Piano Factory Group, Inc., Sweet 16 Musical Properties, Inc. v. Schiedmayer Celesta Gmbh

United States Court of Appeals
for the Federal Circuit
______________________
PIANO FACTORY GROUP, INC., SWEET 16
MUSICAL PROPERTIES, INC.,
Appellants
v.
SCHIEDMAYER CELESTA GMBH,
Appellee
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE
UNDERSECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2020-1196
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
92061215.
______________________
Decided: September 1, 2021
______________________
ADAM REID STEPHENSON, Adam R. Stephenson, LTD.,
Scottsdale, AZ, argued for appellants. Also represented by
K EVIN HAWKES , Iptechlaw, Scottsdale, AZ.
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 2
MICHAEL J. STRIKER , Delray Beach, FL, argued for ap-
pellee.
J ENNIFER U TRECHT , Appellate Staff, Civil Division,
United States Department of Justice, Washington, DC, ar-
gued for intervenor. Also represented by BRYAN M .
BOYNTON, SCOTT R. MCI NTOSH , MELISSA N. P ATTERSON;
T HOMAS L. CASAGRANDE , ERICA J EUNG D ICKEY , CHRISTINA
J. HIEBER , T HOMAS W. K RAUSE, F ARHEENA Y ASMEEN
RASHEED Office of the Solicitor, United States Patent and
Trademark Office, Alexandria, VA.
______________________
Before P ROST , BRYSON, and STOLL , Circuit Judges.
BRYSON, Circuit Judge.
In this trademark case, the appellants, Piano Factory
Group, Inc., and Sweet 16 Musical Properties, Inc. (collec-
tively, “Sweet 16”), seek review of a decision of the Trade-
mark Trial and Appeal Board (“TTAB” or “Board”) that
ordered the cancellation of a trademark registration owned
by the appellants. We affirm.
I
A
Appellee Schiedmayer Celesta GmbH makes and sells
celestas, which are keyboard instruments that resemble
small pianos and are played like pianos. In both instru-
ments, depressing the keys activates felt hammers inside
the body of the instrument. The principal difference be-
tween the two instruments is that the felt hammers in ce-
lestas make tones by striking metal plates, while the felt
hammers in pianos strike metal strings.
The facts, as found by the TTAB, are as follows:
Schiedmayer Celesta is the successor to a line of German
companies that have sold keyboard musical instruments,
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 3
including pianos, clavichords, celestas, and glockenspiels,
under the Schiedmayer name for nearly 300 years. The
company asserts that it is the successor in interest to the
“Schiedmayer” trademark, that its predecessors have long
sold a variety of keyboard instruments under that name,
and that it continues to sell certain keyboard instru-
ments—celestas and glockenspiels—throughout the world.
The evidence before the TTAB showed that Schiedmayer
celestas have been sold to universities, conservatories, and
orchestras in the United States and elsewhere. The owner
of a Los Angeles piano store testified that her company has
offered sales, rentals, and service of Schiedmayer celestas
continuously for the past 50 years. Schiedmayer Celesta
GmbH v. Piano Factory Grp., Inc., Cancellation No.
92061215, 2019 WL 4322918, at *2–3 (Sept. 11, 2019).
In 1980, Georg Schiedmayer, the owner of the business,
which was then named Schiedmayer & Soehne, stopped
making pianos and renamed the company Schiedmayer
GmbH & Co. KG. At that time, Mr. Schiedmayer entered
into a joint venture with another German company, Rud.
Ibach GmbH, under which the Ibach company manufac-
tured pianos under the Schiedmayer name. That arrange-
ment ended quickly, however, and Mr. Schiedmayer shifted
his focus to making celestas. The “Schiedmayer” trade-
mark was not sold, assigned, or otherwise transferred to
Ibach or any other entity. At some point, the Ibach com-
pany entered into an agreement with the Kawai Company
under which Kawai produced some pianos carrying the
Schiedmayer name. That arrangement was not authorized
by Schiedmayer, however.1
1 Sweet 16 asserted below, and continues to assert
on appeal, that Mr. Schiedmayer transferred or assigned
trademark rights to Ibach or Kawai or both. The Board,
however, found there had been no such transfer or assign-
ment. Piano Factory, 2019 WL 4322918, at *2.
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 4
After Georg Schiedmayer died in 1992, his widow,
Elianne Schiedmayer, became the sole owner of
Schiedmayer GmbH & Co. KG. In 1995, she founded a new
company that became the appellee, Schiedmayer Celesta,
which continues to sell celestas worldwide.
Appellant Sweet 16 Musical Properties, Inc., acquired
the assets of Piano Factory Group, Inc., in 2006 and sells
pianos from retail outlets in the Los Angeles area under
the name “Hollywood Piano.” Despite the name “Piano
Factory,” none of the related corporations manufacture pi-
anos; they are purely retail outlets.
The owner of those companies, Glenn Treibitz, believed
that the “Schiedmayer” mark had been abandoned for pi-
anos and decided to use the mark in his business. In 2002,
he acquired the domain name “schiedmayer.com” and filed
an application to register the “Schiedmayer” mark for pi-
anos. The Patent and Trademark Office issued a registra-
tion for that mark on the principal register in November
2007. Piano Factory Group, Inc., assigned the registration
to Sweet 16 Musical Properties, Inc.
It was the practice at Sweet 16’s Hollywood Piano
stores to purchase “no-name” pianos from China and to af-
fix labels on them, including the Schiedmayer label. The
pianos labeled “Schiedmayer” would then be sold as
Schiedmayer pianos.
The practice of falsely branding “no-name” pianos, Mr.
Treibitz testified, is not uncommon in the industry. The
falsely branded pianos are referred to as “stencil pianos,”
many of which are made in Indonesia or mainland China.
Mr. Treibitz admitted that a “classic example of stencil pi-
anos is when manufacturers produce a cheap-end piano
that has a German sounding name.” Piano Factory, 2019
WL 4322918, at *4 (quoting J.A. 831). He also agreed that
“many buyers are deceived into believing that these pianos
are produced in famous geographical locations that are rec-
ognized for their production of quality instruments, most
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 5
notably Germany.”2 J.A. 831–32. Mr. Treibitz testified
that Sweet 16 sold approximately 29 stencil pianos bearing
the “Schiedmayer” mark between 2007 and 2018, although
that estimate was not supported by business records, but
was based only on Mr. Treibitz’s general recollection.
B
In 2015, Schiedmayer Celesta filed a cancellation peti-
tion with the TTAB, seeking to cancel Sweet 16’s registra-
tion for the “Schiedmayer” mark. The cancellation petition
alleged that the mark falsely suggested a connection with
Schiedmayer Celesta, in violation of section 2(a) of the Lan-
ham Act, 15 U.S.C. § 1052(a). Following discovery and
briefing, the Board issued an opinion granting the petition
to cancel the registration.
The Board first found that appellee Schiedmayer Ce-
lesta had standing to bring the cancellation proceeding.
Schiedmayer Celesta, the Board found, “is named after the
Schiedmayer family known for keyboard musical instru-
ments, [and] is owned by a member of that family and uses
Schiedmayer as a trademark for keyboard musical instru-
ments.” Piano Factory, 2019 WL 4322918, at *6. As such,
the Board concluded, appellee “has a personal stake in this
proceeding, and is not an intermeddler.” Id.
On the merits, the Board upheld the appellee’s false
suggestion of a connection (or “false association”) claim.
The Board applied the four-part test for a false association
bar to registration that was derived from this court’s opin-
ion in University of Notre Dame Du Lac v. J.C. Gourmet
Food Imports Co., 703 F.2d 1372 (Fed. Cir. 1983). In so
doing, the Board found (1) that Sweet 16’s registered
2 A Hollywood Piano advertisement introduced into
evidence touted its Asian-sourced “Schiedmayer” pianos as
having “German design, German strings, German
pinblock, [and] German hammer felt.” J.A. 1255.
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 6
“Schiedmayer” mark is effectively the same as the appel-
lee’s name and identity; (2) that the registered mark points
uniquely and unmistakably to the appellee; (3) that the ap-
pellee is not connected with the activities performed by
Sweet 16 under the mark; and (4) that the appellee’s name
or identity is of sufficient fame or reputation that when
Sweet 16 uses the mark in connection with its sales and
rentals of pianos, a connection with the appellee would be
presumed.3 Piano Factory, 2019 WL 4322918, at *6–10.
Based on those findings, the Board concluded that be-
cause Sweet 16 has used the appellee’s “unique name and
identity in connection with keyboard musical instruments
similar to those for which [Schiedmayer Celesta] and the
Schiedmayer family are famous,” Sweet 16’s use of the
mark “will falsely suggest a connection between
[Schiedmayer Celesta] and [Sweet 16].” Id. at *14.
3 A false association claim under section 2(a) of the
Lanham Act is similar in some respects to a likelihood of
confusion claim under section 2(d) of the Act, although the
statutory protection against a false suggestion of a connec-
tion is designed not just to protect against deceptive use in
commerce, but “to protect persons and institutions from ex-
ploitation of their persona.” Bridgestone/Firestone Res.,
Inc. v. Auto. Club de L’Ouest de la France, 245 F.3d 1359,
1363 (Fed. Cir. 2001); see also Notre Dame, 703 F.2d at
1375. Even in the absence of a likelihood of confusion as to
the source of goods, we have stated that under section 2(a),
“one’s right of privacy, or the related right of publicity, may
be violated.” Id.; see Buffett v. Chi-Chi’s, Inc., 226 U.S.P.Q.
428, 429 (TTAB 1985) (“[T]hough there may be no likeli-
hood of confusion as to the source of the goods, even under
a theory of sponsorship or endorsement, nevertheless an
opposer’s right to control the use of its identity may be vio-
lated.”).
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 7
In addressing Sweet 16’s defense of laches, the Board
found that the seven and one-half year period of delay be-
tween Sweet 16’s registration of the “Schiedmayer” mark
and Schiedmayer Celesta’s filing of its petition for cancel-
lation of that mark was “fairly long, and in the absence of
extenuating circumstances or an excuse, unreasonable.”
Id. at *11. However, the Board further found that Sweet
16 had not met its burden of showing prejudice as a result
of the delay.
The Board observed that “the entirety of [Sweet 16’s]
argument that [it has] suffered material prejudice” is that
it had “sold and rented Schiedmayer branded pianos con-
tinuously for seven years.” Id. at *12. The only evidence
of any marginal expenses incurred in selling the
Schiedmayer-labeled pianos, the Board found, was the cost
of buying Schiedmayer labels from trophy shops or decal
makers to place on the no-name pianos. The Board further
found that relabeling those pianos with a name other than
Schiedmayer “would be quick, easy and inexpensive.” Id.
at *13. Accordingly, the Board found that the delay in
seeking cancellation did not entail the forfeiture of any
monetary investment or the incurrence of any other finan-
cial injury that likely would have been avoided if the can-
cellation proceeding had been initiated earlier.
II
On appeal, Sweet 16 raises a constitutional challenge
to the composition of the TTAB panel that decided this
case. Sweet 16 contends that the administrative trade-
mark judges (“ATJs”) who sat on the panel were appointed
in violation of the Appointments Clause of Article II of the
Constitution, and that the Board’s decision therefore must
be vacated. Appellants’ Opening Br. 18–19. The Acting
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 8
Director of the Patent and Trademark Office, as interve-
nor, argues that the ATJs were lawfully appointed.4
The parties’ briefs in this case were filed prior to the
Supreme Court’s decision in United States v. Arthrex, Inc.,
141 S. Ct. 1970 (2021). In that case, the Court analyzed
the statutes governing inter partes review proceedings be-
fore the Patent Trial and Appeal Board (“PTAB”). In light
of the authority conferred on the PTAB’s administrative
patent judges (“APJs”) by those statutes, the Court con-
cluded that the APJs must be regarded as principal officers
of the United States. The Court held that, absent a modi-
fication of the APJs’ authority, the APJs could constitution-
ally perform their duties only if they were appointed by the
President and confirmed by the Senate.
Sweet 16 argues that in view of the Supreme Court’s
decision in Arthrex, the ATJs must also be considered
“principal officers” of the United States. Because the ATJs
are not appointed by the President and confirmed by the
Senate, Sweet 16 contends that they have been unconstitu-
tionally appointed.5
4 The appellee defers to the intervenor’s presenta-
tion on this issue. See Appellee’s Br. 22; Supplemental Br.
of Appellee 2.
5 The intervenor argues that Sweet 16 forfeited its
Appointments Clause challenge because it failed to raise
that argument before the TTAB. There is support for that
argument. See Ryder v. United States, 515 U.S. 177, 182–
83 (1995); In re DBC, 545 F.3d 1373, 1378–79 (Fed. Cir.
2008). In Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d
1320, 1326–27 (Fed. Cir. 2019), vacated and remanded sub
nom. United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021),
we exercised our discretion to decide the Appointments
Clause issue despite Arthrex’s failure to raise the issue be-
fore the PTAB. We declined to find waiver because the
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 9
The Supreme Court in Arthrex acknowledged that the
Director of the Patent and Trademark Office, a Presiden-
tial appointee, supervises the APJs in many respects, hav-
ing powers of “administrative oversight” over the APJs
through mechanisms such as fixing their pay rate, control-
ling the decision whether to institute inter partes review,
selecting the APJs to serve on inter partes review panels,
promulgating regulations governing inter partes review, is-
suing prospective guidance on patentability issues, and
designating particular PTAB decisions as “precedential”
for future panels. 141 S. Ct. at 1980.
The Court found, however, that the Director’s supervi-
sory authority came to a halt with respect to “the one thing
that makes the APJs officers exercising ‘significant author-
ity’ in the first place—their power to issue decisions on pa-
tentability.” Id. In that regard, the Court held, neither the
Director nor any other Executive Branch official had the
power to direct and supervise the work of the APJs. It was
that lack of supervisory control over the decision-making
process of the APJs that created the Appointments Clause
problem. Id. at 1980–81.
The Court identified two statutory impediments to the
Director’s exercise of control over decision-making in inter
partes review proceedings. First, section 6(c) of the Patent
Act, 35 U.S.C. § 6(c), requires that inter partes review pro-
ceedings be heard by panels consisting of a minimum of
three members. Furthermore, the statute specifies that
Appointments Clause issue was one of exceptional im-
portance and because it would have been futile for Arthrex
to raise that constitutional issue before the PTAB. Id. In
this case, we elect to follow the same course. The Appoint-
ments Clause issue raised by Sweet 16 is important, and
even though Congress has taken steps to address that is-
sue, Sweet 16 contends that those steps have not mooted
the issue going forward.
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 10
only the PTAB may grant rehearings of PTAB decisions.
That scheme, the Court concluded, gives APJs the power to
render a final decision on behalf of the United States “with-
out any . . . review by their nominal superior or any other
principal officer in the Executive Branch.” Arthrex, 141 S.
Ct. at 1981.6
Second, section 318(b) of the Act, 35 U.S.C. § 318(b),
requires the Director to comply with the PTAB’s decisions
by canceling claims according to those decisions, affirming
claims according to those decisions, or adding to the patent
any new or amended claims determined by the PTAB to be
patentable. Because that statute uses mandatory lan-
guage, the Court held that it denies the Director the au-
thority to override the decisions of the PTAB on issues of
patentability. Arthrex, 141 S. Ct. at 1980–81.
The Court then turned to framing a remedy for the con-
stitutional violation. Consistent with the reasoning under-
lying its finding of an Appointments Clause violation, the
Court held that section 6(c) of the Patent Act could not con-
stitutionally be enforced “to the extent that its require-
ments prevent the Director from reviewing final decisions
rendered by APJs.” Id. at 1987. However, the Court held
that the Director, if freed of that unconstitutional limita-
tion on his authority, would have “the authority to provide
for a means of reviewing PTAB decisions,” and that the Di-
rector could “review final PTAB decisions and, upon re-
view, . . . issue decisions himself on behalf of the Board.”
Id.
6 In our decision in the Arthrex case, we pointed out
that although the Director is considered a member of the
PTAB and can appoint himself to any panel, he has only
one vote on a panel of three and therefore cannot control
the disposition of any case in which he is in the minority.
941 F.3d at 1330; see also Arthrex, 141 S. Ct. at 1981.
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 11
The Court concluded that the proper remedy for the
Appointments Clause violation was to strike down section
6(c), which insulated PTAB decisions from review by the
Director. Doing so, the Court ruled, would be sufficient to
render the APJs “inferior officers” for purposes of the Ap-
pointments Clause. Id. at 1987.7 In that circumstance, re-
view by the Director would “follow the almost-universal
model of adjudication in the Executive Branch,” and “aligns
the PTAB with the other adjudicative body in the PTO, the
Trademark Trial and Appeal Board.” Id. The Court thus
effectively confirmed that in light of the Director’s author-
ity over decisions of the TTAB, the statutory scheme gov-
erning TTAB decision-making is not subject to the
Appointments Clause problem the Court identified with re-
gard to the PTAB.
The Director’s role in TTAB adjudications was one of
the subjects addressed in the Trademark Modernization
Act of 2020, Pub. L. No. 116-260, div. Q, tit. II, subtit. B,
§ 228, 134 Stat. 1182, 2209–10. Among other things, that
Act explicitly confirmed the Director’s authority to review
decisions of the TTAB. See 15 U.S.C. §§ 1068, 1070, 1092.
In view of the Supreme Court’s analysis in Arthrex, the cur-
rent trademark statutes plainly render the ATJs “inferior
officers,” making their appointments by the head of a de-
partment, i.e., the Secretary of Commerce, lawful.
7 Part III of the Chief Justice’s opinion, which ad-
dresses the remedy issue, was joined by only three other
members of the Court. However, the remedial holding in
the plurality opinion had the support of a majority of the
justices, as three of the dissenting justices agreed with the
plurality that after the offending portions of section 6(c)
were struck down, the Director’s authority over PTAB de-
cisions was sufficient to satisfy the Appointments Clause.
See Arthrex, 141 S. Ct. at 1997 (Breyer, J., concurring in
the judgment in part and dissenting in part).
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 12
The wrinkle here is that this case was decided by the
Board prior to the enactment of the Trademark Moderni-
zation Act of 2020. Sweet 16 argues that in light of the
statutory structure in place when the Board decided this
case in 2019, the Board’s ATJs enjoyed the status of prin-
cipal officers at that time, and thus their appointments
were unconstitutional.
The intervenor disagrees, as do we. As the intervenor
points out, even before the enactment of the Trademark
Modernization Act of 2020 the trademark statutes gave the
Director significantly more supervisory control over admin-
istrative trademark judges and their decisions than over
administrative patent judges in inter partes review pro-
ceedings.
In the trademark context, the Director has many of the
same administrative oversight responsibilities concerning
the administrative judges as in the patent context. Where
the two systems diverge is with respect to the Director’s
supervisory authority in deciding individual cases.
As we explained in our decision in Arthrex, the effect of
sections 6(c) and 318(b) of the Patent Act is to deprive the
Director of the power to review and reverse the decisions of
the PTAB. 941 F.3d at 1329–30; see also Arthrex, 141 S.
Ct. at 1981. But there are no analogous statutory re-
straints on the Director’s authority in the trademark con-
text. The broad statutory authority given to the Director
by section 41 of the Lanham Act, 15 U.S.C. § 1123, to “make
rules and regulations, not inconsistent with law, for the
conduct of proceedings in the Patent and Trademark Of-
fice” is not subject to the requirements that the TTAB sit
in panels of three or that the Director cancel registrations
if the TTAB finds that a registration should not have is-
sued.
Prior to 1999, section 17 of the Lanham Act, 15 U.S.C.
§ 1067 (1994 ed.), required the TTAB to sit in panels of at
least three, as was the case for the PTAB before the
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 13
Supreme Court’s decision in Arthrex. That requirement
was eliminated for the TTAB by the Intellectual Property
and Communications Omnibus Reform Act of 1999, Pub. L.
106-113, div. B, app. I, tit. IV, § 4716, 113 Stat. 1501,
1501A-580. As amended in 1999, section 1067 is silent as
to the composition of the TTAB panel that decides each
case. Section 1067(a) provides that in all actions brought
before the Board, the Director “shall direct a Trademark
Trial and Appeal Board to determine and decide the respec-
tive rights of registration.” And section 1067(b) provides
that the Board shall include the Director, the Deputy Di-
rector, the Commissioner for Patents, and the Commis-
sioner for Trademarks, as well as administrative
trademark judges appointed by the Secretary of Com-
merce. As a result, the Director has discretion regarding
the size and composition of TTAB panels, which the Direc-
tor can exercise pursuant to his authority to establish rules
and regulations governing procedures before the TTAB, see
15 U.S.C. §1123.
Accordingly, in the trademark context, unlike in the
pre-Arthrex patent context, the Director has for more than
twenty years had the authority to direct that any Board
case be decided by a single member of the TTAB, either in-
itially or on rehearing.8 And because the Director is a
8 Sweet 16 contends that even if the Director in 2019
had the power to unilaterally “decide” a case, that power
did not include the power to rehear or reconsider PTAB de-
cisions. We disagree. The Director’s broad supervisory au-
thority under 15 U.S.C. §§ 1123 and 1068 (2000 eds.),
together with the absence of any limitation on the compo-
sition of TTAB panels, see id. § 1067, indicates that the Di-
rector in 2019 had the power both to unilaterally decide a
case in the first instance and to decide a case on rehearing
by overriding an initial TTAB decision. To the extent that
Sweet 16 relies on the absence of express authority for the
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 14
standing member of the TTAB, he enjoys the authority to
designate himself as the sole member of a TTAB rehearing
panel, thereby allowing him to review and reverse deci-
sions of a panel of ATJs.
Furthermore, section 18 of the Lanham Act, 15 U.S.C.
§ 1068, has long provided the Director with broad authority
to refuse to register a mark or cancel a registration. While
that authority must be exercised “as the rights of the par-
ties under this chapter may be established in the proceed-
ings,” the Director’s broad authority under sections 17 and
41 of the Lanham Act, 15 U.S.C. §§ 1067 and 1123, to take
control of a TTAB case provides a mechanism by which the
Director may establish “the rights of the parties.” The reg-
ulations governing TTAB proceedings confirm that the Di-
rector may “invoke [his] supervisory authority . . . in
appropriate circumstances.” 37 C.F.R. § 2.146(a)(3).
At oral argument, Sweet 16 contended that, as of 2019,
15 U.S.C. § 1092 insulated from the Director’s review
TTAB decisions canceling trademark registrations on the
supplemental register. Sweet 16 focused on language in
that statute that a trademark registration “shall be can-
celed by the Director” if it is “found after a hearing before
the Board that the registrant is not entitled to registration,
or that the mark has been abandoned.” Even though this
case concerns a mark published on the principal register,
not the supplemental register, Sweet 16 contends that
Director to rehear TTAB decisions, we reject that conten-
tion, as “[t]he power to reconsider is inherent in the power
to decide.” Tokyo Kikai Seisakusho, Ltd. v. United States,
529 F.3d 1352, 1360 (Fed. Cir. 2008); see also Dayley v.
United States, 169 Ct. Cl. 305, 308 (1965) (“[U]nless there
is legislation to the contrary it is the inherent right of every
tribunal to reconsider its own decisions within a short pe-
riod after the making of the decision and before an appeal
has been taken or other rights vested.”).
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 15
section 1092 created a constitutional defect in the appoint-
ment of ATJs because the Director could not override the
TTAB’s cancellation of a supplemental mark. According to
Sweet 16, any conveyance of power that is not subject to
supervision by a principal officer, no matter how remote
from the action being challenged, poisons the administra-
tive judge’s appointment for all purposes.
The mandatory language in section 1092 is of no conse-
quence in light of the Director’s authority to rehear the de-
cisions of TTAB panels. That is clear from the remedy
ordered by the Supreme Court in Arthrex. Despite a simi-
lar provision in the Patent Act, 35 U.S.C. § 318(b), stating
that the Director “shall issue and publish a certificate” can-
celing, affirming, or amending claims in accordance with
the PTAB’s decision, the Court left section 318(b) un-
touched when fixing the Appointments Clause problem,
and instead rendered unenforceable section 6(c)’s limita-
tions on the composition of PTAB panels.
The end result of the Court’s decision in Arthrex was to
create a regime very similar to the trademark statutory
scheme in place as of 2019. There was at that time no lim-
itation on the composition of TTAB panels, see 15 U.S.C.
§ 1067, and the Director had broad authority to control
TTAB proceedings, see id. § 1123 (2000 ed.). The Supreme
Court held highly similar conditions sufficient to render
APJs inferior officers despite the “shall issue and publish”
language of section 318(b). The same result necessarily fol-
lows with respect to ATJs and the language of 15 U.S.C.
§ 1092 (2006 ed.).
For those reasons, we agree with the intervenor that as
of 2019 the Director had the authority to regulate not only
the procedures employed by the TTAB, but also the sub-
stance of the TTAB’s decision-making process.
As noted, the Trademark Modernization Act of 2020
made the Director’s authority vis-à-vis the decisions of the
TTAB indisputably clear. In a section of that Act entitled
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 16
“Amendments to Confirm Authority of the Director,” the
Act explicitly provides that the Director has “the authority
to reconsider, and modify or set aside, a decision of the
Trademark Trial and Appeal Board.” 134 Stat. at 2209–10
(codified at 15 U.S.C. § 1068); see also 15 U.S.C. § 1070
(“The Director may reconsider, and modify or set aside, a
decision of the Trademark Trial and Appeal Board under
this section.”); id. § 1092 (Following an adverse decision re-
garding a mark on the supplemental register, the registra-
tion shall be canceled by the Director “unless the Director
reconsiders the decision of the Board, and modifies or sets
aside, such decision.”). If there were any doubt as to the
status of ATJs as inferior officers prior to 2020, the 2020
legislation removed that doubt.
Sweet 16 argues that the enactment of the 2020 legis-
lation indicates that prior to 2020, the Director lacked the
authority explicitly defined by the 2020 legislation, and
that it would be improper to give that statute retroactive
effect. In fact, however, the 2020 legislation itself makes
clear that it merely confirmed, and did not alter, the Direc-
tor’s authority. The section of the 2020 legislation adding
language concerning the Director’s authority expressly re-
fers to “Confirm[ing] [the] Authority of the Director.” 134
Stat. at 2209. In addition, a note to the legislation states
that it “shall not be construed to mean that the Director
lacked the authority to reconsider, and modify or set aside,
a decision of the Trademark Trial and Appeal Board before
the date of enactment of this Act.” Id. at 2210. The House
Report on the legislation confirms that it was “understood
that this authority already exists in the trademark con-
text,” and that “the statutory additions should be under-
stood to be confirmatory only.” H.R. Rep. No. 116-645, at
22 (2020).
The 2020 legislation does not solve the Appointments
Clause issue going forward, Sweet 16 argues, because it
does not create an explicit right for the Director to order
rehearing of TTAB panel decisions, and thus does not
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 17
guarantee litigants the opportunity to obtain Director re-
view of adverse TTAB decisions. That argument is unper-
suasive for two reasons. First, the language of the 2020
amendments explicitly recognizes that the Director has the
authority to rehear TTAB decisions. Thus, the Director
clearly has the authority to provide for rehearing of TTAB
decisions if he elects to provide for a remedy by regulation
or rule. Second, the Appointments Clause was intended to
prevent unappointed officials from wielding too much au-
thority, not to guarantee procedural rights to litigants,
such as the right to seek rehearing from the Director. It is
therefore irrelevant whether the Director has implemented
a procedure for rehearing TTAB decisions. What the 2020
legislation makes clear is that the Director has the right to
exercise supervisory authority over ATJs with respect to
particular decisions, including by rehearing TTAB deci-
sions; whether the Director elects to exercise that authority
does not affect the status of ATJs as inferior officers under
the Appointments Clause.
In sum, the 2020 legislation confirms that the Direc-
tor’s authority to review TTAB decisions was the same be-
fore the legislation as afterwards. Thus, considering the
Supreme Court’s favorable reference to the constitutional
status of ATJs as inferior officers of the United States, we
reject Sweet 16’s Appointments Clause challenge to the le-
gitimacy of the TTAB panel that decided this case.
III
On the merits, Sweet 16 raises a number of challenges
to the Board’s decision, none of which we find persuasive.
A
First, Sweet 16 challenges the Board’s decision with re-
spect to Sweet 16’s defense of laches. Appellants’ Opening
Br. 15–18. The Board rejected that defense on the ground
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 18
that Sweet 16 had suffered no material prejudice from the
appellee’s delay in initiating the cancellation proceeding.9
Sweet 16 does not dispute the Board’s finding that the
delay did not cause it any investment loss or other similar
economic injury. See Appellants’ Opening Br. 15. Instead,
Sweet 16 claims prejudice based on the effect that an ad-
verse decision in the cancellation proceeding could have in
a potential trademark infringement action that
Schiedmayer Celesta might bring against Sweet 16 in the
future.
Schiedmayer Celesta and the intervenor both contend
that Sweet 16 waived that claim by never raising it before
the Board. Sweet 16 acknowledges that it did not raise that
claim before the Board. It argues, however, that it should
not be deemed to have waived the issue, because “the ma-
terial prejudice to the Appellant is a result of the decision
of the Board, which did not exist until it was handed down.”
Appellants’ Reply Br. 18.
Sweet 16’s argument is nonsensical. Prejudice from an
error in the course of litigation typically flows from an ad-
verse decision that is the result of the error. If a party
could excuse its failure to seek correction of an error on the
ground that the adverse decision had not yet occurred at
the time of the error that led to that decision, there would
seldom be a case in which a party would be deemed to have
waived a claim of error.
This is a clear-cut case of failure to make an argument
to the original tribunal and an effort to raise that argument
for the first time on appeal. There are no exceptional
9 As the Board explained, a defendant who asserts
laches must show (1) unreasonable delay by the plaintiff in
asserting its rights and (2) material prejudice attributable
to that delay. Lincoln Logs Ltd. v. Lincoln Pre-Cut Log
Homes, Inc., 971 F.2d 732, 734 (Fed. Cir. 1992).
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 19
circumstances in this case that would justify our overlook-
ing Sweet 16’s failure to raise its new theory of prejudice.
We hold that Sweet 16 forfeited its argument by not timely
raising it before the Board.
B
Sweet 16 next contends that the Board erred in “defin-
ing the petitioner” in the cancellation proceeding. Appel-
lants’ Opening Br. 19–21. Sweet 16 complains that the
Board treated the “Schiedmayer” mark as pointing
uniquely and unmistakably to the Schiedmayer family and
the family’s businesses “carried on by people with the last
name of Schiedmayer in Germany and the US dating back
almost 300 years,” not just to Schiedmayer Celesta, the
only business participating in the cancellation proceeding
in this case. Id. at 20. For the Board to have jurisdiction
to decide the rights of Ms. Schiedmayer or “any other uni-
dentified person with the last name Schiedmayer claiming
an interest in the surname applied to keyboard instru-
ments,” such persons must be joined in the cancellation ac-
tion, according to Sweet 16. Id. Absent such joinder, Sweet
16 argues, “the Board possessed no personal jurisdiction to
make a decision adjudicating their rights as individuals at
the time of its decision.” Id. at 20–21.
A petition to cancel the registration of a mark may be
filed “by any person who believes that he is or will be dam-
aged” by the registration of the mark on the principal reg-
ister. 15 U.S.C. § 1064. Thus, any party with a “real
interest in the proceeding” and a “reasonable belief in dam-
age” may seek cancellation of a registration. Corcamore,
LLC v. SFM, LLC, 978 F.3d 1298, 1304–06 n.1 (Fed. Cir.
2020); Australian Therapeutic Supplies Pty. v. Naked TM,
LLC, 965 F.3d 1370, 1373–74 (Fed. Cir. 2020). Moreover,
it is not necessary for that party to join every other party
that might have such an interest. See Universal Oil Prods.
Co. v. Rexall Drug & Chem. Co., 463 F.2d 1122, 1124
(CCPA 1972) (parent company that could demonstrate an
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 20
interest in the proceeding need not join a subsidiary com-
pany that had control of the trade name).
To the extent Sweet 16 is arguing that Schiedmayer
Celesta lacked standing to bring the cancellation proceed-
ing, the Board correctly rejected that argument. Section
2(a) of the Lanham Act, 15 U.S.C. § 1052(a), provides in
pertinent part that a trademark shall be refused registra-
tion on the principal register if it “falsely suggest[s] a con-
nection with persons, living or dead, institutions, beliefs, or
national symbols.” A party asserting a false association
bar to registration under section 2(a) need not have propri-
etary rights to a name as long as the party has a reasonable
belief that it will be or is being damaged by the false sug-
gestion of a connection between a person and the chal-
lenged mark. See Jewelers Vigilance Comm., Inc. v.
Ullenberg Corp., 823 F.2d 490, 493–94 (Fed. Cir. 1987); Es-
tate of Biro v. Bic Corp., 18 U.S.P.Q.2d 1382, 1385 (TTAB
1991); 1 Jeffrey A. Handelman, Handleman’s Guide to
TTAB Practice § 5.06[E], at 5-37 (2d ed. 2021).
Schiedmayer Celesta contends that Sweet 16’s use of the
“Schiedmayer” mark on stencil pianos injures the reputa-
tion of the Schiedmayer brand. That contention clearly es-
tablishes the requisite reasonable apprehension of injury.
To the extent Sweet 16 is contending that the Board
erred in exercising jurisdiction in this case because other
potential parties were not joined in the cancellation pro-
ceeding, we again disagree. As the Board pointed out, this
is not a case in which other Schiedmayer companies or in-
dividuals appear to have interests that conflict with the in-
terests of Schiedmayer Celesta. Because Schiedmayer
Celesta is the sole corporate successor to the German
Schiedmayer companies, and because Ms. Schiedmayer is
the sole owner of Schiedmayer Celesta, it was proper for
the Board to go forward with the cancellation proceeding
without requiring the joinder of any other entities.
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 21
C
Sweet 16’s next claim is that the Board erred in defin-
ing the goods at issue as being “keyboard musical instru-
ments” rather than the goods stated on the registration
certificate, i.e., “pianos.” Appellants’ Opening Br. 21–23.
Relatedly, Sweet 16 contends that the Board erred by char-
acterizing Schiedmayer Celesta’s business as manufactur-
ing and selling “keyboard musical instruments” rather
than manufacturing and selling celestas and glockenspiels.
Id. at 28. The implication of that argument is that if the
Board had adopted a narrower definition of the goods at
issue, Sweet 16 would have been free to register and use
the “Schiedmayer” mark, since that mark would be used in
connection with products different from the products made
and sold by Schiedmayer Celesta.
Sweet 16’s argument misapprehends the nature of the
section 2(a) bar to registration. Unlike section 2(d), the
false association component of section 2(a) is not directed
to the likelihood of confusion regarding the source of goods.
Instead, it is directed to the false suggestion that there is a
connection between a particular person and another’s
goods or services. 3 J. Thomas McCarthy, McCarthy on
Trademarks, § 19:76, at 19-274 (5th ed. 2021). It is there-
fore not necessary for application of the false association
bar that the registration be directed to the same or similar
goods as those of the complaining party, as long as the reg-
istered mark falsely suggests a connection with a person
other than the registrant. For that reason, it does not mat-
ter that Sweet 16 limited its registration of the
Schiedmayer mark to pianos, as long as the use of that
mark falsely suggested an association between Sweet 16’s
Schiedmayer-branded pianos and appellee Schiedmayer
Celesta.
As discussed in Part III-D below, the similarity be-
tween pianos and celestas exacerbates the false connection
between the registered mark and Schiedmayer Celesta.
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 22
Even if consumers understood the differences between ce-
lestas and pianos, that would not prevent them from con-
cluding that there was a connection between Schiedmayer
Celesta and Sweet 16’s Schiedmayer-branded pianos. In
short, Sweet 16’s limitation of its registration to pianos did
not immunize it from the section 2(a) bar for false associa-
tion.
D
Finally, Sweet 16 challenges the Board’s application of
the four-factor test for determining whether a mark should
be canceled because it falsely suggests a connection with
another person or entity.
The four factors, as related to goods, have been identi-
fied as follows:
(1) The mark is the same as, or a close approxima-
tion of, the name or identity previously used by an-
other person;
(2) the mark would be recognized as pointing
uniquely and unmistakably to that person;
(3) the person named by the mark or using the
mark is not connected with the activities performed
by the applicant under the mark; and
(4) the prior user’s name or identity is of sufficient
fame or reputation that a connection with the per-
son would be presumed when the applicant’s mark
is used to identify the applicant’s goods.
In re Jackson, 103 U.S.P.Q.2d 1417, 1419 (TTAB 2012); see
In re Wielinski, 49 U.S.P.Q.2d 1754, 1757 (TTAB 1998); 3
McCarthy on Trademarks, § 19:76, at 19-276; see generally
Notre Dame, 703 F.2d at 1376–1377. It is undisputed that
factors (1) and (3) are satisfied in this case. Sweet 16 con-
tests only factors (2) and (4).
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 23
Sweet 16 makes three arguments regarding those dis-
puted factors. First, with respect to factor (2), Sweet 16
argues that in light of third-party uses of the Schiedmayer
name, the Board erred in finding that the “Schiedmayer”
mark points uniquely and unmistakably to the appellee.
Appellants’ Opening Br. 23–28. Second, with respect to
factor (4), Sweet 16 argues that the appellee did not have
sufficient fame and reputation at the time the mark was
registered such that a connection with the appellee would
be presumed. Id. at 28–30. And third, also with respect to
factor (4), Sweet 16 argues that the Board erred in deter-
mining that the fame or reputation of the appellee ex-
tended to pianos, as opposed to being limited to just
celestas and glockenspiels. Id. at 30. We review the
Board’s factual findings on each of those three issues for
substantial evidence. On-Line Careline, Inc. v. Am. Online,
Inc., 229 F.3d 1080, 1085–86 (Fed. Cir. 2000).
1. As to the first point, Sweet 16 argues that it offered
evidence that “numerous other entities” between 1980 and
the present have used the mark “Schiedmayer” for pianos
and that the Board ignored that evidence. Appellants’
Opening Br. 24. In fact, however, the Board assessed that
evidence and concluded that there was no proof that any-
one other than Sweet 16 and the appellee is currently using
the mark for keyboard musical instruments in the United
States. To the extent that others may have used the mark
in the United States in the past, the Board found there was
no evidence that any such use “continues or that it had any
effect on the public perception of the ‘Schiedmayer’ name
as referring to” the appellee. Piano Factory, 2019 WL
4322918, at *8. Sweet 16’s evidence to the contrary, the
Board found, was based on printed publications and Inter-
net printouts, which the Board held were hearsay, and “not
admissible for the truth of the matters asserted therein.”
Id. at *8 n.14.
Inadmissibility aside, the evidence Sweet 16 proffered
does not undermine the Board’s finding on this issue. At
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 24
most, Sweet 16’s evidence shows that for some period of
time during Georg Schiedmayer’s joint venture with the
Ibach company, Ibach produced Schiedmayer-branded pi-
anos, and that Ibach later arranged for other companies,
including Kawai, to produce pianos under the Schiedmayer
label. But the appellee introduced evidence that the
Schiedmayer company never transferred rights in its
trademark to Ibach and never authorized Ibach to permit
Kawai or any other company to produce pianos bearing the
Schiedmayer label. That evidence included testimony from
Ms. Schiedmayer, widow of Georg Schiedmayer, that the
“trademark Schiedmayer was never sold, licensed, as-
signed or in any way transferred” to Ibach or Kawai. Id. at
*2. The evidence also included testimony from a German
intellectual-property attorney that “based on his search of
German trademark registrations, ‘no company bearing the
name [Ibach] ever obtained any rights to the trademark
Schiedmayer in Germany.’” Id.
The only non-hearsay evidence on this issue to which
Sweet 16 points is testimony from a piano store owner who
declared that he was involved in purchasing four
Schiedmayer-branded pianos from the Ibach company and
Kawai USA during the period between 1981 and 1989.
That evidence, however, is not contrary to the appellee’s
assertion that some Schiedmayer pianos were produced in
cooperation with the Ibach company and that later sales by
Ibach and third parties such as Kawai were not authorized
by the Schiedmayer company.
Contrary to the implication of Sweet 16’s argument,
the fact that there may have been limited use of the
Schiedmayer name by other piano manufacturers some
years before Sweet 16’s application to register the mark in
its own name does not immunize Sweet 16 from a false as-
sociation claim. The alleged third-party uses of the mark
were for goods closely related to the products that the
Schiedmayer companies, including Schiedmayer Celesta,
continued to sell. The Board did not find that the sale of
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 25
pianos pursuant to the joint venture between Georg
Schiedmayer and the Ibach company undermined the con-
nection between the “Schiedmayer” mark and the
Schiedmayer companies. Nor did it find that Kawai’s sales
of pianos under the Schiedmayer name for a period of time
in the 1990s had that effect.
Those limited third-party uses tended to support the
finding that consumers continued to associate the mark
with the Schiedmayer companies and their corporate suc-
cessor, Schiedmayer Celesta. See In re Pedersen, 109
U.S.P.Q.2d 1185, 1195–96 (TTAB 2013) (third-party uses
that refer to the plaintiff do not by themselves undermine
a finding that the name in question pointed uniquely to the
plaintiff). The same is true in the case of a holdover licen-
see, whose activities imply, wrongly, that they are affili-
ated with the entity that gave them permission to use the
mark. See, e.g., Church of Scientology Int’l v. Elmira Mis-
sion of the Church of Scientology, 794 F.2d 38, 44 (2d Cir.
1986). Thus, Sweet 16’s evidence, even if accepted as ad-
missible, does not establish that the Board erred in finding
that the name “Schiedmayer” points uniquely and unmis-
takably to the appellee.
2. As to the second point, Sweet 16 argues that the ev-
idence failed to show that Schiedmayer Celesta enjoyed the
requisite fame or reputation as of the date of Sweet 16’s
registration.
In considering a false association claim, the Board is
required to assess the facts as of the time the mark was
registered. Hornby v. TJX Cos., Inc., 87 U.S.P.Q.2d 1411,
1424 (TTAB 2008); Consorzio del Prosciutto di Parma v.
Parma Sausage Prods., Inc., 23 U.S.P.Q.2d 1894, 1898–99
(TTAB 1992); Bd. of Trustees of the Univ. of Ala. v. BAMA-
Werke Curt Baumann, 231 U.S.P.Q. 408, 410–11 (TTAB
1986). Sweet 16 complains that in making a finding on that
issue, the Board erred by relying on evidence that pre-
dated or post-dated Sweet 16’s registration date of 2007.
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 26
The Board did not err in relying on recent publications
or the history of the Schiedmayer companies to draw infer-
ences as to Schiedmayer Celesta’s fame as of 2007. See
Hornby, 87 U.S.P.Q.2d at 1416 (Evidence “after the date of
issuance of respondent’s registration may tell us something
about the fame or reputation as of that date.”); Harjo v.
Pro-Football, Inc., 50 U.S.P.Q.2d 1705, 1715 (TTAB 1989)
(Evidence concerning the significance of a word “before and
after the relevant time periods may shed light on its signif-
icance during those time periods.”), rev’d on other grounds,
284 F. Supp. 2d 96 (D.D.C. 2003).
Any publication will necessarily reflect facts that oc-
curred prior to the date of the publication. And the past
history of a company frequently bears importantly on that
company’s current fame and reputation. Based on the evi-
dence as a whole, the Board found that the Schiedmayer
name enjoyed fame and reputation in the field of keyboard
musical instruments throughout the period that included
the time that Sweet 16 registered the “Schiedmayer” mark.
Substantial evidence supports the Board’s finding on that
issue.
3. As to the third point, Sweet 16 argues that in as-
sessing the appellee’s fame and reputation, the Board dis-
regarded the differences between pianos and celestas.
The Board concluded that in light of the history of the
Schiedmayer brand, the fame and reputation of the
Schiedmayer Celesta company extended to keyboard musi-
cal instruments generally, not just to the two keyboard in-
struments that the company was manufacturing as of the
time of the registration. In addition, the Board found that
celestas are close cousins of pianos and that from the out-
side they look quite similar. The differences between celes-
tas and pianos, the Board found, “are internal, mechanical
and perhaps not even noticeable to or known by some con-
sumers of keyboard musical instruments.” Piano Factory,
2019 WL 4322918, at *9 n.17. In light of the similarity
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 27
between pianos and celestas, the Board found that persons
seeing the Schiedmayer name on pianos would likely con-
clude that the pianos were made by or associated with the
Schiedmayer companies in general and Schiedmayer Ce-
lesta in particular. Id. at *2, *7–10 n.17.
Both in this case and in previous cases, the Board has
made clear that in assessing the “fame or reputation” fac-
tor, it is relevant whether the goods or services provided
under the registered mark are similar to goods or services
associated with the party complaining of a false associa-
tion. Id. at *8 (citing Hornby, 87 U.S.P.Q.2d at 1424, 1426–
27; In re White, 80 U.S.P.Q.2d 1654, 1658 (TTAB 2006); and
Wielinski, 49 U.S.P.Q.2d at 1757).
To be sure, a false association claim does not require
proof that a prior user’s reputation “is closely related to an
applicant’s goods.” Pedersen, 109 U.S.P.Q.2d at 1202. Un-
like in the case of trademark or trade name infringement,
it is enough that the defendant-applicant uses the plain-
tiff’s name to cause a false connection between the plaintiff
and the defendant’s goods. Notre Dame, 703 F.2d at 1376.
Nonetheless, as the Board has made clear, similarity be-
tween the goods or services offered under the registered
mark and the goods or services offered by the party chal-
lenging the registration can be highly relevant to a false
association claim. See Hornby, 87 U.S.P.Q.2d at 1424 (“[I]n
the context of the respondent’s goods, we must determine
whether consumers would view the mark as pointing only
to petitioner . . . .”); Bd. of Trustees of the Univ. of Ala., 231
U.S.P.Q. at 411 & n.7; 1 Handleman’s Guide to TTAB Prac-
tice § 5.06[E], at 5-38 (“A false suggestion of a connection
claim is particularly strong in cases where the defendant
seeks registration of a mark for goods or services that are
closely related to the activities for which the plaintiff is
known.”).
A related principle is that a party’s name may be fa-
mous among the particular consumers of those goods and
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 28
services even if it is not famous among members of the gen-
eral public. And a party’s name may be associated with
particular goods such that a false association may be estab-
lished with goods or services of that type even if it would
not have been established with respect to entirely different
goods or services. See In re Nieves & Nieves, LLC, 113
U.S.P.Q.2d 1629, 1633 (TTAB 2015) (name “Royal Kate” is
associated with Kate Middleton with respect to luxury
items such as jewelry and handbags because, as a member
of the British royal family, she “has become a fashion
trendsetter”); Pedersen, 109 U.S.P.Q.2d at 1202 (“[I]t is the
combination of (1) a name of sufficient fame or reputation
and (2) its use on or in connection with particular goods or
services that would point uniquely to a particular person
or institution.”); U.S. Navy v. U.S. Mfg. Co., 2 U.S.P.Q.2d
1254, 1260 (TTAB 1987) (the name USMC is familiar to
professionals who purchase prosthetic products); 7 Louis
Altman & Mall Pollack, Callmann on Unfair Competition,
Trademarks and Monopolies § 26.21, at 26-103–04 (4th ed.
2021). In this case, it was reasonable for the Board to con-
sider the issue of the appellee’s fame and reputation from
the perspective of purchasers of keyboard musical instru-
ments, who would be more likely than the general public to
associate Schiedmayer-labeled pianos with the appellee.
Finally, the Board concluded that the evidence justified
“draw[ing] an inference that [Sweet 16] intend[ed] to create
a connection with [appellee].” Piano Factory, 2019 WL
4322918, at *9 (internal quotation mark omitted); see also
id. at *9 n.18. A registrant’s intentions in using a mark are
relevant to a false association claim. See Notre Dame, 703
F.2d at 1377 (Evidence that “Gourmet intended to identify
the University,” as the University argued, “would be highly
persuasive that the public will make the intended false as-
sociation. The defense that the result intended was not
achieved would be hollow indeed.”); Pedersen, 109
U.S.P.Q.2d at 1202 (Evidence of applicant’s intent to iden-
tify mark “Lakota” with the Lakota people is “highly
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 29
persuasive” evidence of false association.); In re Peter S.
Herrick, P.A., 91 U.S.P.Q.2d 1505, 1509 (TTAB 2009)
(“[B]ased on applicant’s use of a virtually identical seal of
the former United States Customs Service in connection
with applicant’s legal services ‘concentrating its legal prac-
tice in U.S. Customs law,’ we may draw an inference that
applicant intends to create a connection with United States
Customs and Border Protection.”); Association Pour la De-
fense et la Promotion de L’Oeuvre de Marc Chagall Dite
Comite Marc Chagall v. Bondarchuk, 82 U.S.P.Q.2d 1838,
1843 (TTAB 2007) (“We infer from the evidence . . . that
respondent regarded the name of Marc Chagall as one of
significant reputation which would generate good will in
the sale of respondent’s vodka. We find this evidence
highly persuasive.”); see also Frehling Enters., Inc. v. Int’l
Select Grp., Inc. 192 F.3d 1330, 1340 (11th Cir. 1999) (“If it
can be shown that a defendant adopted a plaintiff’s mark
with the intention of deriving a benefit from the plaintiff’s
business reputation, this fact alone may be enough to jus-
tify the inference that there is confusing similarity.”).
In sum, all of the relevant factors—similarity of the
goods, recognition among particular consumers, and intent
in using the mark—support the Board’s finding that the
appellee’s name was sufficiently well known among con-
sumers of Sweet 16’s products that a connection with the
appellee would be presumed. We thus conclude that sub-
stantial evidence supports the Board’s conclusion on that
issue.
* * *
Taking a step back from the doctrinal principles dis-
cussed above, a fair characterization of what has gone on
in this case is that Sweet 16 has falsely labeled its pianos
with a German-sounding name to suggest that its pianos
are high-quality European instruments, rather than lower
quality instruments made elsewhere. And in so doing,
Sweet 16 has not chosen just some arbitrary German-
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PIANO FACTORY GROUP , INC. v. SCHIEDMAYER CELESTA GMBH 30
sounding name to stencil on its no-name pianos. Instead,
it has chosen a name long associated with a German man-
ufacturer of high-end keyboard instruments, a manufac-
turer that still produces celestas. The inference is
inescapable that Sweet 16 is attempting to take advantage
of the reputation of Schiedmayer products by suggesting
that its Schiedmayer-branded pianos were made by a
Schiedmayer company and can therefore be assumed to be
of high quality. That is the essence of “falsely suggest[ing]
a connection” with another entity under section 2(a) of the
Lanham Act. To put the matter succinctly, as the Second
Circuit did more than a century ago, “No one has a right to
apply another’s name to his own goods.” Aunt Jemima
Mills Co. v. Rigney & Co., 247 F. 407, 410 (2d Cir. 1917).
We uphold the decision of the Board canceling Sweet
16’s registration.
AFFIRMED
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