Order of Malta in Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, The Ecumenical Order

The U.S. Court of Appeals for the Eleventh Circuit reversed a district court decision for the second time, explaining that on remand the district court “erred with respect to every factor” in determining whether confusion was likely between the two marks. Order of Malta in Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, The Ecumenical Order, Case No. 14-14251 (11th Cir., Oct. 15, 2015) (Pryor, J.)

The Order of Malta in Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta (the Order) is a religious organization of the Roman Catholic Church that performs charitable works around the world and has diplomatic relations with numerous countries around the world. In 2009, the Order brought an infringement suit against Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, The Ecumenical Order (the Florida Priory) claiming infringement of its registered trademarks. The Florida Priory is a Christian group that is not tied to a specific church. Both groups stem from a group founded in Jerusalem in the 11th century.

The district court initially cancelled the Order’s registered trademarks reasoning that the Order’s representative before the U.S. Patent and Trademark Office should have been aware of the other group’s use of similar marks but said nothing. On appeal by the Order, the cancellation decision was reversed, the 11th Circuit finding that the district court hadn’t used the correct standard to evaluate confusion, had incorrectly relied on the leader of the Florida Priory’s “expert” testimony about historical facts and inappropriately relied on its own internet searches to find more information about the parties. IP Update, Vol. 15, No. 10. The Court further noted that comments made by the district court about the Order were offensive and unnecessary, but found no actual bias and refused to send the case to a different judge.

On remand, the district court followed the 11th Circuit’s protocol in reconsidering whether the marks of the parties are likely to cause confusion and came to the same conclusion. The Order again appealed. The 11th Circuit reversed again, explaining that while the district court’s confusion methodology was proper this time, it misapplied several of the infringement factors in its analysis. The 11th Circuit criticized the district court for again relying on improper expert historical testimony that the 11th Circuit previously deemed inadmissible, and for misinterpreting the appeals court instructions about consulting facts outside the record. However, the 11th Circuit denied the Order’s request to reassign the case to a different district judge, noting that reassignment wasn't warranted because the district court's actions were “more akin to garden-variety errors of the law” than “direct defiance” of the circuit court.