THIS published opinion released by the Eleventh Circuit last week had a Da Vinci Code feel to it.
The Plaintiff/Appellant was a religious order of the Roman Catholic Church. The Defendant/Appellee was "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." The two organizations have similar roots that the opinion discusses in some detail. The dispute related to allegedly confusingly similar marks used by both organizations.
The district court cancelled four of the Plaintiff's marks for fraud on the Patent and Trademark Office. The district court found the only remaining service mark visually dismissal to the defendants mark and rejected the Lanham Act claims for that remaining mark. Finding no likelihood of confusion, the district court also denied the Plaintiff's state law claims.
Fraud on the PTO
The Eleventh Circuit noted that "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." The Eleventh Circuit discussed its prior law on the issue and held that "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."
The Eleventh Circuit also rejected the District Court's basis to support its finding of fraud. "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." …. "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….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."
For its final note on the fraud claim, the Eleventh Circuit stated "[t]here 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."
Lanham Act Infringement Claim
"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) 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)."
After describing the test it applies, the court held: "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. The district court should also conduct this analysis for Plaintiff Order’s word marks, which were improperly canceled for fraud."
Lanham Act False Advertising Claim
"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)." ... "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."
State Law Claims
"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."
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