district court “completely disregard[s] the
proper analysis” in making its determination of confusion, we may vacate its ruling
and remand for consideration of the claim using the proper framework. See Wesco
Mfg., 833 F.2d at 1489. Here, because the district court did not make any
additional factual findings to aid us in evaluating whether it committed clear error,
we have an “insufficient basis” to evaluate its ultimate conclusion. Id. As a result,
we remand the infringement claim so the district court may conduct the proper,
multi-factor infringement analysis for the design marks. 15 The district court should
also conduct this analysis for Plaintiff Order’s word marks, which were improperly
15
We express no opinion with regard to the ultimate outcome of this claim.
25
canceled for fraud.
C. Lanham Act False Advertising
Under the Lanham Act, an entity that misrepresents the “nature,
characteristics, qualities, or geographic origin” of its services in commercial
advertising or promotion is liable to the persons damaged by the false or
misleading representation. 15 U.S.C. § 1125(a)(1). We have interpreted this
language to require a plaintiff to demonstrate that: (1) the defendant’s statements
were false or misleading; (2) the statements deceived, or had the capacity to
deceive, consumers; (3) the deception had a material effect on the consumers’
purchasing decision; (4) the misrepresented service affects interstate commerce;
and (5) it has been, or likely will be, injured as a result of the false or misleading
statement. See Johnson & Johnson Vision Care, Inc. v. 1-800 Contacts, Inc., 299
F.3d 1242, 1247 (11th Cir. 2002).
Plaintiff Order’s false advertising claim was based on its position that The
Florida Priory does not share any history with, and has no connection to, the
historic Order of Malta. It argues that The Florida Priory’s adoption of Plaintiff
Order’s pre-1798 historical lineage and corresponding record of charitable
activities is likely to deceive customers into contributing money to The Florida
Priory. In assessing this claim, the district court was faced with the monumental
26
task of adjudicating the accuracy of two competing versions of late-eighteenth-to-
early-nineteenth century history. The testimony of Plaintiff Order’s witnesses
advised that The Ecumenical Order—and therefore The Florida Priory—had no
connection to Plaintiff Order and that no split ever occurred in the long history of
Plaintiff Order as an organization. (D.E. 144, 39:5–7; D.E. 145, 124:7–10.) The
testimony of The Florida Priory’s witnesses, however, sought to establish that as a
result of Napoleon’s 1798 invasion of Malta, the original Order of Malta
essentially ceased to exist. They advised that other religious orders connected to
that parent group sprung up, two of which are Plaintiff Order and The Ecumenical
Order. In their eyes, The Florida Priory connects to The Ecumenical Order, which
connects to the original Knights of Malta, just as Plaintiff Order is connected to the
original Knights of Malta.
The district court essentially agreed with the version of history as presented
by The Florida Priory. On appeal, Plaintiff Order argues that its witnesses, rather
than those of The Florida Priory, accurately recited the relevant history. It
attributes error to the district court’s reliance on the testimony of Papanicolaou—
who did not hold himself out to be an expert in history—over the testimonies of
Gamble and Dr. Vann—only one of whom was qualified as an expert in the history
27
of the Order of Malta. 16 We conclude that although the district court abused its
discretion in considering Papanicolaou’s testimony, that error was harmless.
Therefore, we affirm the district court’s disposition of the false advertising claim.
We acknowledge that the district court erred when it permitted
Papanicolaou, a lay witness, to testify about historical matters. Papanicolaou had
neither “personal knowledge” of the historical facts about which he spoke, Fed. R.
Evid. 602, nor could he offer testimony in the form of an opinion based on his
“perception” of those historical facts. Fed. R. Evid. 701. Papanicolaou should
have been qualified as an expert witness. Nevertheless, “[w]here a District Court
abuses its discretion in admitting evidence, we may still find the error harmless.”
United States v. Gamory, 635 F.3d 480, 492 (11th Cir. 2011) (citation omitted).
An evidentiary error is harmless if “sufficient evidence uninfected by any error
16
We note that the district court never actually ruled on Plaintiff Order’s objection to
Papanicolaou’s testimony. The relevant colloquy is as follows:
[Plaintiff Order]: And, Your Honor, we object. The witness
has not been qualified to testify as an historian.
THE COURT: Well, you’ll be able to cross-examine him
on this. I don’t know if he’s looked at original records and
documents, but I’ll let him testify.
(D.E. 146, 17:8–12.) The objection was not renewed so as to permit the district court an
opportunity to definitively rule on the propriety of the testimony or whether it was even expert in
nature.
28
supports the verdict, and the error did not have substantial influence on the
outcome of the case.” United States v. Khanani, 502 F.3d 1281, 1292 (11th Cir.
2007) (internal quotation marks and citation omitted).
The district court held that “[r]eferences by the Florida Priory to a shared
history with [Plaintiff Order] are perfectly appropriate, as the organizations shared
a history prior to 1798. Any claim for false advertising also rings hollow given
that the Florida Priory expressly associates itself with the Ecumenical Order, a
non-Catholic organization.” 816 F. Supp. 2d at 1302. This language indicates two
discrete factual determinations, each of which independently supports the district
court’s holding that The Florida Priory did not engage in false advertising via a
misappropriation of Plaintiff Order’s history: first, the two organizations shared a
history up until 1798; and second, The Florida Priory is an expressly non-Catholic
organization. We conclude that despite its abuse of discretion in allowing
Papanicolaou to testify, the district court was not “substantially swayed” by
Papanicolaou’s inadmissible testimony because the holding’s alternative ground—
that The Florida Priory is non-Catholic—is sufficient to uphold the district court.
See Aetna Cas. & Sur. Co. v. Gosdin, 803 F.2d 1153, 1160 (11th Cir. 1986).
As the district court observed in its opinion, “[t]o succeed on the merits of a
false advertising claim, [Plaintiff Order] must plead and prove that the Florida
29
Priory’s alleged deception is likely to influence the purchasing decision.” 816 F.
Supp. 2d at 1301 (internal quotation marks and citation omitted).
The district court found that Plaintiff Order’s false advertising claim “rings
hollow” given that The Florida Priory is an expressly non-Catholic organization,
and on this basis alone we may affirm the district court’s judgment. See 1-800
Contacts, 299 F.3d at 1250 (noting that a plaintiff must demonstrate “that the
deception is likely to influence the purchasing decision”). The trial record abounds
with references to The Florida Priory’s interdenominational nature. See, e.g., D.E.
145, 152:11–14 (Rick Joyner, a member of The Florida Priory, testifying that it is
not a Catholic organization); (D.E. 25-11: 2) (January 10, 1908, minutes stating:
“It is understood that our Order shall be open to qualified individuals of all
recognized Christian denominations.” (internal quotation marks omitted)). And of
course, by its very name, the Ecumenical Order is an interdenominational
organization. It is evident, therefore, that the district court’s admission of
Papanicolaou’s testimony was harmless, given that his testimony had nothing to do
with the district court’s alternative ground for dismissing Plaintiff Order’s false
advertising claim.
At bottom, the district court erred when it allowed Papanicolaou to testify—
that much is true. Nevertheless, we conclude that the district judge was not
30
substantially swayed by Papanicolaou’s testimony, because the uninfected
evidence—namely, The Florida Priory’s unequivocally interdenominational
nature—rendered moot any possibility that the alleged deceptions about
Napoleonic history would influence purchasing decisions. See 1-800 Contacts,
299 F.3d at 1250.
D. State Law Unfair Competition and FDUTPA
The success of Plaintiff Order’s state unfair competition and FDUTPA
claims is tied to the federal Lanham Act claims for infringement and false
advertising. See Natural Answers, Inc. v. Smithkline Beecham Corp., 529 F.3d
1325, 1333 (11th Cir. 2008). Because we vacate the ruling on the infringement
claim as related to the design mark and remand for reconsideration utilizing the
multifactor test, we likewise vacate the district court’s conclusions with regard to
the analogous state claims.
Next, because we reverse the district court’s cancellation of the registered
word marks, we also vacate the portion of the district court’s order disposing of the
state claims based on these word marks so it has the opportunity to revisit them
based on a complete analysis under the correct standard. In conducting this
analysis, we caution the district court to limit its analysis to facts in the record and
to refrain from consulting outside sources on the Internet that have not been cited,
31
submitted, or recognized by the parties. Remand is proper here because it is
unclear to what extent the district court relied on its own, extra-record Internet
research into similarly named organizations, see Sovereign Military Hospitaller,
816 F. Supp. 2d at 1303 & n.14, to conclude that The Florida Priory’s unregistered
marks are not likely to be confused with Plaintiff Order’s word marks. See
Johnson v. United States, 780 F.2d 902, 910 (11th Cir. 1986) (“The trial judge may
not . . . undertake an independent mission of finding facts ‘outside the record of a
bench trial over which he [presides].’” (quoting Price Bros. Co. v. Phila. Gear
Corp.,
629 F.2d 444, 447 (6th Cir. 1980)) (second alteration in original)). The
websites that the district court identified were proffered by neither party, and
Plaintiff Order had no opportunity to contest the validity of the information
contained therein, rendering it an improper consideration in the confusion
analysis.17
E. Reassignment on Remand
In its briefing and at oral argument, Plaintiff Order brought to our attention
instances from the bench trial and the district court’s published findings of fact that
disparage the parties, witnesses, or their work. In its findings of fact, the district
court wrote that, although it understood that the parties presented themselves as
17
Again, we express no opinion on the ultimate outcome of these state law claims.
32
Christian charities, it “struggle[d] with the parties’ characterizing themselves in
that manner.” Sovereign Military Hospitaller, 816 F. Supp. 2d at 1294 n.2. The
district court attributed this confusion to the “unimpressive” amount of money each
group raised for charitable purposes, which led the court to believe that the
members of both organizations “are more interested in dressing up in costumes,
conferring titles on each other and playing in a ‘weird world of princes and
knights’ than in performing charitable acts.” Id. (quoting the judge’s comments in
the trial transcript, D.E. 144, 131:19–20). During the trial, the judge opined that it
was “tragic” that all Dr. Vann had done in her life was study the Knights of Malta
and their records. (D.E. 145, 8:1–6.) He also expressed his disbelief that two
charitable organizations would spend their time and money on litigation. (D.E.
144, 34:5–7.)
These remarks are wholly inappropriate in the context of a judicial
proceeding and a published judicial opinion. Although a judge is not required to
check his or her sense of humor at the courthouse door, we must be mindful that
the parties rely on the judge to give serious consideration to their claims. Litigants
are understandably frustrated when they are subject to the sort of unnecessary
belittling commentary about which the parties complain here.
Plaintiff Order seeks to invoke our supervisory authority to reassign this case
33
to a different district judge on remand. See United States v. Torkington, 874 F.2d
1441, 1446 (11th Cir. 1989) (per curiam). We have explained that reassignment is
proper when a “trial judge has engaged in conduct that gives rise to the appearance
of impropriety or a lack of impartiality in the mind of a reasonable member of the
public.” Id. In the absence of bias, we consider three factors in determining
whether reassignment is justified: “(1) whether the original judge would have
difficulty putting his previous views and findings aside; (2) whether assignment is
appropriate to preserve the appearance of justice; [and] (3) whether reassignment
would entail waste and duplication out of proportion to gains realized from
reassignment.” Id. at 1447. We think the district court’s remarks, though
offensive to both parties, do not rise to the level of conduct that warrants
assignment to a different judge on remand. We are hard-pressed to surmise actual
bias in favor of, or against, one party over the other. Moreover, we are confident
that, on remand, both parties will be treated with the respect they deserve and that
the district court will be able to freshly consider the remanded claims
notwithstanding its previously expressed views. And, given the fact-intensive
nature of this case, any reassignment would necessarily require duplication of
resources expended by the parties and the court. Accordingly, we deny Plaintiff
Order’s request for reassignment on remand.
34
IV. Conclusion
We conclude that the district court clearly erred in evaluating the claim that
Plaintiff Order committed fraud on the PTO and reverse the cancelation of the four
word marks, Registration Nos. 2,783,933; 2,783,934; 2,915,824; and 3,056,803.
Because we were not presented with sufficient findings to review the Lanham Act
infringement claims, we vacate the district court’s ruling on that issue and remand
for it to consider, under the correct legal standard, confusion with respect to all of
Plaintiff Order’s marks—including the four word marks. In light of that
disposition, we vacate the district court’s ruling on the state law claims. Finally,
we affirm the district court’s finding on the Lanham Act false advertising claim in
favor of The Florida Priory.
AFFIRMED IN PART, REVERSED IN PART, VACATED IN PART,
AND REMANDED.
35
