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 

KEVIN HAWKES, Iptechlaw, Scottsdale, AZ. 

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2 PIANO FACTORY GROUP, INC. v. SCHIEDMAYER CELESTA GMBH

 MICHAEL J. STRIKER, Delray Beach, FL, argued for appellee. 

 JENNIFER UTRECHT, Appellate Staff, Civil Division, 

United States Department of Justice, Washington, DC, argued for intervenor. Also represented by BRYAN M.

BOYNTON, SCOTT R. MCINTOSH, MELISSA N. PATTERSON; 

THOMAS L. CASAGRANDE, ERICA JEUNG DICKEY, CHRISTINA 

J. HIEBER, THOMAS W. KRAUSE, FARHEENA YASMEEN 

RASHEED Office of the Solicitor, United States Patent and 

Trademark Office, Alexandria, VA. 

 ______________________ 

Before PROST, BRYSON, and STOLL, Circuit Judges. 

BRYSON, Circuit Judge. 

In this trademark case, the appellants, Piano Factory 

Group, Inc., and Sweet 16 Musical Properties, Inc. (collectively, “Sweet 16”), seek review of a decision of the Trademark 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 instruments, depressing the keys activates felt hammers inside 

the body of the instrument. The principal difference between the two instruments is that the felt hammers in celestas 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 instruments—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 manufactured pianos under the Schiedmayer name. That arrangement ended quickly, however, and Mr. Schiedmayer shifted 

his focus to making celestas. The “Schiedmayer” trademark was not sold, assigned, or otherwise transferred to 

Ibach or any other entity. At some point, the Ibach company 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 assignment. Piano Factory, 2019 WL 4322918, at *2.

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4 PIANO FACTORY GROUP, INC. v. SCHIEDMAYER CELESTA GMBH

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 pianos; they are purely retail outlets. 

The owner of those companies, Glenn Treibitz, believed 

that the “Schiedmayer” mark had been abandoned for pianos 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 pianos. The Patent and Trademark Office issued a registration 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 affix 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 pianos 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 recognized 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 petition with the TTAB, seeking to cancel Sweet 16’s registration 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 Lanham 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 Celesta had standing to bring the cancellation proceeding. 

Schiedmayer Celesta, the Board found, “is named after the 

Schiedmayer family known for keyboard musical instruments, [and] is owned by a member of that family and uses 

Schiedmayer as a trademark for keyboard musical instruments.” 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 opinion 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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6 PIANO FACTORY GROUP, INC. v. SCHIEDMAYER CELESTA GMBH

“Schiedmayer” mark is effectively the same as the appellee’s name and identity; (2) that the registered mark points 

uniquely and unmistakably to the appellee; (3) that the appellee 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 because 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 connection is designed not just to protect against deceptive use in 

commerce, but “to protect persons and institutions from exploitation 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 likelihood 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 violated.”). 

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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 between Sweet 16’s registration of the “Schiedmayer” mark 

and Schiedmayer Celesta’s filing of its petition for cancellation 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 continuously 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 financial injury that likely would have been avoided if the cancellation 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 trademark 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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8 PIANO FACTORY GROUP, INC. v. SCHIEDMAYER CELESTA GMBH

Director of the Patent and Trademark Office, as intervenor, 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 before 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 concluded that the APJs must be regarded as principal officers 

of the United States. The Court held that, absent a modification of the APJs’ authority, the APJs could constitutionally 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 unconstitutionally appointed.5

4 The appellee defers to the intervenor’s presentation 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 before 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 Presidential appointee, supervises the APJs in many respects, having powers of “administrative oversight” over the APJs 

through mechanisms such as fixing their pay rate, controlling the decision whether to institute inter partes review, 

selecting the APJs to serve on inter partes review panels, 

promulgating regulations governing inter partes review, issuing 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 supervisory authority came to a halt with respect to “the one thing 

that makes the APJs officers exercising ‘significant authority’ in the first place—their power to issue decisions on patentability.” 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 proceedings be heard by panels consisting of a minimum of 

three members. Furthermore, the statute specifies that 

Appointments Clause issue was one of exceptional importance 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 Appointments Clause issue raised by Sweet 16 is important, and 

even though Congress has taken steps to address that issue, Sweet 16 contends that those steps have not mooted 

the issue going forward.

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10 PIANO FACTORY GROUP, INC. v. SCHIEDMAYER CELESTA GMBH

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 “without 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 language, the Court held that it denies the Director the authority 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 constitutional violation. Consistent with the reasoning underlying its finding of an Appointments Clause violation, the 

Court held that section 6(c) of the Patent Act could not constitutionally be enforced “to the extent that its requirements 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 limitation on his authority, would have “the authority to provide 

for a means of reviewing PTAB decisions,” and that the Director could “review final PTAB decisions and, upon review, . . . 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 Appointments Clause. Id. at 1987.7 In that circumstance, review 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 authority over decisions of the TTAB, the statutory scheme governing TTAB decision-making is not subject to the 

Appointments Clause problem the Court identified with regard 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 current trademark statutes plainly render the ATJs “inferior 

officers,” making their appointments by the head of a department, i.e., the Secretary of Commerce, lawful. 

7 Part III of the Chief Justice’s opinion, which addresses 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 decisions 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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12 PIANO FACTORY GROUP, INC. v. SCHIEDMAYER CELESTA GMBH

The wrinkle here is that this case was decided by the 

Board prior to the enactment of the Trademark Modernization 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 principal 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 administrative trademark judges and their decisions than over 

administrative patent judges in inter partes review proceedings. 

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 restraints on the Director’s authority in the trademark context. 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 Office” 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 issued.

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 respective rights of registration.” And section 1067(b) provides 

that the Board shall include the Director, the Deputy Director, the Commissioner for Patents, and the Commissioner for Trademarks, as well as administrative 

trademark judges appointed by the Secretary of Commerce. As a result, the Director has discretion regarding 

the size and composition of TTAB panels, which the Director 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 initially 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 decisions. We disagree. The Director’s broad supervisory authority under 15 U.S.C. §§ 1123 and 1068 (2000 eds.), 

together with the absence of any limitation on the composition of TTAB panels, see id. § 1067, indicates that the Director 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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14 PIANO FACTORY GROUP, INC. v. SCHIEDMAYER CELESTA GMBH

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 decisions 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 parties under this chapter may be established in the proceedings,” 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 regulations governing TTAB proceedings confirm that the Director 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 canceled 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 contention, 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 period 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 appointment 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 administrative judge’s appointment for all purposes. 

The mandatory language in section 1092 is of no consequence in light of the Director’s authority to rehear the decisions of TTAB panels. That is clear from the remedy 

ordered by the Supreme Court in Arthrex. Despite a similar provision in the Patent Act, 35 U.S.C. § 318(b), stating

that the Director “shall issue and publish a certificate” canceling, affirming, or amending claims in accordance with 

the PTAB’s decision, the Court left section 318(b) untouched when fixing the Appointments Clause problem, 

and instead rendered unenforceable section 6(c)’s limitations 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 limitation 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 follows 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 substance 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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16 PIANO FACTORY GROUP, INC. v. SCHIEDMAYER CELESTA GMBH

“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 regarding a mark on the supplemental register, the registration 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 legislation 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 Director’s authority. The section of the 2020 legislation adding 

language concerning the Director’s authority expressly refers 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 context,” and that “the statutory additions should be understood 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 review of adverse TTAB decisions. That argument is unpersuasive 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 authority, 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 decisions; 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 Director’s authority to review TTAB decisions was the same before 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 legitimacy 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 respect to Sweet 16’s defense of laches. Appellants’ Opening 

Br. 15–18. The Board rejected that defense on the ground 

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18 PIANO FACTORY GROUP, INC. v. SCHIEDMAYER CELESTA GMBH

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 adverse 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 material 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 adverse 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 overlooking 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 “defining the petitioner” in the cancellation proceeding. Appellants’ 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 unidentified person with the last name Schiedmayer claiming 

an interest in the surname applied to keyboard instruments,” such persons must be joined in the cancellation action, 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 damaged” by the registration of the mark on the principal register. 15 U.S.C. § 1064. Thus, any party with a “real 

interest in the proceeding” and a “reasonable belief in damage” 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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20 PIANO FACTORY GROUP, INC. v. SCHIEDMAYER CELESTA GMBH

interest in the proceeding need not join a subsidiary company that had control of the trade name).

To the extent Sweet 16 is arguing that Schiedmayer 

Celesta lacked standing to bring the cancellation proceeding, 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 registration on the principal register if it “falsely suggest[s] a connection 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 proprietary rights to a name as long as the party has a reasonable 

belief that it will be or is being damaged by the false suggestion of a connection between a person and the challenged mark. See Jewelers Vigilance Comm., Inc. v. 

Ullenberg Corp., 823 F.2d 490, 493–94 (Fed. Cir. 1987); Estate 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 reputation of the Schiedmayer brand. That contention clearly establishes 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 proceeding, we again disagree. As the Board pointed out, this 

is not a case in which other Schiedmayer companies or individuals appear to have interests that conflict with the interests 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 defining the goods at issue as being “keyboard musical instruments” 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 characterizing Schiedmayer Celesta’s business as manufacturing 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 therefore 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 registered mark falsely suggests a connection with a person 

other than the registrant. For that reason, it does not matter 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 between pianos and celestas exacerbates the false connection 

between the registered mark and Schiedmayer Celesta. 

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22 PIANO FACTORY GROUP, INC. v. SCHIEDMAYER CELESTA GMBH

Even if consumers understood the differences between celestas and pianos, that would not prevent them from concluding 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 association. 

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 identified as follows:

(1) The mark is the same as, or a close approximation of, the name or identity previously used by another 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 person 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 contests 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 disputed 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 determining that the fame or reputation of the appellee extended 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 anyone 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 Internet 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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24 PIANO FACTORY GROUP, INC. v. SCHIEDMAYER CELESTA GMBH

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 pianos, 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, assigned 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 association 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 connection 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 successor, 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 licensee, whose activities imply, wrongly, that they are affiliated with the entity that gave them permission to use the 

mark. See, e.g., Church of Scientology Int’l v. Elmira Mission of the Church of Scientology, 794 F.2d 38, 44 (2d Cir. 

1986). Thus, Sweet 16’s evidence, even if accepted as admissible, does not establish that the Board erred in finding 

that the name “Schiedmayer” points uniquely and unmistakably to the appellee.

2. As to the second point, Sweet 16 argues that the evidence 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. BAMAWerke 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 predated or post-dated Sweet 16’s registration date of 2007. 

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26 PIANO FACTORY GROUP, INC. v. SCHIEDMAYER CELESTA GMBH

The Board did not err in relying on recent publications 

or the history of the Schiedmayer companies to draw inferences 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 significance 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 occurred 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 evidence 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 assessing the appellee’s fame and reputation, the Board disregarded 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 musical instruments generally, not just to the two keyboard instruments 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 outside they look quite similar. The differences between celestas and pianos, the Board found, “are internal, mechanical 

and perhaps not even noticeable to or known by some consumers 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 conclude that the pianos were made by or associated with the 

Schiedmayer companies in general and Schiedmayer Celesta 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” factor, 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 association. 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. Unlike in the case of trademark or trade name infringement, 

it is enough that the defendant-applicant uses the plaintiff’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 between the goods or services offered under the registered 

mark and the goods or services offered by the party challenging 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 Practice § 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 famous among the particular consumers of those goods and 

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28 PIANO FACTORY GROUP, INC. v. SCHIEDMAYER CELESTA GMBH

services even if it is not famous among members of the general public. And a party’s name may be associated with 

particular goods such that a false association may be established 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 consider the issue of the appellee’s fame and reputation from 

the perspective of purchasers of keyboard musical instruments, 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 association. 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 identify 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 practice 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 Defense 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 justify 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 consumers of Sweet 16’s products that a connection with the 

appellee would be presumed. We thus conclude that substantial evidence supports the Board’s conclusion on that 

issue.

* * * 

Taking a step back from the doctrinal principles discussed 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 GermanCase: 20-1196 Document: 80 Page: 29 Filed: 09/01/2021
30 PIANO FACTORY GROUP, INC. v. SCHIEDMAYER CELESTA GMBH

sounding name to stencil on its no-name pianos. Instead, 

it has chosen a name long associated with a German manufacturer of high-end keyboard instruments, a manufacturer 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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