Friday, October 16, 2015

"The Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta alleges that the Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, the Ecumenical Order is infringing its registered service marks in violation of the Lanham Act, 15 U.S.C. § 1114, and Florida law."

Oh they're at it again... This is the latest in the running dispute between these parties. Judge William Pryor reverses again: "On remand, the district court misapplied several factors in its analysis of likely confusion, incorrectly assessed the Florida Priory’s defense of prior use, relied on historical testimony that we previously deemed inadmissible, and misinterpreted our instructions about consulting facts outside the record. Because the district court erred again, we reverse again. But we deny the Sovereign Order’s request to reassign the case to a different district judge."

The dispute:

This litigation involves five of the Sovereign Order’s registered service marks: one design mark and four word marks. The Sovereign Order’s design mark is an eight-pointed Maltese cross on a shield:

The Sovereign Order’s word marks are:
Sovereign Military Hospitaller Order of St. John of Jerusalem of Rhodes and of Malta
Knights of Malta
Hospitallers of St. John of Jerusalem
Order of St. John of Jerusalem
The Sovereign Order’s design mark and its first two word marks became “incontestable” in 2008 and 2009. That is, the Sovereign Order filed an affidavit with the United States Patent and Trademark Office attesting that it used the marks continuously for five years and satisfied the other statutory criteria for incontestability. See 15 U.S.C. § 1065.
The Sovereign Order alleges that the Florida Priory’s name and symbol infringe its five registered service marks. The Florida Priory’s name—“Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, the Ecumenical Order”—is unregistered. The Florida Priory’s symbol is a white cross on a red shield, centered on a white Maltese cross with a red crown above it:
There's also some upsetness with the district judge:
In this second appeal, the Sovereign Order complains about several comments that the district judge made on remand. For instance, the Sovereign Order complains that the district judge again impugned its motives, speculating that “it’s obvious what’s going on here, that [the Sovereign Order] waited five years until [its marks] became [i]ncontestable where [it] knew all along [that] the defendant was using this name.” Tr. 3. Additionally, the district judge told the parties, “[A]s I looked over what the other senior judges are doing, a number of them say we don’t want any trademark cases, and I thought, you know, that’s probably a good idea.” Id. at 4.
 Ultimately, the case is not reassigned but the district court is reversed again.

If this is too much for a Friday, here is your moment of zen:


Rumpole said...

I used to have an in on all the Malta cases. But no more.

Anonymous said...

Judge Ryskamp correctly characterized this case from the beginning:

"The parties present themselves as Christian charities. The Court struggles with the parties’ characterizing themselves in that manner, however. The amounts of money each party has raised for charitable purposes are unimpressive, which leads the Court to believe that the members of both [the Sovereign Order] and the [Florida Priory] 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. *** It just baffles me that two charitable groups are spending their charitable money suing one another and wasting all . . . these funds on litigation."