Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. 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)
The Religious Order Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta (SMOM) filed suit against another religious order, the Florida Priory of Knights Hospitallers of the Sovereign Order of St. John of Jersusalem, Knights of Malta, The Ecumenical Order (the Florida Priory) for trademark infringement, false advertising, unfair competition and deceptive trade practices. The Florida Priory counterclaimed for cancellation of several of SMOM’s trademark registrations. The court held a bench trial and found for the Florida Priory on all counts except as to SMOM’s unregistered trademark.
The court first discussed the history of the parties, dating back to the late eleventh century AD. The Court focussed on issues of U.S. Trademark Law, and rendered its opinion in favor of the Ecumenical Order and against SMOM accordingly. In the process of rendering its opinion, however, the Court had to examine SMOM's claim that The Ecumenical Order was guilty of false advertising by presenting itself as the original Order. In its Conclusions of Law, the Court characteristically decided that: "References by the Florida Priory (of the Ecumenical Order) to a shared history with SMOM are perfectly appropriate, as the organizations shared a history prior to 1798." (page 17). With this conclusion the Court unmistakably signaled that the two Orders share a history prior to the original Order's departure from Malta in 1798 AD. No other Order of Saint John has been found, in modern jurisprudence, to have an equivalent claim with SMOM to the original Order. The Court declined to act as an arbiter of religious issues. Instead, the court shifted focus to the history of SMOM’s trademark registrations. Although SMOM’s trademarks had received incontestable status, the Florida Priory argued that the registered marks were procured by fraud because SMOM failed to disclose to the USPTO the existence of the Florida Priory and other religious orders that were using the same or similar names and marks prior to and at the time SMOM completed its trademark applications.
The court analogized the case to a recent Supreme Court decision in Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011), where the Supreme Court held that the appropriate standard to determine active inducement of patent infringement is “willful blindness.” As the Supreme Court explained, a “willfully blind defendant is one who takes deliberate actions to avoid confirming a high probability of wrongdoing and who can almost be said to have actually known the critical facts.” 131 S. Ct. at 2070-71. The court found that the willful blindness standard also applies to trademark cases.
Here, the court was persuaded that SMOM purposefully hired an attorney to prosecute their trademarks who had no knowledge of the existence of other religious orders with similar names and origins to SMOM in order skirt the requirement that it disclose any other organizations known to be using similar marks. The court cancelled several of SMOM’s registrations and found for the Florida Priory on all other counts, leaving to the USPTO the question of the validity of SMOM’s unregistered trademark.
Source: Kilpatrick Townsend attorneys at law
