[PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT

________________________

No. 11-15101 

________________________

D.C. Docket No. 9:09-cv-81008-KLR

SOVEREIGN MILITARY HOSPITALLER ORDER OF 

SAINT JOHN OF JERUSALEM OF RHODES AND OF MALTA, 

llllllllllllllllllllllllllllllllllllllllPlaintiff - Counter

llllllllllllllllllllllllllllllllllllllllDefendant - Appellant,

versus

THE FLORIDA PRIORY OF THE KNIGHTS HOSPITALLERS OF THE 

SOVEREIGN ORDER OF SAINT JOHN OF JERUSALEM, KNIGHTS 

OF MALTA, THE ECUMENICAL ORDER, 

llllllllllllllllllllllllllllllllllllllllDefendant - Counter

llllllllllllllllllllllllllllllllllllllllClaimant - Appellee.

________________________

Appeal from the United States District Court

for the Southern District of Florida

________________________

(September 11, 2012)

Before WILSON, PRYOR, and MARTIN, Circuit Judges.

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WILSON, Circuit Judge:

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 

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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. 

The district court ruled in favor of The Florida Priory on all counts of 

Plaintiff Order’s complaint and The Florida Priory’s counterclaim. This appeal 

followed, and after thorough consideration, we affirm in part, reverse in part, and 

vacate in part the judgment below and remand for further proceedings.

I. Facts and Procedural History

Starting on February 28, 2011, the district court held a three-day bench trial 

on the claims and counterclaims asserted by the parties. The vast majority of 

testimony related to the histories of the organizations involved, including The 

Ecumenical Order. Because of the fact-intensive nature of this case, we 

summarize the trial proceedings and the resulting findings of fact and conclusions 

of law by the district court, which were reported in a published opinion. See 

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Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of 

Malta v. The 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).

A. Plaintiff Order’s History and Service Mark Registrations

1. Trial Testimony Regarding History

As part of its case, Plaintiff Order presented the testimony of Geoffrey 

Gamble, a representative of Plaintiff Order, and Dr. Theresa Vann, an expert 

historian, to trace the history of Plaintiff Order from its founding to present. 

According to these witnesses, Plaintiff Order was founded in Jerusalem in the 

eleventh century. (D.E. 144, 37:11–12.) It relocated to the City of Acre and later 

to the island of Rhodes, where it was known as the Knights of Rhodes. (Id. at 

37:12–16.) After spending about two-hundred years on the island of Rhodes, the 

group located in Malta (becoming the Order of Malta), which had been ceded for 

the Order’s use by Emperor Charles V. (Id. at 37:16–18.) Organizationally, 

multiple priories—a term which Gamble explained references canonical religious 

bodies where people are housed, (id. at 48:25–49:1)—existed across Europe.1

 At 

some point there existed priories in Poland, Bavaria, and England, though the 

 1 Depending on the size, these bodies could be classified as sub-priories, priories, or a 

grand priory. (D.E. 114, 49:6–10.)

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Polish priory had been lost when Poland was partitioned. (D.E. 145,110:12–18.)

Around 1797 or 1798, the Order of Malta was suffering financial hardship 

and sought monetary support from Czar Paul I of Russia. (Id. at 108:20–109:3.) 

Two knights went to Russia seeking to obtain the property of the former Polish 

priory, and out of this visit came an agreement to create a Catholic-affiliated 

Russian priory. (Id. at 110:25–111:9.) 

In 1798, Napoleon expelled the Order of Malta and its knights from the 

island of Malta, and the organization relocated to present-day Italy. (D.E. 144, 

37:17–19; D.E. 145, 111:13–25.)2

 The Order of Malta’s Grand Master at the time, 

Ferdinand von Hompesch zu Bolheim, wrote to Czar Paul I for support after this 

expulsion. (D.E. 145, 111:12–18.) Czar Paul I, in response to the request for 

assistance and “for reasons best known to himself,” created a non-Catholic order 

for the non-Catholic members of his court. (Id. at 112:6–10.) Czar Paul I then had 

the two priories—the Catholic Russian priory and the non-Catholic priory—

declare von Hompesch deposed, and Czar Paul I established himself as Grand 

Master.3

 (Id. at 112:10–12.) Czar Paul I was assassinated in 1801, and his son 

 2 Dr. Vann testified that many of the Knights of Malta returned to their homeland, but she 

was unsure of how many (if any) specifically fled to Russia. (D.E. 145, 112:1–4.)

3 Gamble and Dr. Vann clarified that this was a de facto title, since Czar Paul I did not 

meet any of the requirements to be Grand Master. (D.E. 145, 112:20–113:7.)

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Alexander became Czar of Russia. (Id. at 114:16–17.)

In the early 1800s, the two Russian priories, along with the other European 

priories, elected Giovanni Battista Tomassi as Grand Master. (Id. at 118:16–19.) 

Czar Alexander I did not entertain the activities of either of the two Russian 

priories and in 1810 abolished them by taking away their lands. (Id. at 115:6–8, 

116:15–22.) 

Grand Master Tomassi served for only a couple of years, and the next Grand 

Master was not confirmed by the Pope until 1879. (Id. at 123:3–7.) The title of 

Grand Master was in abeyance for that period because of the warfare in Europe 

and, importantly, because Plaintiff Order was without land, a headquarters, or 

revenue. (Id. at 121:16–122:16.) The Order utilized that interim period to redefine 

its responsibilities and focus on its hospitaller, rather than its military, activities. 

(Id. at 119:24–120:5, 122:18–23.) Likewise, over the past century, Plaintiff Order 

has served to provide hospital accommodations and serve as a religious order of 

the Catholic Church. (Id. at 124:3–6.) It is currently headquartered in Rome. (Id.)

Plaintiff Order began operating in the United States in 1926 or 1927 when it 

established the American Association in New York. (D.E. 144, 90:11–12.) Later, 

Plaintiff Order established the Western Association, based in San Francisco, and 

the Federal Association, based in Washington, D.C. (Id. at 106:7–9, 107:8–10.)

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There are about 3000 Knights and Dames of Plaintiff Order within the United 

States. (Id. at 190:23.)

2. Service Mark Registrations

Plaintiff Order has obtained the following registrations for its service marks:

Registration No. Mark First Use in 

Commerce Date

Registration 

Date

2,799,898 12/31/1926 12/30/2003

2,783,933 SOVEREIGN 

MILITARY 

HOSPITALLER 

ORDER OF ST. 

JOHN OF 

JERUSALEM OF 

RHODES AND 

OF MALTA

12/31/1926 11/18/2003

2,783,934 KNIGHTS OF 

MALTA

12/31/1926 11/18/2003

2,915,824 HOSPITALLERS 

OF ST. JOHN OF 

JERUSALEM

4/28/1927 1/4/2005

3,056,803 ORDER OF ST. 

JOHN OF 

JERUSALEM

4/28/1927 2/7/2006

The applications for these service marks were executed by Dean Francis Pace, a 

member of Plaintiff Order. He attested on each application that he was authorized 

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to execute the application, that he believed Plaintiff Order to be the owner of the 

specific mark, that he believed Plaintiff Order was entitled to use the mark in 

commerce, and that to the best of his knowledge no other entity had the right to use 

a similar mark. (D.E. 127-2, 69, 86–87.) After some back and forth with the 

PTO,4 Plaintiff Order’s marks were registered.

B. The Florida Priory’s History and Relevant Service Mark 

Registrations

1. Trial Testimony Regarding History

The testimony about the origins of The Florida Priory came largely from 

Nicholas Papanicolaou, the current Prince Grand Master of The Ecumenical Order 

(parent organization of The Florida Priory). His testimony of history up until 

Napoleon’s invasion of Malta is in accord with the version of events presented by 

Plaintiff Order’s witnesses. The accounts of history differ beginning around 1798. 

According to Papanicolaou, after Napoleon invaded and expelled the knights from 

Malta, the knights relocated all across Europe. (D.E. 146, 21:14–20.) 

Approximately three-hundred knights ended up in Russia, and consistent with the 

procedures of the Order of Malta, their sixteen-person electoral college elected 

 4 The examining attorney of the PTO found a collective membership mark previously 

registered by an affiliate of The Ecumenical Order. (D.E. 127-2, 76–77.) Plaintiff Order was 

able to distinguish that mark and successfully register its service marks.

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Czar Paul I5 as the new Grand Master. (Id. at 21:18–222:5.) Czar Paul I instituted 

three fundamental organizational changes: (1) the Grand Master was not required 

to be a cleric, (2) titles could be passed hereditarily, and (3) the order was open to 

non-Catholics. (Id. at 29:2–23.)

Panpanicolaou testified that around this time the Order of Malta ceased to 

exist as it had prior to 1798. (Id. at 24:3–4.) The Order of Malta no longer had 

territory, and the relocation of many of its knights into Russia meant that the 

Russian Order, which had elected Czar Paul I as Grand Master, was the legitimate 

continuation of that group. (Id. at 25:3–10.) After the assassination of Czar Paul I, 

his son Alexander became protector of this Russian order. (Id. at 22:6–17.) At 

that time, the Russian order was composed of two priories: the Catholic-affiliated 

Polish Grand Priory and the non-Catholic Russian Grand Priory. (Id. at 22:11–17.) 

In order to secure alliances that were required to take on Napoleon, Alexander 

returned the Polish Grand Priory to the Pope. (Id. at 23:9–13.)

The return of the Catholic priory marked the origin of the organization that 

is now Plaintiff Order. (Id. at 25:3–10.) The non-Catholic Russian Grand Priory 

persisted in Russia until the Bolshevik revolution, at which time the headquarters 

was moved to the United States. (Id. at 25:11–16.) This organization eventually 

 5 Although Papanicolaou refers to Russia’s leader as Emperor Paul I, we use the title Czar 

for the sake of consistency with Dr. Vann’s testimony.

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became known as The Ecumenical Order, and it had its first meeting in the United 

States on January 10, 1908, as memorialized in its minutes. (Id. at 25:23–26:6.) 

In January of 1911, The Ecumenical Order incorporated in New Jersey 

under the name “The Knights of Malta, Inc.” (the New Jersey Corporation).6

 (D.E. 

25-1, Exh. 2; D.E. 146, 40:2–9.) A companion and successor organization to the 

New Jersey Corporation was formed in Delaware in August of 1956 under the 

name “Sovereign Order of Saint John of Jerusalem, Inc.” (the Delaware 

Corporation). (D.E. 25-1, Exh. 3; D.E. 146, 37:7–10; 75:17–25.) The late 1970s 

brought turmoil to the group, and in 1981, The Ecumenical Order severed ties with 

the leadership of the Delaware Corporation. (D.E. 146, 47:16–51:25.) The 

Ecumenical Order raises funds and undertakes charitable activities notwithstanding 

its present unincorporated status. Approximately sixty percent of The Ecumenical 

Order’s members are Catholic. (D.E. 145, 24:22–23.)

The Florida Priory began operating as early as 1977. (D.E. 146, 7:1, 47:22–

48:3.) The Florida Priory has used the marks of its parent, The Ecumenical Order, 

since its founding. In 2005, The Florida Priory incorporated in Florida, (id. at 7:9), 

and its principal place of business is located in West Palm Beach.

2. Service Mark Registrations

 6 This corporation was administratively dissolved in 1989.

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In 1958, The Ecumenical Order (acting through the Delaware Corporation) 

obtained Registration No. 659,477, “SOVEREIGN ORDER OF SAINT JOHN OF 

JERUSALEM KNIGHTS OF MALTA,” as a collective membership mark, which 

indicates membership in an organization. This registration reflects that the 

collective membership mark was first used in commerce in January 1911. This 

registration remains active today.7

C. Purported Communications Between The Ecumenical Order 

and Plaintiff Order

The Florida Priory submitted three specific instances of communication 

among members of Plaintiff Order and The Ecumenical Order.8

 First, in 

November 1983, Grand Chancellor Thorbjorn Wiklund of The Ecumenical Order 

sent a letter on the organization’s letterhead to Plaintiff Order’s Rome 

headquarters. (D.E. 25-3, Exh. 7.) Through this letter, Wiklund alerted Plaintiff 

Order to a trademark dispute involving a corporation that registered a similar name 

 7 Although two of Plaintiff Order’s American groups petitioned to cancel this collective 

membership mark in the 1980s, that petition was dismissed with prejudice upon its withdrawal 

by the petitioning parties. (D.E. 25-3, Exh. 8.)

8 These three correspondences are in the record in support of The Florida Priory’s motion 

for summary judgment on Plaintiff Order’s claims. The district court relied on them largely to 

support The Florida Priory’s claim of fraud on the PTO. Some of these documents—particularly 

the letter from Guy Stair Sainty—are simply printouts from the Internet and, therefore, of 

questionable veracity. Nevertheless, we include them in the recitation of facts because, even if 

we consider them to be accurate depictions of the truth, they are insufficient to sustain a claim of 

fraud on the PTO, as discussed later. 

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in October 1979. (Id.) The letter requested assistance from Plaintiff Order in 

helping to stop the activities of the newly registered organization. (Id.)

Second, in April 2000, Guy Stair Sainty, a current member of Plaintiff 

Order, appears to have sent a letter to a member of The Ecumenical Order named 

Rick Joyner. (D.E. 26-1, 6–8.) Stair Sainty is presently a member of Plaintiff 

Order and serves on its committee on false orders. He is also the author of “The 

Self-Styled Orders of Saint John,” a publication in which he mentions the existence

of The Ecumenical Order. (Id.) Joyner, an author himself, has previously written 

Courage that Changed the World: The Extraordinary History of the Knights of St. 

John, which promotes The Ecumenical Order and its history. (Id. at 1–6.) Stair 

Sainty’s letter, sent after he came across Joyner’s book, informed Joyner that The 

Ecumenical Order is a modern-day invention with no connection to the eleventh 

century order (of which the only legitimate successor is Plaintiff Order). (Id. at 7.) 

Stair Sainty also included with the letter a copy of his publication in hopes of 

correcting Joyner’s perception of history. (Id.) At the time the letter was sent in 

2000, Stair Sainty was not a member of Plaintiff Order. (D.E. 144, 208:8–14; D.E. 

146, 152:12–15.)

In July 2000, Chancellor Prince Boudewijn de Merode, a member of 

Plaintiff Order, wrote a letter to Joseph Frendo Cumbo, former Prince Grand 

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Master of The Ecumenical Order. (D.E. 25-7, Exh. 13.) Cumbo was 

Papanicolaou’s predecessor and, in the letter, it was apparently acknowledged that 

The Ecumenical Order could dub knights. (Id.)

9

D. The District Court’s Ruling

1. Findings of Fact

The district court’s findings of fact recounted the histories of Plaintiff Order, 

The Ecumenical Order, and The Florida Priory. Most significant for this appeal, 

the district court found that up until 1798, Plaintiff Order and The Ecumenical 

Order shared a history through a common predecessor. Sovereign Military 

Hospitaller, 816 F. Supp. 2d at 1293–94 & n.1. Upon Napoleon’s invasion of 

Malta, the knights scattered, and some of them ended up in Russia. Id. at 1293. 

There, both a Catholic order and a non-Catholic order were established, and this is 

where the groups diverge. Id. at 1294. The Catholic Order in Russia is the

predecessor to Plaintiff Order, and the non-Catholic order is the predecessor to The 

Ecumenical Order (and, in turn, The Florida Priory). Id.

2. Conclusions of Law

The district court first examined The Florida Priory’s claim of fraud on the 

 9 The original letter is written in Dutch, and following its entry in the record is an 

unverified translation of its contents. Again, we assume this is an accurate translation because, 

accepting it as true, it still does not help to establish The Florida Priory’s claim of fraud.

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PTO. The district court canceled four of Plaintiff Order’s service mark 

registrations10 based on its finding that Plaintiff Order committed fraud in 

executing the oath that accompanies the federal registration applications. 

Sovereign Military Hospitaller, 816 F. Supp. 2d at 1299–1300. Specifically, the 

district court found that Plaintiff Order was aware of the domestic presence of The 

Ecumenical Order since as early as 1983 but failed to disclose that fact in its 

applications. Id. at 1300.

Next, the district court considered the Lanham Act claims, beginning with 

the infringement allegation. Because four marks had been canceled for fraud, this 

required only an examination of Plaintiff Order’s design mark, Registration No. 

2,799,898. The district court found that Plaintiff Order’s registered mark was 

visually dissimilar from The Florida Priory’s mark and, therefore, ruled there was 

no likelihood of confusion between the two. Id. at 1301. Regarding the false 

advertising claim, the district court decided that The Florida Priory could not be 

held liable for false statements because it did, in fact, share a pre-1798 history with 

Plaintiff Order. Id. at 1301–02.

On the state law claims, the district court evaluated the unfair competition 

 10 These marks were Registration Nos. 2,783,933 (“SOVEREIGN MILITARY 

HOSPITALLER ORDER OF ST. JOHN OF JERUSALEM OF RHODES AND OF MALTA”); 

2,783,934 (“KNIGHTS OF MALTA”); 2,915,824 (“HOSPITALLERS OF ST. JOHN OF 

JERUSALEM”); and 3,056,803 (“ORDER OF ST. JOHN OF JERUSALEM”).

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claims with regard to the marks it had canceled and found no likelihood of 

confusion. Id. at 1302. Because it found no likelihood of confusion between either 

of the parties’ marks and no merit to the false advertising claim, the district court 

denied Plaintiff Order’s FDUTPA claim. Id. at 1303.

II. Standard of Review

“After a bench trial, we review the district court’s conclusions of law de 

novo and the district court’s factual findings for clear error.” Proudfoot Consulting 

Co. v. Gordon, 576 F.3d 1223, 1230 (11th Cir. 2009). Specifically, we review for 

clear error the district court’s findings that a mark was procured by fraud, Citibank, 

N.A. v. Citibanc Grp., Inc., 724 F.2d 1540, 1544 (11th Cir. 1984), and that two 

marks are not likely to be confused, Dieter v. B & H Indus. of Sw. Fla., Inc., 880 

F.2d 322, 325 & n.2 (11th Cir. 1989). In the context of a false advertising claim, 

we similarly review for clear error the district court’s conclusion that a statement is 

not false. Osmose, Inc. v. Viance, LLC, 612 F.3d 1298, 1309 (11th Cir. 2010).

III. Discussion

Plaintiff Order raises multiple issues on appeal. First, it contests the 

cancellation of four registered service marks, which the district court found were 

procured by fraud. Plaintiff Order also contends that the district court committed 

reversible error in evaluating the merits of its Lanham Act infringement and false 

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advertising claims, as well as its state law claims. We address each in turn.

A. Fraud on the PTO

At any time, a party may petition to cancel a registered mark on the ground 

that the registration was procured by fraud, even if that mark has become 

incontestable. 15 U.S.C. §§ 1064(3), 1119. An applicant commits fraud when he 

“knowingly makes false, material representations of fact in connection with an 

application for a registered mark.” Angel Flight of Ga., Inc. v. Angel Flight Am., 

Inc., 522 F.3d 1200, 1209 (11th Cir. 2008). Fraud further requires a purpose or 

intent to deceive the PTO in the application for the mark. In re Bose Corp., 580 

F.3d 1240, 1243, 1245 (Fed. Cir. 2009); see also Angel Flight, 522 F.3d at 1210–

11 (affirming cancellation on the basis of the applicant’s purposeful failure to 

disclose a superior user of the mark). The party seeking cancellation on the basis 

of fraud must prove its claim by clear and convincing evidence. Angel Flight, 522 

F.3d at 1209. This is necessarily a heavy burden, and “any doubt must be resolved 

against the charging party.” Bose, 580 F.3d at 1243.

The district court found that Plaintiff Order committed fraud on the PTO 

through execution of the oath that accompanies a service mark application, which 

requires the applicant’s representative—in this case Dean Francis Pace—to attest 

to the following:

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The undersigned, being hereby warned that willful false statements and the 

like so made are punishable by fine or imprisonment, or both, under 18 

U.S.C. § 1001, and that such willful false statements may jeopardize the 

validity of the application or any resulting registration, declares that he/she 

is properly authorized to execute this application on behalf of the applicant; 

he/she believes the applicant to be the owner of the trademark/service mark 

sought to be registered, or, if the application is being filed under 15 U.S.C. 

§ 1051(b), he/she believes applicant to be entitled to use such mark in 

commerce; to the best of his/her knowledge and belief no other person, firm, 

corporation, or association has the right to use the mark in commerce, either 

in the identical form thereof or in such near resemblance thereto as to be 

likely, when used on or in connection with the goods/services of such other 

person, to cause confusion, or to cause mistake, or to deceive; and that all 

statements made of his/her own knowledge are true; and that all statements 

made on information and belief are believed to be true.

(D.E. 127-2, 37); see also 15 U.S.C. § 1051(a)(3) (setting forth the applicant’s 

verification requirements); 6 McCarthy on Trademarks § 31:75 (4th ed. 2012) 

(“The type of fraud allegation that has given rise to the largest number of cases is 

the charge that registrant signed the application oath knowing of use of the mark 

by others. . . . While such charges of fraud and nondisclosure have uniformly been 

rejected, litigants continue to pursue them vigorously . . . .”). 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. Sovereign 

Military Hospitaller, 816 F. Supp. 2d at 1298, 1300. 

Nonetheless, the district court canceled Plaintiff Order’s registered word 

marks based on Plaintiff Order’s failure to disclose the existence of The 

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Ecumenical Order to the PTO. According to the district court, Plaintiff Order 

knew of The Ecumenical Order’s domestic presence as early as 1983 and had a 

duty to disclose that fact in the application. The district court based this finding of 

knowledge on (1) the 1983 letter, written on The Ecumenical Order’s official 

letterhead, sent to Plaintiff Order’s headquarters abroad; (2) the letter from Stair 

Sainty to a member of The Ecumenical Order challenging its claimed connection 

to Plaintiff Order; and (3) the letter from de Merode to The Ecumenical Order 

expressing the view that the latter organization could dub knights.11 

To prove the fraud claim based on misrepresentations in the declaration 

oath, The Florida Priory was required to establish that Pace “was aware other 

organizations were using the . . . mark (either in an identical form or a near 

resemblance) and ‘knew or believed’ those other organizations had a right to use 

the mark.” Angel Flight, 522 F.3d at 1211 (analyzing a similar declaration). The 

declarant-focused text of the application oath requires the signatory’s good-faith, 

subjective belief in the truth of its contents. See, e.g., Bose, 580 F.3d at 1245 

(“Subjective intent to deceive . . . is an indispensable element in the [fraud] 

analysis.”); Marshak v. Treadwell, 240 F.3d 184, 196 (3d Cir. 2001) (“[A]pplicants 

 11 Although it is questionable whether these facts even establish that Plaintiff Order as an 

institution knew of the existence of The Ecumenical Order, we need not address the validity of 

these factual findings because the fraud claim fails even accepting that Plaintiff Order knew of 

The Ecumenical Order.

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attest[] only to their own subjective knowledge and belief.”); United Phosphorus, 

Ltd. v. Midland Fumigant, Inc., 205 F.3d 1219, 1227 (10th Cir. 2000) (“[W]e focus 

on the ‘declarant’s subjective, “honestly held, good faith” belief.’” (quoting San 

Juan Prods., Inc. v. San Juan Pools, Inc., 849 F.2d 468, 472 (10th Cir. 1988))); see 

also 6 McCarthy on Trademarks § 31:76 (“The oath is phrased in terms of a 

subjective belief such that it is difficult, if not impossible, to prove objective falsity 

and fraud so long as the affiant or declarant has an honestly held, good faith 

belief.”). This requirement is implicit in our holding in Angel Flight, where we 

upheld a district court’s cancellation of a mark because the declarant purposefully 

failed to disclose the right of others to use the mark at issue “even though he was 

aware organizations throughout the country were using the [mark] and had a right 

to do so.” 522 F.3d at 1210 (emphasis added). Unlike the situation in Angel 

Flight, 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.12

 12 We find it curious that the district court canceled four of Plaintiff Order’s marks even 

though it found that they were not likely to be confused with those of The Florida Priory. See 

Sovereign Military Hospitaller, 816 F. Supp. 2d at 1302–03. We have explained that fraud 

requires a showing that the applicant’s representative knew that other organizations were using 

the mark “either in an identical form or a near resemblance.” Angel Flight, 522 F.3d at 1211; see 

also Coach House Rest. v. Coach & Six Rests., 934 F.2d 1551, 1559 (11th Cir. 1991) (noting that 

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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. The Supreme 

Court held that knowledge, rather than deliberate indifference, was required to 

sustain a claim under § 271 and that “willful blindness” was sufficient to satisfy 

that knowledge element. Id. at 2068. Utilizing this concept, the district court 

explained that “[t]o the extent that a willful blindness standard applies here, the 

Court concludes that [Plaintiff Order]’s failure to inform Pace of the existence of 

[T]he Ecumenical Order is evidence of willful blindness on [Plaintiff Order]’s 

part.” 816 F. Supp. 2d at 1300. 

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. See 

 

a petitioner seeking to cancel a mark must prove “that the registered mark resembles petitioner’s 

mark”). This requirement is based on the explicit language of the oath, in which the declarant 

affirms that “to the best of his/her knowledge and belief no other [entity] has the right to use the 

mark in commerce, either in the identical form thereof or in such near resemblance thereto as to 

be likely, when used on or in connection with the goods/services of such other person, to cause 

confusion, or to cause mistake, or to deceive.” Thus, even if Pace actually knew about other 

organizations using the mark—which he indisputably did not—the district court’s own finding 

on the confusion issue is inconsistent with its disposition of the fraud claim.

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21

Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 439 n.19, 104 S. 

Ct. 774, 787 (1984). The Florida Priory has not pointed to any authority to 

establish the sort of “historic kinship” that may justify translation of a patentinfringement standard into the mark-application context. Id. at 439, 104 S. Ct. at 

787; see also United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97, 39 S. 

Ct. 48, 50 (1918) (noting “little or no analogy” between trademark rights and those 

of patent or copyright); McLean v. Fleming, 96 U.S. 245, 254 (1877) (“Property in 

the use of a trade-mark . . . bears very little analogy to that which exists in 

copyrights or in patents for new inventions or discoveries . . . .”). The Florida 

Priory does not make an argument to otherwise justify the district court’s use of 

this standard. To the extent the district court relied on the inapplicable “willful 

blindness” standard to find the required intent to deceive the PTO, it erred.13

There 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. See Bose, 

580 F.3d at 1246 (“There is no fraud if a false misrepresentation is occasioned by 

 13 In this context, the district court also wrote that “[e]ven if [Plaintiff Order] disputes 

actual knowledge, no adequate explanation has been offered for [its] subjective ignorance” of 

The Ecumenical Order and The Florida Priory. Sovereign Military Hospitaller, 816 F. Supp. 2d 

at 1300. Analyzing the information that Plaintiff Order or Pace “should have known” 

impermissibly lowers the standard for fraud on the PTO, which contemplates the honestly held, 

good-faith belief of the declarant. See Bose, 580 F.3d at 1244.

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an honest misunderstanding or inadvertence without a willful intent to deceive.”). 

Here, The Florida Priory did not put forth any evidence to establish that Pace—or 

Plaintiff Order, for that matter—knew or believed that The Ecumenical Order or 

The Florida Priory had a superior right to the marks at issue. See Angel Flight, 522 

F.3d at 1211; Citbank, 724 F.2d at 1545 (rejecting a defendant’s fraud claim where 

the plaintiff was the “senior use[r] of th[e] term”); see also Sovereign Order of 

Saint John v. Grady, 119 F.3d 1236, 1241 (6th Cir. 1997) (“[A] valid trademark 

registration requires only that the registrant ‘believe’ himself to be the owner of the 

mark.” (quoting 15 U.S.C. § 1051)). Even assuming knowledge of The 

Ecumenical Order as of 1983, Plaintiff Order’s relevant service mark registrations 

provide that the marks were first used in commerce in 1926 and 1927.14 The bare 

knowledge that The Ecumenical Order existed as of 1983 does not undermine 

Plaintiff Order’s claim to be the senior user of those marks because, even knowing 

of The Ecumenical Order’s existence, Plaintiff Order could justifiably believe that 

its marks were superior based on their first use dating back to the 1920s. See Star 

Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008) 

(explaining that even though circumstantial evidence may be used to prove intent, 

the evidence “must still be clear and convincing, and inferences drawn from lesser 

 14 Registration Nos. 2,783,933 and 2,783,934 listed a date of December 31, 1926. 

Registration Nos. 2,915,824 and 3,056,803 listed April 28, 1927.

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evidence cannot satisfy the deceptive intent requirement”). In any event, The 

Florida Priory failed to proffer any evidence to show that Pace (or Plaintiff Order) 

believed that The Ecumenical Order had a right to use the objected-to marks in 

commerce. This is fatal to the claim of fraud. See Angel Flight, 522 F.3d at 

1210.15

In sum, the district court clearly erred in finding that Plaintiff Order 

fraudulently obtained its marks. The district court’s evaluation of the fraud claim 

was factually unsupported and legally incorrect, and we reverse the cancellation of 

the four marks.

B. Lanham Act Infringement

Plaintiff Order next challenges the district court’s finding that its registered 

design service mark was not confusingly similar to the identifying design used by 

The Florida Priory. 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) 

 15 It is also worth pointing out that, looking at the broader picture, no entity in this 

scenario has even been misled by the purported nondisclosure at issue. When Plaintiff Order 

applied for federal service mark protection, the examining attorney at the PTO found a mark 

registered by The Delaware Corporation—an entity associated with The Ecumenical Order—and 

required Plaintiff Order to distinguish itself from that prior registration, which Plaintiff Order 

successfully did. The PTO therefore knew about the prior uses that Pace and Plaintiff Order 

allegedly withheld from it, removing the possibility that the PTO was misled by the application.

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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). In determining whether two marks 

are likely to be confused, the district court must consider seven factors: (1) the type 

of mark, (2) the similarity of the marks at issue, (3) the similarity of the services 

the marks represent, (4) the similarity of the parties’ service outlets and customers, 

(5) the nature and similarity of the parties’ advertising media, (6) the defendant’s 

intent, and (7) any actual confusion. Frehling Enters. v. Int’l Select Group, Inc., 

192 F.3d 1330, 1335 (11th Cir. 1999); Coach House Restaurant, Inc. v. Coach & 

Six Restaurants, Inc., 934 F.2d 1551, 1561 (11th Cir. 1991). “The extent to which 

two marks are confusingly similar cannot be assessed without considering all seven 

factors to ensure that the determination is made in light of the totality of the 

circumstances.” Wesco Mfg., Inc. v. Tropical Attractions of Palm Beach, Inc., 833 

F.2d 1484, 1488 (11th Cir. 1987). At the same time, we recognize that a district 

court need not “specifically mention each of the seven factors in order to avoid 

reversal on appeal.” Univ. of Ga. Athletic Ass’n v. Laite, 756 F.2d 1535, 1542 

(11th Cir. 1985); see also Wesco Mfg., 833 F.2d at 1489 (“[W]e may affirm an 

ultimate finding on the issue of confusion that is not clearly erroneous, even when 

the district court fails to consider all seven factors.”). Ultimately, our ability to 

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consider the district court’s likelihood-of-confusion determination depends on 

whether the lower court found sufficient facts to permit meaningful appellate 

review. See Wesco Mfg., 833 F.2d at 1489. If it has not, then we may remand for 

the district court to conduct the proper analysis. Id.

In evaluating whether Plaintiff Order’s service mark was likely to be 

confused with The Florida Priory’s unregistered symbol, the district court 

described the visual appearance of the two graphics and then stated: “The Florida 

Priory’s design contains two crosses, whereas [Plaintiff Order]’s registered mark 

contains only one. [Plaintiff Order]’s mark contains no crown. These marks are 

easily distinguishable, thus removing any possibility for consumer confusion.” 

Sovereign Military Hospitaller, 816 F. Supp. 2d at 1301. Thus, it appears as 

though the district court’s entire analysis of the likelihood of confusion was based 

on the visual dissimilarity of the marks—namely that The Florida Priory’s symbol 

contained a cross and crown that Plaintiff Order’s mark did not. The district court 

did not make any additional factual findings related to the infringement claim or 

address the applicability (or inapplicability) of any other factor germane to the 

infringement analysis. 

It is beyond any real dispute that the district court erred in focusing “solely 

on the degree of visual similarity between the two marks.” Wesco Mfg., 833 F.2d 

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at 1489. The other factors bearing on the likelihood of confusion are “[e]qually as 

significant as the general appearance of the trademarks.” Sun-Fun Prods., Inc. v. 

Suntan Research & Dev., Inc., 656 F.2d 186, 189 (5th Cir. Unit B Sept. 17, 1981) 

(quotation omitted). As such, when a district court “completely disregard[s] the 

proper analysis” in making its determination of confusion, we may vacate its ruling 

and remand for consideration of the claim using the proper framework. See Wesco 

Mfg., 833 F.2d at 1489. 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.16 The district court should 

also conduct this analysis for Plaintiff Order’s word marks, which were improperly 

canceled for fraud.

C. Lanham Act False Advertising

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). We have interpreted this 

 16 We express no opinion with regard to the ultimate outcome of this claim.

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language to require a plaintiff to demonstrate that: (1) the defendant’s statements 

were false or misleading; (2) the statements deceived, or had the capacity to 

deceive, consumers; (3) the deception had a material effect on the consumers’ 

purchasing decision; (4) the misrepresented service affects interstate commerce; 

and (5) it has been, or likely will be, injured as a result of the false or misleading 

statement. See Johnson & Johnson Vision Care, Inc. v. 1-800 Contacts, Inc., 299 

F.3d 1242, 1247 (11th Cir. 2002).

Plaintiff Order’s false advertising claim was based on its position that The 

Florida Priory does not share any history with, and has no connection to, the 

historic Order of Malta. It argues that The Florida Priory’s adoption of Plaintiff 

Order’s pre-1798 historical lineage and corresponding record of charitable 

activities is likely to deceive customers into contributing money to The Florida 

Priory. In assessing this claim, the district court was faced with the monumental 

task of adjudicating the accuracy of two competing versions of late-eighteenth-toearly-nineteenth century history. The testimony of Plaintiff Order’s witnesses 

advised that The Ecumenical Order—and therefore The Florida Priory—had no 

connection to Plaintiff Order and that no split ever occurred in the long history of 

Plaintiff Order as an organization. (D.E. 144, 39:5–7; D.E. 145, 124:7–10.) The 

testimony of The Florida Priory’s witnesses, however, sought to establish that as a 

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result of Napoleon’s 1798 invasion of Malta, the original Order of Malta 

essentially ceased to exist. They advised that other religious orders connected to 

that parent group sprung up, two of which are Plaintiff Order and The Ecumenical 

Order. In their eyes, The Florida Priory connects to The Ecumenical Order, which 

connects to the original Knights of Malta, just as Plaintiff Order is connected to the 

original Knights of Malta. 

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.

The main thrust of Plaintiff Order’s argument is that Papanicolaou’s 

testimony was based on his own view of history rather than any reliable evidence. 

It is true that Papanicolaou did not testify as an expert historian.17 He did testify, 

 17 We note that the district court never actually ruled on Plaintiff Order’s objection to 

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though, as Prince Grand Master of The Ecumenical Order and presented historyrelated testimony in much the same way Gamble did as Plaintiff Order’s 

representative. (D.E. 144, 35:2–4.) Papanicolaou stated that he possessed the 

archives of The Ecumenical Order; that he had read history books concerning the 

organization; and that he had previously seen the records of The Ecumenical 

Order, which are located in the United Kingdom, Malta, Canada, the United States, 

and Sweden. (D.E. 146, 17:8–18:4.) He testified that he had seen some of his 

organization’s post-1798 records in Russia. (Id. at 18:19–22.) The Florida Priory 

submitted to the district court the texts that Papanicolaou relied upon in arriving at 

his historical narrative. The district court took notice of their existence, stating “I 

may browse through th[e books], but I wouldn’t want to represent that I know 

everything.” (Id. at 16:2–19.) The Florida Priory also submitted the minutes of the 

1908 meeting of The Ecumenical Order in New York, which tend to support 

 

Papanicolaou’s testimony. The relevant colloquy is as follows:

[Counsel]: And, Your Honor, we object. The witness

has not been qualified to testify as an historian.

THE COURT: Well, you’ll be able to cross-examine him

on this. I don’t know if he’s looked at original records and

documents, but I’ll let him testify.

(D.E. 146, 17:8–12.) The objection was not renewed so as to permit the district court an 

opportunity to definitively rule on the propriety of the testimony or whether it was even expert in 

nature.

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Papanicolaou’s version of events.18 We are reluctant to conclude here that the 

head of an organization is incompetent to testify about the history of the 

organization, especially when the opposing party had the opportunity to fully 

cross-examine and challenge his credibility on all aspects of his testimony. In fact, 

Plaintiff Order, upon whom the burden of proof rested, itself relied upon its own 

non-expert—Geoffrey Gamble—to testify as an historian. (D.E. 144, 37:11–

40:19.) 

Plaintiff Order contends that the district court must be reversed because the 

testimony of its expert witness directly contradicts Papanicolaou’s account of the 

historical events that occurred around 1798. Although it is true that the witnesses 

presented contrasting views of history, we cannot say that the district court clearly 

erred. To be sure, both Gamble and Dr. Vann testified that they did not see any 

connection between The Ecumenical Order and Plaintiff Order. (D.E. 144, 39:2–

15; D.E. 145, 128:12–22, 129:14–18.) On cross-examination, however, Dr. Vann 

testified that she did not have any records from Russia after 1798, (D.E. 145, 

131:5–6), had not gone to Russia to look at records, (id. at 131:7–8), and had not 

 18 The minutes state that the attendees gathered “for the purpose of officially organizing, 

maintaining and perpetuating a Grand Priory of the Order of the Knights of Malta in these United 

States of America, continuing with certain modifications, the Sovereign Order of Saint John of 

Jerusalem as it was constituted under the 70th Grand Master, H.I.M. Paul I, Emperor of Russia.” 

(D.E. 25-11 Exh. 16.)

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asked to see The Ecumenical Order’s records, (id. at 131:8–10). Dr. Vann also 

testified that the book upon which she relied was published by Plaintiff Order. (Id.

at 132:12–20.) 

Faced with all of this information, the district court’s decision was 

ultimately a matter of credibility in light of the documentary evidence presented. 

On the one hand, the district court had Papanicolaou, the head of The Ecumenical 

Order, who had read books and reviewed documents concerning the history of his 

organization. The district court also had the testimony of Joyner, a member of The 

Ecumenical Order, who had written a book based on his account of what he had 

read regarding his organization’s history. On the other hand, there was Dr. Vann, 

who has devoted her life to the study of Plaintiff Order and has reviewed original 

documents and published texts concerning its history. In addition, the district court 

had the testimony of Gamble, who had published a historical booklet concerning 

Plaintiff Order. (D.E. 144, 40:17–19.) The district court, as is its prerogative 

when conducting a bench trial, weighed the testimony and came to a conclusion. 

See Castle v. Sangamo Weston, Inc., 837 F.2d 1550, 1559 (11th Cir. 1988) 

(“Assessing the weight of evidence and credibility of witnesses is reserved for the 

trier of fact.”). The cross-examination of Dr. Vann gives some basis for the district 

court’s apparent reluctance to accept that testimony as a definitive statement of 

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history, and there was no documentary evidence submitted that would otherwise 

satisfy Plaintiff Order’s burden of proving the absence of a connection between the 

groups. In the context of this bench trial, the district court chose from one of two 

positions, each of which was supported by trial testimony.

The federal courts do not sit as a final arbiter of historical fact, and a serious 

scholar would probably be reluctant to cite to a district court’s findings of fact as a 

definitive statement of history. Instead, the district court evaluates a case by 

considering the evidence presented to it. After carefully considering the trial 

transcript, we are not left with the “definite and firm conviction that a mistake has 

been committed.” Johnson & Johnson, 299 F.3d at 1246. Although the factual 

findings of the district court might not be the same as those that we would have 

made if presented with the same evidence, that alone does not provide a basis for 

reversal. See Anderson v. Bessemer City, 470 U.S. 564, 573–74, 105 S. Ct. 1504, 

1511 (1985) (“If the district court’s account of the evidence is plausible in light of 

the record viewed in its entirety, the court of appeals may not reverse it even 

though convinced that had it been sitting as the trier of fact, it would have weighed 

the evidence differently.”). In the absence of any definitive evidence that 

establishes that the parties are not connected, we must affirm the district court’s 

disposition of this claim.

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Although Plaintiff Order’s trial objection preserved for appeal whether 

Papanicolaou was qualified to testify as a historian, see supra note 17, Plaintiff 

Order’s initial brief fails to address this argument. The brief merely mentions that 

Papanicolaou’s testimony “was not based on personal knowledge.” That portion of 

one sentence buried within thirty-six pages of legal argument fails to carry the 

weight that the dissent seeks to attribute to it. Plaintiff Order makes no argument 

that Papanicolaou had to be qualified as an expert in order to testify about the 

history of The Ecumenical Order. Plaintiff Order does not cite to even one of the 

Federal Rules of Evidence, much less Rule 702 governing expert testimony. There 

is no mention of Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 113 

S. Ct. 2786 (1993), or any allegation that the district court failed in its role as 

gatekeeper. Nor is there a citation to any case that considered the exclusion of 

non-expert testimony. Arguments not raised in a party’s initial brief are 

“considered abandoned.” United States v. Dockery, 401 F.3d 1261, 1262–63 (11th 

Cir. 2005). We are reluctant to reverse a district court “pursuant to legal theories 

[the plaintiff] did not outline, based on facts [the plaintiff] did not relate.” Adler v. 

Duval Cnty. Sch. Bd., 112 F.3d 1475, 1481 n.12 (11th Cir. 1997). An appellate 

court “has no duty to research and construct legal arguments available to a party.” 

Head Start Family Educ. Program, Inc. v. Coop. Educ. Serv. Agency, 46 F.3d 629, 

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34

635 n.9 (7th Cir. 1995).

D. State Law Unfair Competition and FDUTPA

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. In conducting this 

analysis, we caution the district court to limit its analysis to facts in the record and 

to refrain from consulting outside sources on the Internet that have not been cited, 

submitted, or recognized by the parties. Remand is proper here because it is 

unclear to what extent the district court relied on its own, extra-record Internet 

research into similarly named organizations, see Sovereign Military Hospitaller, 

816 F. Supp. 2d at 1303 & n.14, to conclude that The Florida Priory’s unregistered 

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35

marks are not likely to be confused with Plaintiff Order’s word marks. See 

Johnson v. United States, 780 F.2d 902, 910 (11th Cir. 1986) (“The trial judge may 

not . . . undertake an independent mission of finding facts ‘outside the record of a 

bench trial over which he [presides].’” (quoting Price Bros. Co. v. Phila. Gear 

Corp., 629 F.2d 444, 447 (6th Cir. 1980)) (second alteration in original)). The 

websites that the district court identified were proffered by neither party, and 

Plaintiff Order had no opportunity to contest the validity of the information 

contained therein, rendering it an improper consideration in the confusion 

analysis.19

E. Reassignment on Remand

In its briefing and at oral argument, Plaintiff Order brought to our attention 

instances from the bench trial and the district court’s published findings of fact that 

disparage the parties, witnesses, or their work. In its findings of fact, the district 

court wrote that, although it understood that the parties presented themselves as 

Christian charities, it “struggle[d] with the parties’ characterizing themselves in 

that manner.” Sovereign Military Hospitaller, 816 F. Supp. 2d at 1294 n.2. The 

district court attributed this confusion to the “unimpressive” amount of money each 

group raised for charitable purposes, which led the court to believe that the 

 19 Again, we express no opinion on the ultimate outcome of these state law claims.

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36

members of both organizations “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.” Id. (quoting the judge’s comments in 

the trial transcript, D.E. 144, 131:19–20). During the trial, the judge opined that it 

was “tragic” that all Dr. Vann had done in her life was study the Knights of Malta 

and their records. (D.E. 145, 8:1–6.) He also expressed his disbelief that two 

charitable organizations would spend their time and money on litigation. (D.E. 

144, 34:5–7.)

These remarks are wholly inappropriate in the context of a judicial 

proceeding and a published judicial opinion. Although a judge is not required to 

check his or her sense of humor at the courthouse door, we must be mindful that 

the parties rely on the judge to give serious consideration to their claims. Litigants 

are understandably frustrated when they are subject to the sort of unnecessary 

belittling commentary about which the parties complain here.

Plaintiff Order seeks to invoke our supervisory authority to reassign this case 

to a different district judge on remand. See United States v. Torkington, 874 F.2d 

1441, 1446 (11th Cir. 1989) (per curiam). We have explained that reassignment is 

proper when a “trial judge has engaged in conduct that gives rise to the appearance 

of impropriety or a lack of impartiality in the mind of a reasonable member of the 

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37

public.” Id. In the absence of bias, we consider three factors in determining 

whether reassignment is justified: “(1) whether the original judge would have 

difficulty putting his previous views and findings aside; (2) whether assignment is 

appropriate to preserve the appearance of justice; [and] (3) whether reassignment 

would entail waste and duplication out of proportion to gains realized from 

reassignment.” Id. at 1447. We think the district court’s remarks, though 

offensive to both parties, do not rise to the level of conduct that warrants 

assignment to a different judge on remand. We are hard-pressed to surmise actual 

bias in favor of, or against, one party over the other. Moreover, we are confident 

that, on remand, both parties will be treated with the respect they deserve and that 

the district court will be able to freshly consider the remanded claims 

notwithstanding its previously expressed views. And, given the fact-intensive 

nature of this case, any reassignment would necessarily require duplication of 

resources expended by the parties and the court. Accordingly, we deny Plaintiff 

Order’s request for reassignment on remand.

IV. Conclusion

We conclude that the district court clearly erred in evaluating the claim that 

Plaintiff Order committed fraud on the PTO and reverse the cancelation of the four 

word marks, Registration Nos. 2,783,933; 2,783,934; 2,915,824; and 3,056,803. 

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38

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. In light of that 

disposition, we vacate the district court’s ruling on the state law claims. Finally, 

we affirm the district court’s finding on the Lanham Act false advertising claim in 

favor of The Florida Priory.

AFFIRMED IN PART, REVERSED IN PART, VACATED IN PART, 

AND REMANDED.

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PRYOR, Circuit Judge, concurring in part and dissenting in part:

I concur in the majority opinion with the exception of the resolution of the 

evidentiary issues as they relate to the claim of false advertising, from which I 

respectfully dissent. The district court rejected the claim of false advertising based 

on a finding that the Sovereign Military Order and the Florida Priory share a 

history, and the district court based that finding on the testimony of Nicholas 

Papanicolaou. Special dangers attend the introduction of testimony about history in 

judicial proceedings. A[W]hen a historian, whose methodology is unsound, is 

placed before a [factfinder], the historian has the ability to paint a picture of the 

past as he or she so desires. And this, in turn, has the potential to change and shape 

the way the public views, interprets, and understands the past.@ Holly Morgan, 

Comment, Painting the Past and Paying for It: The Demise of Daubert in the 

Context of Historian Expert Witnesses, 44 Wake Forest L. Rev. 265, 294B95 

(2009). The district court clearly erred when it found that the Sovereign Military 

Order and the Florida Priory share a history prior to 1798 because no competent 

evidence supports that finding. 

Under the Federal Rules of Evidence, three types of testimony are 

admissible in federal court. First, a witness may testify about a matter if he has 

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personal knowledge of that matter. Fed. R. Evid. 602. Second, a witness who is not 

testifying as an expert may offer opinion testimony if the opinion is A(a) rationally 

based on the witness=s perception; (b) helpful to clearly understanding the witness=s 

testimony or to determining a fact in issue; and (c) not based on scientific, 

technical, or other specialized knowledge within the scope of Rule 702.@ Fed. R. 

Evid. 701. Third, a Awitness who is qualified as an expert by knowledge, skill, 

experience, training, or education may testify in the form of an opinion or 

otherwise if@ four conditions described in Rule 702 are established. Fed. R. Evid. 

702. 

The Florida Priory understandably does not argue that Papanicolaou had 

personal knowledge of any of the events between 1798 and the early twentieth 

century that were the subject of his testimony. Papanicolaou=s testimony about the 

arcane history concerning the evolution of the Ecumenical Order from the original 

Knights of Malta instead would have to be based on Aspecialized knowledge@ of 

history. Accordingly, the rules regarding expert opinion governed the admissibility 

of Papanicolaou=s testimony about history, but this district court considered 

Papanicolaou’s testimony without qualifying him as an expert.

Contrary to the assertion in the majority opinion, the Sovereign Military 

Order did not abandon its argument that Papanicolaou=s testimony was

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41

inadmissible. The Sovereign Military Order devoted over five pages of its initial 

brief to the argument that the district court erred when it rejected the claim of false 

advertising based on a finding that the parties had a shared history. The Sovereign 

Military Order explained as follows that no competent evidence supported that 

finding:

There is no factual support in the record for concluding that the 

Order and the Priory have a shared history prior to 1798, or, indeed, 

any shared history at all. And because there was no evidence to 

support the court’s shared-history finding, there certainly was not the 

substantial evidence necessary for this Court to affirm that finding.

More than this, the trial record lacks any reliable evidence 

speaking to the history of the [Ecumenical Order] and the [Florida] 

Priory, a separate matter from whether that history is shared with the 

Order. The statements in the District Court opinion outlining the 

[Ecumenical Order]’s history rely on two primary sources: the trial 

testimony of Mr. Papanicolaou, the Priory’s head, and the pre-trial 

declaration of Mr. Papanicolaou. First of all, Mr. Papanicolaou’s 

submissions establish no more than Mr. Papanicolaou’s view of 

history. The evidence he offered at trial with respect to the history of 

the EO and the Priory was not based on personal knowledge. The 

same is true of his pre-trial declaration, which was not admitted at 

trial and—as a result—was improperly relied on by the District Court. 

And, in any event, Mr. Papanicolaou’s unsubstantiated statements 

were flatly contradicted by the trial testimony of the Order’s historical 

expert and evidence submitted at trial.

Initial Brief of Sovereign Military Order at 47−48 (citations omitted). The 

Sovereign Military Order also explained at length in its reply brief that no 

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admissible evidence supported the finding of the district court that the Florida 

Priory and the Sovereign Military Order share a history before 1798:

The District Court summarily rejected the false designation of origin 

claim as a “non-starter” concluding that “[r]eferences by the Florida 

Priory to a shared history with [the Order] are perfectly appropriate, as 

the organizations shared a history prior to 1798.” But there was no 

persuasive evidence offered to support this conclusion, let alone the 

substantial evidence necessary to affirm this factual finding under the 

clearly erroneous standard on appeal.

. . .

[T]he [Florida] Priory’s account of history is based primarily on the 

testimony its head. But Mr. Papanicolaou is no more qualified to 

render judgment on the proper construction of history than any other 

person who has a read a history book. Moreover, his testimony was 

based primarily on his “memory,” and he admitted that his historical 

testimony was not based on a review of “any original documents,” but 

“books and bibliography[ies].”

Reply Brief of Sovereign Military Order at 19, 23 (citation omitted) (alteration in 

original).

The majority states that the Sovereign Military Order makes no argument 

that Papanicolaou had to be qualified as an expert in order to testify about the 

history of the Ecumenical Order, Majority Opinion at 33, but that assertion 

misapprehends both the briefs and the record. The majority acknowledges that the 

Sovereign Military Order objected at trial that Papanicolaou was not qualified as 

an expert in history and that the Sovereign Military Order argues on appeal that 

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Papanicolaou lacked personal knowledge to offer testimony regarding historical 

events that occurred long before he was born. What the majority fails to grasp is 

that these objections represent two sides of the same coin: an objection that a 

witness is not qualified as an expert is necessarily an objection that a witness lacks 

personal knowledge of the subject matter of his testimony, and an objection that a 

witness lacks personal knowledge is an objection that the witness can testify only if 

he is qualified as an expert or can offer lay opinion testimony. The Sovereign 

Military Order did not abandon its argument that Papanicolaou was not qualified as 

an expert to testify about the history of the Knights of Malta by arguing in its 

opening brief that Papanicoloau lacked personal knowledge to testify about that 

history. The district court admitted Papanicoloau=s testimony, over the objection of 

the Sovereign Military Order, even though the district court did not qualify him as 

an expert witness, and the Sovereign Military Order argues on appeal that 

Papanicolaou=s non-expert testimony is inadmissible because it is not based on 

personal knowledge.

And contrary to the argument of the majority opinion, the Sovereign 

Military Order was not required to “renew[]” its objection “so as to permit the 

district court an opportunity to definitively rule on the propriety of the testimony or 

whether it was even expert in nature.” Majority Opinion at 28−29, n.17. Federal 

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Rule of Civil Procedure 46 provides that “[a] formal exception to a ruling or order 

is unnecessary. When the ruling or order is requested or made, a party need only 

state the action that it wants the court to take or objects to, along with the grounds 

for request or objection.” Fed. R. Civ. P. 46. We long ago did away with the 

common law requirement of formal exceptions to the rulings of trial courts.

The majority also faults the Sovereign Military Order for failing to cite a 

Federal Rule of Evidence to support the elementary proposition that a witness 

ordinarily must have personal knowledge of the subject of his testimony, Majority 

Opinion at 33, but this argument does not turn on an interpretation of any Rule of 

Evidence. It is undisputed that Papanicolaou lacked personal knowledge about the 

subject of his testimony.

Hinting that two wrongs make a right, the majority obliquely suggests that 

we should overlook any error in admitting Papanicolaou’s testimony because the 

Sovereign Military Order called Geoff Gamble who offered testimony about the 

history of the Knights of Malta even though he was not qualified as an expert in 

history. But the Florida Priory did not object to Gamble’s testimony about history, 

and the district court did not rely on Gamble’s testimony when it found that the 

Sovereign Military Order and the Florida Priory share a history before 1798. 

Whether the district court abused its discretion when it admitted Gamble’s 

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testimony might be at issue if the Florida Priory had made an appropriate objection 

to that testimony at trial and the district court had relied on Gamble’s testimony to 

find that the Sovereign Military Order proved that the two organizations did not 

share a history before 1798, but this appeal does not present that issue.

The district court abused its discretion when it admitted Papanicolaou=s 

testimony based on “specialized knowledge” without qualifying him as an expert 

or ensuring that his testimony was reliable. The Sovereign Military Order objected 

at trial that Papanicolaou had Anot been qualified to testify as an historian,@ but the 

district court disregarded that objection and permitted Papanicolaou to testify 

concerning the history of the Ecumenical Order and the Knights of Malta. A[W]hen 

a party offers expert testimony and the opposing party raises a . . . challenge [under 

Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 113 S. Ct. 2786 

(1993)], the trial court must >make certain that [the] expert, whether basing [his] 

testimony upon professional studies or personal experience, employs in the 

courtroom the same level of intellectual rigor that characterizes the practice of an 

expert in the relevant field.=@ McClain v. Metabolife Int=l, Inc., 401 F.3d 1233, 

1237 (11th Cir. 2005) (alterations added) (quoting Kumho Tire Co., Ltd. v. 

Carmichael, 526 U.S. 137, 152, 119 S. Ct. 1167 (1999)). The district court makes 

this determination by applying Rule 702. See id. Rule 702 permits a district court 

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to admit expert testimony if it finds that Athe expert=s . . . specialized knowledge 

will help the trier of fact to understand the evidence or to determine a fact in issue,@

Athe testimony is based on sufficient facts or data,@ Athe testimony is the product of 

reliable principles and methods,@ and Athe expert has reliably applied the principles 

and methods to the facts of the case.@ Fed. R. Evid. 702. Although Athe task of 

evaluating the reliability of expert testimony is uniquely entrusted to the district 

court@ and Awe give the district court considerable leeway in the execution of its 

duty[,] [w]e will reverse when the district court=s Daubert ruling . . . amount[s] to 

an abuse of discretion that affected the outcome of the trial.@ United States v. 

Brown, 415 F.3d 1257, 1266 (11th Cir. 2005) (internal quotation marks and

citations omitted). AAn abuse of discretion can occur where the district court 

applies the wrong law, follows the wrong procedure, bases its decision on clearly 

erroneous facts, or commits a clear error in judgment.@ Id. And Aa district court 

abuses its discretion where it fails to act as a gatekeeper by essentially abdicating 

its gatekeeping role.@ Id. By failing to perform any analysis under Rule 702, the 

district court abdicated its gatekeeping function when it admitted Papanicolaou=s 

testimony. 

Rule 702 governs the admissibility of expert testimony regardless of whether 

the case is tried to a jury or a judge. Several of our sister circuits have ruled that 

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ADaubert=s requirements of reliability and relevancy continue to apply in a bench 

trial.@ Metavante Corp. v. Emigrant Sav. Bank, 619 F.3d 748, 760 (7th Cir. 2010);

see also Attorney Gen. of Okla. v. Tyson Foods, Inc., 565 F.3d 769, 779 (10th Cir. 

2009); Seaboard Lumber Co. v. United States, 308 F.3d 1283, 1302 (Fed. Cir. 

2002). Although Athe usual concerns of [Rule 702]Ckeeping unreliable expert 

testimony from the juryCare not present in [a bench trial], and our review must 

take this factor into consideration,@ Metavante Corp., 619 F.3d at 760; see also

Brown, 415 F.3d at 1268B69, the district court must nevertheless Aprovide more 

than just conclusory statements of admissibility or inadmissibility to show that it 

adequately performed its gatekeeping function,@ Metavante Corp., 619 F.3d at 760 

(internal quotation marks omitted). The district court abused its discretion when it 

failed to make any determination whether Papanicolaou=s testimony about history 

was reliable.

Despite the Areluctance@ of the majority Ato conclude . . . that the head of an 

organization is incompetent to testify about the history of the organization,@

Opinion at 30, we cannot disregard the Federal Rules of Evidence. The majority 

cites no authority for its Ahead of an organization@ or Ainstitutional knowledge@

exception to the requirement of Rule 602 that an ordinary witness must have 

personal knowledge of the subject of his testimony, and the exception makes no 

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sense. A judicially-crafted rule of evidence allowing the head of an organization, 

without personal knowledge or qualification as an expert, Ato testify about the

history of the organization@ would, for example, permit the governor of a state to 

testify in a voting rights case that there was no Ahistory of official discrimination in 

the state or political subdivision that touched the right of the members of the 

minority group to register, to vote, or otherwise to participate in the democratic 

process,@ Thornburg v. Gingles, 478 U.S. 30, 36B37, 106 S. Ct. 2752, 2759 (1986) 

(citation omitted), even though the governor did not have personal knowledge of 

events that occurred in the state long before he was born. The rule would also 

allow the chief of an Indian tribe in modern-day America to testify, in an action to 

establish aboriginal title to land, that Athe lands in question were . . . the ancestral 

home of@ his tribe, United States v. Santa Fe Pac. R. Co., 314 U.S. 339, 345, 62 S. 

Ct. 248, 251 (1941), and the tribe Ahad inhabited [those lands] from time 

immemorial,@ Mashpee Tribe v. Sec=y of Interior, 820 F.2d 480, 482 (1st Cir. 

1987). And, in the light of the broad language the majority employs, the rule might 

also permit the chief executive officer of Delta Airlines to testify, based on the 

institutional knowledge of the business, that a plane crash did not result from pilot 

error even though he holds a law degree instead of a degree in physics or 

aeronautical engineering.

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Whether the district court abused its discretion when it admitted and relied 

upon Papanicolaou’s testimony about history is no small matter. The competent

evidence in the record establishes that the Sovereign Military Order is an ancient 

Christian organization that operates charitable hospitals and performs good works 

around the globe. In the absence of Papanicolaou’s inadmissible testimony that the 

Florida Priory and the Sovereign Military Order share a history, the record makes 

plain that the Florida Priory has played no part in those good works.

The majority opinion constructs a straw man when it suggests that “a serious 

scholar would probably be reluctant to cite to a district court’s findings of fact as a 

definitive statement of history.” Majority Opinion at 32. The real issue is whether 

the district court based its findings about history on the testimony of a serious 

scholar. The district court cannot rely on the testimony of a lay witness about 

ancient history. The district court must instead rely on the testimony of an expert to 

make findings about history, which is the province of serious scholars. Instead of 

relaxing the rules concerning the admission of expert testimony when the subject 

matter of the testimony is history, we should ensure that those rules have been 

applied. The district court failed to do so, and we should reverse its ruling that the 

Sovereign Military Order failed to prove that the Florida Priory engaged in false 

advertising under the Lanham Act.

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