Sovereign Military Hospitaller Order v. Florida Priory of the Knights Hospitallers
On October 15, 2015, Bancroft secured a unanimous victory for the 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, 809 F.3d 1171 (11th Cir. 2015). The Order of Malta is a religious order of the Roman Catholic Church that performs charitable works around the world and a sovereign entity that has diplomatic relations with 105 countries and permanent observer status at the United Nations. The Order holds several federally-registered marks—including Knights of Malta® and Order of St. John of Jerusalem®—that it uses in connection with its provision of charitable services. In 2009, in an effort to prevent consumer confusion, the Order brought a trademark infringement suit against a Florida group that uses several of the Order’s federally-registered marks verbatim. The district court initially cancelled the Order’s marks and Bancroft secured reversal of that ruling on appeal in Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. Florida Priory of Knights Hospitallers of Sovereign Order of Saint John of Jerusalem, Knights of Malta, Ecumenical Order, 702 F.3d 1279 (11th Cir. 2012). On remand, the district court purported to apply the Eleventh Circuit’s seven factor test regarding likely confusion and held that the Order failed to establish that confusion was likely to result from the Florida group’s use of the Order’s marks. The Eleventh Circuit reversed, holding that the district court erred with respect to every factor challenged by the Order. On remand, the district court misapplied several factors in its analysis of likely confusion, incorrectly assessed the Florida group’s defense of prior use, relied on historical testimony that the appellate court had previously deemed inadmissible, and misinterpreted the Eleventh Circuit’s instructions about consulting facts outside the record. The case was briefed and argued by D. Zachary Hudson with assistance from Paul D. Clement and Viet D. Dinh.
Barbara Grzincic, ‘Knights of Malta’ to Battle for Third Time Before Same Judge, Reuters (Oct. 16, 2015)
Kat Greene, 11th Circ. Concerned by Judge Remarks in Charity TM Fight, Law360 (Oct. 15, 2015)