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Sovereign Military Hospitaller Order of v. the Florida Priory of the Knights Hospitallers of the Sovereign Order

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[PUBLISH]

Before WILSON, PRYOR, and MARTIN, Circuit Judges.

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 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.

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