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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
________________________
(September 11, 2012)
Before WILSON, PRYOR, and MARTIN, Circuit Judges.
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WILSON, Circuit Judge:
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. § 1051et seq., as well as state law claims for unfair competition and violation of the
Florida Deceptive and Unfair Trade Practices Act (FDUTPA), Fla. Stat. § 501.201et 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
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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
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
3
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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
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
1
Depending on the size, these bodies could be classified as sub-priories, priories, or a
grand priory. (D.E. 114, 49:6–10.)
4
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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.) Czar Paul I then had
the two priories—the Catholic Russian priory and the non-Catholic priory—
declare von Hompesch deposed, and Czar Paul I established himself as Grand
Master.3 (Id. at 112:10–12.) Czar Paul I was assassinated in 1801, and his son
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.)
3
Gamble and Dr. Vann clarified 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.)
5
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Alexander became Czar of Russia. (Id. at 114:16–17.)
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.)
Czar Alexander I did not entertain the activities of either of the two Russian
priories and in 1810 abolished them by taking away their lands. (Id. at 115:6–8,
116:15–22.)
Grand Master Tomassi served for only a couple of 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.) The 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.)
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.)
6
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There are about 3000 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
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
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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 testimony about the origins of The Florida Priory came largely from
Nicholas Papanicolaou, the current Prince Grand Master of The Ecumenical Order
(parent organization of The Florida Priory). His testimony of history up until
Napoleon’s invasion of Malta is in accord with the version of events presented by
Plaintiff Order’s witnesses. The accounts of history differ beginning around 1798.
According to Papanicolaou, after Napoleon invaded and expelled the knights from
Malta, the knights relocated all across Europe. (D.E. 146, 21:14–20.)
Approximately three-hundred knights ended up in Russia, and consistent with the
procedures of the Order of Malta, their sixteen-person electoral college elected
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
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Czar Paul I5 as the new Grand Master. (Id. at 21:18–222:5.) Czar Paul I instituted
three fundamental organizational changes: (1) the Grand Master was not required
to be a cleric, (2) titles could be passed hereditarily, and (3) the order was open to
non-Catholics. (Id. at 29:2–23.)
Panpanicolaou testified that around this time the Order of Malta ceased to
exist as it had prior to 1798. (Id. at 24:3–4.) The Order of Malta no longer had
territory, and the relocation of many of its knights into Russia meant that the
Russian Order, which had elected Czar Paul I as Grand Master, was the legitimate
continuation of that group. (Id. at 25:3–10.) After the assassination of Czar Paul I,
his son Alexander became protector of this Russian order. (Id. at 22:6–17.) At
that time, the Russian order was composed of two priories: the Catholic-affiliated
Polish Grand Priory and the non-Catholic Russian Grand Priory. (Id. at 22:11–17.)
In order to secure alliances that were required to take on Napoleon, Alexander
returned the Polish Grand Priory to the Pope. (Id. at 23:9–13.)
The return of the Catholic priory marked the origin of the organization that
is now Plaintiff Order. (Id. at 25:3–10.) The non-Catholic Russian Grand Priory
persisted in Russia until the Bolshevik revolution, at which time the headquarters
was moved to the United States. (Id. at 25:11–16.) This organization eventually
5
Although Papanicolaou refers to Russia’s leader as Emperor Paul I, we use the title Czar
for the sake of consistency with Dr. Vann’s testimony.
9
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became known as The Ecumenical Order, and it had its first meeting in the United
States on January 10, 1908, as memorialized in its minutes. (Id. at 25:23–26:6.)
In January of 1911, The Ecumenical Order incorporated in New Jersey
under the name “The Knights of Malta, Inc.” (the New Jersey Corporation).6 (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–
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
6
This corporation was administratively dissolved in 1989.
10
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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. 7
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.8 First, in
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
7
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.)
8
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.
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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
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
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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.)9
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
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
9
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.
13
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PTO. The district court canceled four of Plaintiff Order’s service mark
registrations 10 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
held liable for false statements because it did, in fact, share a pre-1798 history with
Plaintiff Order. Id. at 1301–02.
On the state law claims, the district court evaluated the unfair competition
10
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”).
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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).
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
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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
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:
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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
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
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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. 11
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
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
11
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.
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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
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. 12
12
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
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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
[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
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.
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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. 13
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
13
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”
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.
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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. 14 The bare
knowledge that The Ecumenical Order existed as of 1983 does not undermine
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
14
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.
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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. 15
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
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)
15
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.
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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
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
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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
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
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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. 16 The district court should
also conduct this analysis for Plaintiff Order’s word marks, which were improperly
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
16
We express no opinion with regard to the ultimate outcome of this claim.
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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
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
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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 and, specifically, by Papanicolaou. 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 of the Order of Malta. We conclude that the
district court did not clearly err in its factual findings and therefore affirm its
disposition of the false advertising claim.
The main thrust of Plaintiff Order’s argument is that Papanicolaou’s
testimony was based on his own view of history rather than any reliable evidence.
It is true that Papanicolaou did not testify as an expert historian.17 He did testify,
17
We note that the district court never actually ruled on Plaintiff Order’s objection to
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though, as Prince Grand Master of The Ecumenical Order and presented history-
related testimony in much the same way Gamble did as Plaintiff Order’s
representative. (D.E. 144, 35:2–4.) Papanicolaou stated that he possessed the
archives of The Ecumenical Order; that he had read history books concerning the
organization; and that he had previously seen the records of The Ecumenical
Order, which are located in the United Kingdom, Malta, Canada, the United States,
and Sweden. (D.E. 146, 17:8–18:4.) He testified that he had seen some of his
organization’s post-1798 records in Russia. (Id. at 18:19–22.) The Florida Priory
submitted to the district court the texts that Papanicolaou relied upon in arriving at
his historical narrative. The district court took notice of their existence, stating “I
may browse through th[e books], but I wouldn’t want to represent that I know
everything.” (Id. at 16:2–19.) The Florida Priory also submitted the minutes of the
1908 meeting of The Ecumenical Order in New York, which tend to support
Papanicolaou’s testimony. The relevant colloquy is as follows:
[Counsel]: 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.
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Papanicolaou’s version of events. 18 We are reluctant to conclude here that the
head of an organization is incompetent to testify about the history of the
organization, especially when the opposing party had the opportunity to fully
cross-examine and challenge his credibility on all aspects of his testimony. In fact,
Plaintiff Order, upon whom the burden of proof rested, itself relied upon its own
non-expert—Geoffrey Gamble—to testify as an historian. (D.E. 144, 37:11–
40:19.)
Plaintiff Order contends that the district court must be reversed because the
testimony of its expert witness directly contradicts Papanicolaou’s account of the
historical events that occurred around 1798. Although it is true that the witnesses
presented contrasting views of history, we cannot say that the district court clearly
erred. To be sure, both Gamble and Dr. Vann testified that they did not see any
connection between The Ecumenical Order and Plaintiff Order. (D.E. 144, 39:2–
15; D.E. 145, 128:12–22, 129:14–18.) On cross-examination, however, Dr. Vann
testified that she did not have any records from Russia after 1798, (D.E. 145,
131:5–6), had not gone to Russia to look at records, (id. at 131:7–8), and had not
18
The minutes state that the attendees gathered “for the purpose of officially organizing,
maintaining and perpetuating a Grand Priory of the Order of the Knights of Malta in these United
States of America, continuing with certain modifications, the Sovereign Order of Saint John of
Jerusalem as it was constituted under the 70th Grand Master, H.I.M. Paul I, Emperor of Russia.”
(D.E. 25-11 Exh. 16.)
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asked to see The Ecumenical Order’s records, (id. at 131:8–10). Dr. Vann also
testified that the book upon which she relied was published by Plaintiff Order. (Id.
at 132:12–20.)
Faced with all of this information, the district court’s decision was
ultimately a matter of credibility in light of the documentary evidence presented.
On the one hand, the district court had Papanicolaou, the head of The Ecumenical
Order, who had read books and reviewed documents concerning the history of his
organization. The district court also had the testimony of Joyner, a member of The
Ecumenical Order, who had written a book based on his account of what he had
read regarding his organization’s history. On the other hand, there was Dr. Vann,
who has devoted her life to the study of Plaintiff Order and has reviewed original
documents and published texts concerning its history. In addition, the district court
had the testimony of Gamble, who had published a historical booklet concerning
Plaintiff Order. (D.E. 144, 40:17–19.) The district court, as is its prerogative
when conducting a bench trial, weighed the testimony and came to a conclusion.
See Castle v. Sangamo Weston, Inc., 837 F.2d 1550, 1559 (11th Cir. 1988)
(“Assessing the weight of evidence and credibility of witnesses is reserved for the
trier of fact.”). The cross-examination of Dr. Vann gives some basis for the district
court’s apparent reluctance to accept that testimony as a definitive statement of
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history, and there was no documentary evidence submitted that would otherwise
satisfy Plaintiff Order’s burden of proving the absence of a connection between the
groups. In the context of this bench trial, the district court chose from one of two
positions, each of which was supported by trial testimony.
The federal courts do not sit as a final arbiter of historical fact, and a serious
scholar would probably be reluctant to cite to a district court’s findings of fact as a
definitive statement of history. Instead, the district court evaluates a case by
considering the evidence presented to it. After carefully considering the trial
transcript, we are not left with the “definite and firm conviction that a mistake has
been committed.” Johnson & Johnson, 299 F.3d at 1246. Although the factual
findings of the district court might not be the same as those that we would have
made if presented with the same evidence, that alone does not provide a basis for
reversal. See Anderson v. Bessemer City, 470 U.S. 564, 573–74, 105 S. Ct. 1504,
1511 (1985) (“If the district court’s account of the evidence is plausible in light of
the record viewed in its entirety, the court of appeals may not reverse it even
though convinced that had it been sitting as the trier of fact, it would have weighed
the evidence differently.”). In the absence of any definitive evidence that
establishes that the parties are not connected, we must affirm the district court’s
disposition of this claim.
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Although Plaintiff Order’s trial objection preserved for appeal whether
Papanicolaou was qualified to testify as a historian, see supra note 17, Plaintiff
Order’s initial brief fails to address this argument. The brief merely mentions that
Papanicolaou’s testimony “was not based on personal knowledge.” That portion of
one sentence buried within thirty-six pages of legal argument fails to carry the
weight that the dissent seeks to attribute to it. Plaintiff Order makes no argument
that Papanicolaou had to be qualified as an expert in order to testify about the
history of The Ecumenical Order. Plaintiff Order does not cite to even one of the
Federal Rules of Evidence, much less Rule 702 governing expert testimony. There
is no mention of Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 113
S. Ct. 2786 (1993), or any allegation that the district court failed in its role as
gatekeeper. Nor is there a citation to any case that considered the exclusion of
non-expert testimony. Arguments not raised in a party’s initial brief are
“considered abandoned.” United States v. Dockery, 401 F.3d 1261, 1262–63 (11th
Cir. 2005). We are reluctant to reverse a district court “pursuant to legal theories
[the plaintiff] did not outline, based on facts [the plaintiff] did not relate.” Adler v.
Duval Cnty. Sch. Bd., 112 F.3d 1475, 1481 n.12 (11th Cir. 1997). An appellate
court “has no duty to research and construct legal arguments available to a party.”
Head Start Family Educ. Program, Inc. v. Coop. Educ. Serv. Agency, 46 F.3d 629,
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635 n.9 (7th Cir. 1995).
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,
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
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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.19
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
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
19
Again, we express no opinion on the ultimate outcome of these state law claims.
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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
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
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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.
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.
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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.
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PRYOR, Circuit Judge, concurring in part and dissenting in part:
I concur in the majority opinion with the exception of the resolution of the
evidentiary issues as they relate to the claim of false advertising, from which I
respectfully dissent. The district court rejected the claim of false advertising based
on a finding that the Sovereign Military Order and the Florida Priory share a
history, and the district court based that finding on the testimony of Nicholas
Papanicolaou. Special dangers attend the introduction of testimony about history in
judicial proceedings. A[W]hen a historian, whose methodology is unsound, is
placed before a [factfinder], the historian has the ability to paint a picture of the
past as he or she so desires. And this, in turn, has the potential to change and shape
the way the public views, interprets, and understands the past.@ Holly Morgan,
Comment, Painting the Past and Paying for It: The Demise of Daubert in the
Context of Historian Expert Witnesses, 44 Wake Forest L. Rev. 265, 294B95
(2009). The district court clearly erred when it found that the Sovereign Military
Order and the Florida Priory share a history prior to 1798 because no competent
evidence supports that finding.
Under the Federal Rules of Evidence, three types of testimony are
admissible in federal court. First, a witness may testify about a matter if he has
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personal knowledge of that matter. Fed. R. Evid. 602. Second, a witness who is not
testifying as an expert may offer opinion testimony if the opinion is A(a) rationally
based on the witness=s perception; (b) helpful to clearly understanding the witness=s
testimony or to determining a fact in issue; and (c) not based on scientific,
technical, or other specialized knowledge within the scope of Rule 702.@ Fed. R.
Evid. 701. Third, a Awitness who is qualified as an expert by knowledge, skill,
experience, training, or education may testify in the form of an opinion or
otherwise if@ four conditions described in Rule 702 are established. Fed. R. Evid.
702.
The Florida Priory understandably does not argue that Papanicolaou had
personal knowledge of any of the events between 1798 and the early twentieth
century that were the subject of his testimony. Papanicolaou=s testimony about the
arcane history concerning the evolution of the Ecumenical Order from the original
Knights of Malta instead would have to be based on Aspecialized knowledge@ of
history. Accordingly, the rules regarding expert opinion governed the admissibility
of Papanicolaou=s testimony about history, but this district court considered
Papanicolaou’s testimony without qualifying him as an expert.
Contrary to the assertion in the majority opinion, the Sovereign Military
Order did not abandon its argument that Papanicolaou=s testimony was
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inadmissible. The Sovereign Military Order devoted over five pages of its initial
brief to the argument that the district court erred when it rejected the claim of false
advertising based on a finding that the parties had a shared history. The Sovereign
Military Order explained as follows that no competent evidence supported that
finding:
There is no factual support in the record for concluding that the
Order and the Priory have a shared history prior to 1798, or, indeed,
any shared history at all. And because there was no evidence to
support the court’s shared-history finding, there certainly was not the
substantial evidence necessary for this Court to affirm that finding.
More than this, the trial record lacks any reliable evidence
speaking to the history of the [Ecumenical Order] and the [Florida]
Priory, a separate matter from whether that history is shared with the
Order. The statements in the District Court opinion outlining the
[Ecumenical Order]’s history rely on two primary sources: the trial
testimony of Mr. Papanicolaou, the Priory’s head, and the pre-trial
declaration of Mr. Papanicolaou. First of all, Mr. Papanicolaou’s
submissions establish no more than Mr. Papanicolaou’s view of
history. The evidence he offered at trial with respect to the history of
the EO and the Priory was not based on personal knowledge. The
same is true of his pre-trial declaration, which was not admitted at
trial and—as a result—was improperly relied on by the District Court.
And, in any event, Mr. Papanicolaou’s unsubstantiated statements
were flatly contradicted by the trial testimony of the Order’s historical
expert and evidence submitted at trial.
Initial Brief of Sovereign Military Order at 47−48 (citations omitted). The
Sovereign Military Order also explained at length in its reply brief that no
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admissible evidence supported the finding of the district court that the Florida
Priory and the Sovereign Military Order share a history before 1798:
The District Court summarily rejected the false designation of origin
claim as a “non-starter” concluding that “[r]eferences by the Florida
Priory to a shared history with [the Order] are perfectly appropriate, as
the organizations shared a history prior to 1798.” But there was no
persuasive evidence offered to support this conclusion, let alone the
substantial evidence necessary to affirm this factual finding under the
clearly erroneous standard on appeal.
...
[T]he [Florida] Priory’s account of history is based primarily on the
testimony its head. But Mr. Papanicolaou is no more qualified to
render judgment on the proper construction of history than any other
person who has a read a history book. Moreover, his testimony was
based primarily on his “memory,” and he admitted that his historical
testimony was not based on a review of “any original documents,” but
“books and bibliography[ies].”
Reply Brief of Sovereign Military Order at 19, 23 (citation omitted) (alteration in
original).
The majority states that the Sovereign Military Order makes no argument
that Papanicolaou had to be qualified as an expert in order to testify about the
history of the Ecumenical Order, Majority Opinion at 33, but that assertion
misapprehends both the briefs and the record. The majority acknowledges that the
Sovereign Military Order objected at trial that Papanicolaou was not qualified as
an expert in history and that the Sovereign Military Order argues on appeal that
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Papanicolaou lacked personal knowledge to offer testimony regarding historical
events that occurred long before he was born. What the majority fails to grasp is
that these objections represent two sides of the same coin: an objection that a
witness is not qualified as an expert is necessarily an objection that a witness lacks
personal knowledge of the subject matter of his testimony, and an objection that a
witness lacks personal knowledge is an objection that the witness can testify only if
he is qualified as an expert or can offer lay opinion testimony. The Sovereign
Military Order did not abandon its argument that Papanicolaou was not qualified as
an expert to testify about the history of the Knights of Malta by arguing in its
opening brief that Papanicoloau lacked personal knowledge to testify about that
history. The district court admitted Papanicoloau=s testimony, over the objection of
the Sovereign Military Order, even though the district court did not qualify him as
an expert witness, and the Sovereign Military Order argues on appeal that
Papanicolaou=s non-expert testimony is inadmissible because it is not based on
personal knowledge.
And contrary to the argument of the majority opinion, the Sovereign
Military Order was not required to “renew[]” its objection “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.” Majority Opinion at 28−29, n.17. Federal
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Rule of Civil Procedure 46 provides that “[a] formal exception to a ruling or order
is unnecessary. When the ruling or order is requested or made, a party need only
state the action that it wants the court to take or objects to, along with the grounds
for request or objection.” Fed. R. Civ. P. 46. We long ago did away with the
common law requirement of formal exceptions to the rulings of trial courts.
The majority also faults the Sovereign Military Order for failing to cite a
Federal Rule of Evidence to support the elementary proposition that a witness
ordinarily must have personal knowledge of the subject of his testimony, Majority
Opinion at 33, but this argument does not turn on an interpretation of any Rule of
Evidence. It is undisputed that Papanicolaou lacked personal knowledge about the
subject of his testimony.
Hinting that two wrongs make a right, the majority obliquely suggests that
we should overlook any error in admitting Papanicolaou’s testimony because the
Sovereign Military Order called Geoff Gamble who offered testimony about the
history of the Knights of Malta even though he was not qualified as an expert in
history. But the Florida Priory did not object to Gamble’s testimony about history,
and the district court did not rely on Gamble’s testimony when it found that the
Sovereign Military Order and the Florida Priory share a history before 1798.
Whether the district court abused its discretion when it admitted Gamble’s
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testimony might be at issue if the Florida Priory had made an appropriate objection
to that testimony at trial and the district court had relied on Gamble’s testimony to
find that the Sovereign Military Order proved that the two organizations did not
share a history before 1798, but this appeal does not present that issue.
The district court abused its discretion when it admitted Papanicolaou=s
testimony based on “specialized knowledge” without qualifying him as an expert
or ensuring that his testimony was reliable. The Sovereign Military Order objected
at trial that Papanicolaou had Anot been qualified to testify as an historian,@ but the
district court disregarded that objection and permitted Papanicolaou to testify
concerning the history of the Ecumenical Order and the Knights of Malta. A[W]hen
a party offers expert testimony and the opposing party raises a . . . challenge [under
Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 113 S. Ct. 2786(1993)], the trial court must >make certain that [the] expert, whether basing [his]
testimony upon professional studies or personal experience, employs in the
courtroom the same level of intellectual rigor that characterizes the practice of an
expert in the relevant field.=@ McClain v. Metabolife Int=l, Inc., 401 F.3d 1233,
1237 (11th Cir. 2005) (alterations added) (quoting Kumho Tire Co., Ltd. v.
Carmichael, 526 U.S. 137, 152, 119 S. Ct. 1167 (1999)). The district court makes
this determination by applying Rule 702. See id. Rule 702 permits a district court
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to admit expert testimony if it finds that Athe expert=s . . . specialized knowledge
will help the trier of fact to understand the evidence or to determine a fact in issue,@
Athe testimony is based on sufficient facts or data,@ Athe testimony is the product of
reliable principles and methods,@ and Athe expert has reliably applied the principles
and methods to the facts of the case.@ Fed. R. Evid. 702. Although Athe task of
evaluating the reliability of expert testimony is uniquely entrusted to the district
court@ and Awe give the district court considerable leeway in the execution of its
duty[,] [w]e will reverse when the district court=s Daubert ruling . . . amount[s] to
an abuse of discretion that affected the outcome of the trial.@ United States v.
Brown, 415 F.3d 1257, 1266 (11th Cir. 2005) (internal quotation marks and
citations omitted). AAn abuse of discretion can occur where the district court
applies the wrong law, follows the wrong procedure, bases its decision on clearly
erroneous facts, or commits a clear error in judgment.@ Id. And Aa district court
abuses its discretion where it fails to act as a gatekeeper by essentially abdicating
its gatekeeping role.@ Id. By failing to perform any analysis under Rule 702, the
district court abdicated its gatekeeping function when it admitted Papanicolaou=s
testimony.
Rule 702 governs the admissibility of expert testimony regardless of whether
the case is tried to a jury or a judge. Several of our sister circuits have ruled that
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ADaubert=s requirements of reliability and relevancy continue to apply in a bench
trial.@ Metavante Corp. v. Emigrant Sav. Bank, 619 F.3d 748, 760 (7th Cir. 2010);
see also Attorney Gen. of Okla. v. Tyson Foods, Inc., 565 F.3d 769, 779 (10th Cir.
2009); Seaboard Lumber Co. v. United States, 308 F.3d 1283, 1302 (Fed. Cir.
2002). Although Athe usual concerns of [Rule 702]Ckeeping unreliable expert
testimony from the juryCare not present in [a bench trial], and our review must
take this factor into consideration,@ Metavante Corp., 619 F.3d at 760; see also
Brown, 415 F.3d at 1268B69, the district court must nevertheless Aprovide more
than just conclusory statements of admissibility or inadmissibility to show that it
adequately performed its gatekeeping function,@ Metavante Corp., 619 F.3d at 760(internal quotation marks omitted). The district court abused its discretion when it
failed to make any determination whether Papanicolaou=s testimony about history
was reliable.
Despite the Areluctance@ of the majority Ato conclude . . . that the head of an
organization is incompetent to testify about the history of the organization,@
Opinion at 30, we cannot disregard the Federal Rules of Evidence. The majority
cites no authority for its Ahead of an organization@ or Ainstitutional knowledge@
exception to the requirement of Rule 602 that an ordinary witness must have
personal knowledge of the subject of his testimony, and the exception makes no
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sense. A judicially-crafted rule of evidence allowing the head of an organization,
without personal knowledge or qualification as an expert, Ato testify about the
history of the organization@ would, for example, permit the governor of a state to
testify in a voting rights case that there was no Ahistory of official discrimination in
the state or political subdivision that touched the right of the members of the
minority group to register, to vote, or otherwise to participate in the democratic
process,@ Thornburg v. Gingles, 478 U.S. 30, 36B37, 106 S. Ct. 2752, 2759 (1986)
(citation omitted), even though the governor did not have personal knowledge of
events that occurred in the state long before he was born. The rule would also
allow the chief of an Indian tribe in modern-day America to testify, in an action to
establish aboriginal title to land, that Athe lands in question were . . . the ancestral
home of@ his tribe, United States v. Santa Fe Pac. R. Co., 314 U.S. 339, 345, 62 S.
Ct. 248, 251 (1941), and the tribe Ahad inhabited [those lands] from time
immemorial,@ Mashpee Tribe v. Sec=y of Interior, 820 F.2d 480, 482 (1st Cir.
1987). And, in the light of the broad language the majority employs, the rule might
also permit the chief executive officer of Delta Airlines to testify, based on the
institutional knowledge of the business, that a plane crash did not result from pilot
error even though he holds a law degree instead of a degree in physics or
aeronautical engineering.
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Whether the district court abused its discretion when it admitted and relied
upon Papanicolaou’s testimony about history is no small matter. The competent
evidence in the record establishes that the Sovereign Military Order is an ancient
Christian organization that operates charitable hospitals and performs good works
around the globe. In the absence of Papanicolaou’s inadmissible testimony that the
Florida Priory and the Sovereign Military Order share a history, the record makes
plain that the Florida Priory has played no part in those good works.
The majority opinion constructs a straw man when it suggests that “a serious
scholar would probably be reluctant to cite to a district court’s findings of fact as a
definitive statement of history.” Majority Opinion at 32. The real issue is whether
the district court based its findings about history on the testimony of a serious
scholar. The district court cannot rely on the testimony of a lay witness about
ancient history. The district court must instead rely on the testimony of an expert to
make findings about history, which is the province of serious scholars. Instead of
relaxing the rules concerning the admission of expert testimony when the subject
matter of the testimony is history, we should ensure that those rules have been
applied. The district court failed to do so, and we should reverse its ruling that the
Sovereign Military Order failed to prove that the Florida Priory engaged in false
advertising under the Lanham Act.
49