Piano Factory v. Schiedmayer Celesta GmbH (Fed. Cir. 2021)
The Schiedmayer family has been making and selling pianos since the 1700s, although the current version of the company makes only Celestas and Glockenspiels, not the 88 key Piano Forte that is popular in the US. The last Schiedmayer family pianos were apparently built and sold back in 1980. For a few years the Japanese company Kawai also sold some Schiedmayer branded pianos (apparently without license).
Piano Factory’s director noted around 2001 that nobody was making Schiedmayer brand pianos any longer and assumed the mark must have been abandoned. So, Piano Factory began branding labelling unbranded pianos with the Schiedmayer brand and selling them to the public. The following is Piano Factory’s explanation of its own operation:
When a SCHIEDMAYER branded piano was needed on the showroom floor, a quality piano from those in the warehouse, such as an unbranded piano manufactured by companies like American Sejung Corp, had a SCHIEDMAYER brand nameplate placed on it.
Piano Factory Brief.
More than a decade later, the Schiedmayer Celesta company petitioned to cancel the mark, and the TTAB complied, finding that Piano Factory’s use of the mark created a false association. The TTAB also rejecting Piano Factory’s a laches defense. This case is now on appeal.
I first note the appeal because oral arguments included a fabulous bit of singing — apparently a first for the Federal Circuit. Listen and watch in the video.
The case argues the Arthrex issue for the TTAB, although its unclear what remedy Piano Factory is now seeking. I believe there is a good chance that the court will issue a statement in this case that the PTO Dir. has power to review certain TTAB decisions.
The merits argument basically boils down to two arguments: First argument is premised on evidence that one or more third parties were using the Schiedmayer name without permission for a decade before Piano Factory started on, and then Piano Factory used the name for 15 more years. Does this create (a) laches; (b) an inference of abandonment; or (c) an inference that maybe Schiedmayer doesn’t have exclusive rights. Second argument is that Schiedmayer’s current business (celestas and glockenspiels) isn’t close enough to Piano Factory’s business (pianos) to create likely confusion.
The answer to the second question is (shoudl be ) easy: Anyone with any musical background, any likely consumer, would assume that a brand used for any musical instrument, when earlier applied to another musical instrument, comes from the same source, such as Yamaha (pianos, electric organs, Glockenspiels, tubas, saxaphones), Bach (trumpets and trombones) Conn (trombones, french horns, tubas) Besson (euponiums, trombones, trumpets), Breedlove Guitars (guitars, ukeleles) and even Steinway (grand pianos, player pianos), and even Stradavarius (violins, violas, cellos and bass). They all sell related, and even unrelated musical instruments under the same brand name. Any musical consumer would assume, based on famous industry practice, that a piano with the Schiedmayer brand comes from the same source as the Schiedmayer brand celestas and glockenspiels. In fact, one would be hard pressed to find a company that sold only a single musical instrument.
Now I wonder how Schiedmayer could get to the appeal stage with this issue still in the air? How could this possibly be arguable after decent survey evidence?
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