The Board granted a petition for cancellation of a registration for the mark SCHIEDMAYER for “pianos, namely, upright pianos, grand pianos, and digital pianos,” finding that the mark falsely suggests a connection with Petitioner in violation of Section 2(a). The Board rejected Respondents’ laches defense, finding that although Petitioner’s delay of nearly seven and one-half years before filing its petition for cancellation was unreasonable, Respondents failed to prove any material damage resulting from the delay. Schiedmayer Celesta GmbH v. Piano Factory Group, Inc. and Sweet 16 Musical Properties, Inc., 2019 USPQ2d 38409 (TTAB 2019) [precedential] (Opinion by Judge Michael B. Adlin).

Petitioner manufactures and sells a keyboard instrument known as a celesta. A celesta is similar to a piano, but rather than striking wires the celesta keys strike a metal plate to make sounds. Nonetheless, a celesta resembles a piano and is played as a piano would be played. Petitioner and its CEO, Ms. Schiedmayer, are connected to the original German Schiedmayer family and business known for offering keyboard instruments for some 200 years.

Respondents are Los Angeles piano dealers that retail, but do not manufacture, pianos. They added the SCHIEDMAYER name plate to “no-name” pianos (also known as “stencil pianos”) from China, a practice not uncommon in the keyboard instrument field. Respondents sold about 29 SCHIEDMAYER brand pianos from 2007-2018.

Section 2(a): In order to prove its false connection claim under Section 2(a), Petitioner had to show that SCHIEDMAYER is “unmistakably associated with a particular personality or ‘persona.'” Univ. of Notre Dame Du Lac v. J.C. Gourmet Food Imps. Co., Inc., 703 F.2d 1372, 217 USPQ 505, 509 (Fed. Cir. 1983).

To make this showing, Petitioner must establish that: (1) the mark is the same as, or a close approximation of, Petitioner’s previously used name or identity; (2) the mark would be recognized as such, in that it points uniquely and unmistakably to Petitioner; 3) Petitioner is not connected with the activities performed by Respondents under the mark; and 4) Petitioner’s name or identity is of sufficient fame or reputation that when Respondents use the mark in connection with their goods or services, a connection with Petitioner would be presumed. Id.; Bos. Athletic Ass’n, 117 USPQ2d at 1495; Bondarchuk, 82 USPQ2d at 1842; Hornby v. TJX Cos., Inc., 87 USPQ2d 1411, 1424 (TTAB 2008); Buffett v. Chi- Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985).

Because “celesta” merely describe Petitioner’s primary product and GmbH is merely its German entity designation, “‘Schiedmayer'” is Petitioner’s name and identity.” The record evidence, including encyclopedia entries, Internet search results, and media mentions, demonstrated that “Petitioner and its instruments are known to and by the public as ‘Schiedmayer.'” Respondent’s registration is for that same name.

The record evidence also demonstrated that SCHIEDMAYER points uniquely and unmistakably to Petitioner. Respondents’ use of SCHIEDMAYER is “strong evidence that they seek to draw a connection between their goods and Petitioner, the prominent source of SCHIEDMAYER keyboard musical instruments in the United States.” In fact, Petitioner is the only entity that SCHIEDMAYER could possibly identify. Respondents conceded that they are not connected to Petitioner in any way.

Finally, the evidence established that SCHIEDMAYER is famous in the United States in connection with keyboard musical instruments. The Board rejected Respondents’ argument that, although Petitioner may have some level of fame for celestas and glockenspiels, that fame does not carry over to pianos. It noted that the difference between pianos and these keyboard instruments are “internal, mechanical, and perhaps not even noticeable or known by some consumers.” In light of Respondents’ use of SCHIEDMAYER, the Board “‘may draw an inference that [Respondents] inten[d] to create a connection with’ Petitioner, and that the public would make the false association. In re Peter S. Herrick, P.A., 91 USPQ2d at 1509 (citing In re N. Am. Free Trade Ass’n, 43 USPQ2d 1282, 1285 (TTAB 1997) (quoting Univ. of Notre Dame, 217 USPQ at 509)).”

The Board found that Petitioner had satisfied all four elements of the Section 2(a) test, and that Respondents’ mark falsely suggests a connection with Petitioner.

Laches: The defense of laches requires proof of (1) unreasonable delay in asserting one’s rights against another; and (2) material prejudice to the latter resulting from the delay. Lincoln Logs, 23 USPQ2d at 1703. “[L]aches begins to run from the time action could be taken against the acquisition by another of a set of rights to which objection is later made. In an opposition or cancellation proceeding the objection is to the rights which flow from registration of the mark.” Nat’l Cable Television Ass’n v. Am. Cinema Editors, Inc., 937 F.2d 1572,
19 USPQ2d 1424 (Fed. Cir. 1991).

Here, the petition for cancellation was filed nearly seven and one-half years after the challenged registration issued: “fairly long, and in the absence of extenuating circumstances or an excuse, unreasonable.” Petitioner provided no excuse for its delay, and so the Board found the period of delay unreasonable.

However, Respondents failed to prove material damage resulting from the delay. Their only evidence was a “general recollection” that Respondents sold at most 17 SCHIEDMAYER-labeled pianos between issuance of the registration and the filing of the cancellation petition.

Respondents’ claim of prejudice rings hollow where the only direct, marginal expense incurred in selling SCHIEDMAYER-labeled pianos is buying the SCHIEDMAYER labels from trophy or decal makers. Indeed, virtually all of the money Respondents spent to offer SCHIEDMAYER-labeled pianos related to acquisition of the no-name pianos themselves, which could just as easily be labeled something else.

In sum, Respondents failed to show “any meaningful economic or other damage” or any significant change of position resulting from Petitioner’s delay. Consequently, they failed to meet their burden of establishing that the petition is barred by laches.

Conclusion:
The Board granted the petition for cancellation.

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TTABlog comment: I love that Billy Joel tune, “Celesta Man.”

Text Copyright John L. Welch 2019.