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

• Court: Court of Appeals for the Eleventh Circuit
• Decided: September 11, 2012
• Docket: 11-15101
• Status: Published

Opinion

Case: 11-15101 Date Filed: 09/11/2012 Page: 1 of 49

[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. Case: 11-15101 Date Filed: 09/11/2012 Page: 2 of 49

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. § 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

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

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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

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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.)

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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.)

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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.)

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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

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.

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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.

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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.

6 This corporation was administratively dissolved in 1989.

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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.

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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 19 Case: 11-15101 Date Filed: 09/11/2012 Page: 20 of 49

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.

20 Case: 11-15101 Date Filed: 09/11/2012 Page: 21 of 49

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.

21 Case: 11-15101 Date Filed: 09/11/2012 Page: 22 of 49

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.

22 Case: 11-15101 Date Filed: 09/11/2012 Page: 23 of 49

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. 23 Case: 11-15101 Date Filed: 09/11/2012 Page: 24 of 49

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

24 Case: 11-15101 Date Filed: 09/11/2012 Page: 25 of 49

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

25 Case: 11-15101 Date Filed: 09/11/2012 Page: 26 of 49

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.

26 Case: 11-15101 Date Filed: 09/11/2012 Page: 27 of 49

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

27 Case: 11-15101 Date Filed: 09/11/2012 Page: 28 of 49

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 28 Case: 11-15101 Date Filed: 09/11/2012 Page: 29 of 49

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.

29 Case: 11-15101 Date Filed: 09/11/2012 Page: 30 of 49

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.)

30 Case: 11-15101 Date Filed: 09/11/2012 Page: 31 of 49

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

31 Case: 11-15101 Date Filed: 09/11/2012 Page: 32 of 49

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.

32 Case: 11-15101 Date Filed: 09/11/2012 Page: 33 of 49

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,

33 Case: 11-15101 Date Filed: 09/11/2012 Page: 34 of 49

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

34 Case: 11-15101 Date Filed: 09/11/2012 Page: 35 of 49

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.

35 Case: 11-15101 Date Filed: 09/11/2012 Page: 36 of 49

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

36 Case: 11-15101 Date Filed: 09/11/2012 Page: 37 of 49

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.

37 Case: 11-15101 Date Filed: 09/11/2012 Page: 38 of 49

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.

38 Case: 11-15101 Date Filed: 09/11/2012 Page: 39 of 49

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

39 Case: 11-15101 Date Filed: 09/11/2012 Page: 40 of 49

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

40 Case: 11-15101 Date Filed: 09/11/2012 Page: 41 of 49

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

41 Case: 11-15101 Date Filed: 09/11/2012 Page: 42 of 49

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

42 Case: 11-15101 Date Filed: 09/11/2012 Page: 43 of 49

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

43 Case: 11-15101 Date Filed: 09/11/2012 Page: 44 of 49

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

44 Case: 11-15101 Date Filed: 09/11/2012 Page: 45 of 49

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

45 Case: 11-15101 Date Filed: 09/11/2012 Page: 46 of 49

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

46 Case: 11-15101 Date Filed: 09/11/2012 Page: 47 of 49

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

47 Case: 11-15101 Date Filed: 09/11/2012 Page: 48 of 49

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.

48 Case: 11-15101 Date Filed: 09/11/2012 Page: 49 of 49

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.