California Trademark Attorney® Blog

Eleventh Circuit Sends Back Rival Orders Of Malta Trademark Infringement Case

September 19, 2012

Order_of_Malta.jpgCalifornia - The Eleventh Circuit last week issued a mixed ruling remanding a trademark infringement between two religious charitable organizations over the name "Order of Malta" back to a district court for further consideration.

The Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta, the plaintiff in the case, is a religious order of the Roman Catholic Church that undertakes charitable work internationally.

The Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, The Ecumenical Order, meanwhile, the defendant order, is also a charitable organization with an expressly ecumenical, rather than Catholic, association. It incorporated in Florida in 2005, and is associated with a parent organization which was first incorporated in the United States in 1911.

The plaintiff order sued the Florida Priory in July 2009 accusing it of trademark infringement and false advertising under the Lanham Act, as well as state law claims for unfair competition and trade practices. The district court ruled in favor of the Florida Priory on all counts.

The district court clearly erred, though, in evaluating the Florida Priory's counterclaim that the plaintiff order committed fraud on the U.S. Patent and Trademark Office, the Eleventh Circuit ruled on Sept. 11. The appeals court reversed the cancellation of the four word marks, Registration Numbers 2,783,933, 2,783,934, 2,915,824 and 3,056,803.
"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," the circuit court said.

It also vacated the district court's ruling on the state law claims, but affirmed the district court's finding on the Lanham Act false advertising claim in favor of The Florida Priory.
The plaintiff order claims to have been founded in Jerusalem in the eleventh century. It relocated to the city of Acre and later to the island of Rhodes, where it was known as the Knights of Rhodes. After spending about two hundred years on the island of Rhodes, the group relocated to Malta, becoming the Order of Malta.