September 1, 2021
False Association Under 2(a) is not the Same As Likelihood of Confusion Under 2(d)
In Piano Factory Group, Inc. v. Schiedmayer Celesta GmbH, [2020-1196] (September 1, 2021), the Federal Circuit affirmed the TTAB’s cancellation of Piano Factory’s registration on Schiedmayer for falsely suggesting a connection with Schiedmayer in violation of Section 2(a).
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. 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.”
For the first time on appeal, Piano Factory raised a defense of laches, which the Federal Circuit rejected, since it wasn’t raised before the TTAB. The Federal Circuit also rejected Piano Factory’s argument that Schiedmayer could not raise false association with non-parties, but the Federal Circuit found that it is enough that a petitioner have a real interest in the proceeding, and it was not necessary for that party to join every other party that might have such an interest. Further, the Federal Circuit noted that 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.
Piano Factory also complained that the Board erred in defining its goods as “keyboard musical instruments” rather than pianos as listed in the registration, and erred in characterizing Schiedmayer’s business as manufacturing and selling “keyboard musical instruments” rather than manufacturing and selling celestas and glockenspiels. The Federal Circuit said this argument misapprehends the nature of the section 2(a) bar to registration. The Court explained that 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. Thus, the Federal Circuit said it was 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. Thus, it did not matter that Piano Factory limited its registration of the Schiedmayer mark to pianos, as long as the use of that mark falsely suggested an association between Piano Factory’s Schiedmayer-branded pianos and Schiedmayer.
Finally, another named appellant, Sweet 16, challenged 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-factor test examines whether:
- The mark is the same as, or a close approximation of, the name or identity previously used by another person;
- the mark would be recognized as pointing uniquely and unmistakably to that person;
- the person named by the mark or using the mark is not connected with the activities performed by the applicant under the mark; and
- 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.
With respect to Factor 2, Piano Factory argued that the Board erred in finding that the “Schiedmayer” mark points uniquely and unmistakably to the appellee. The Federal Circuit noted that the Board assessed the evidence, and concluded that there was no proof that anyone other than Piano Factory and Schiedmayer is currently using the mark for keyboard musical instruments in the United States.
With respect to Factor 4, Piano Factory argued that Schiedmayer did not have sufficient fame and reputation at the time the mark was registered such that a connection with the appellee would be presumed. The Federal Circuit found that 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, when Piano Factory, received the registration.
Piano Factory further argued that 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. The Federal Circuit noted that 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 Federal Circuit pointed out that the Board found that celestas are close cousins of pianos and that from the outside they look quite similar, and that it was reasonable for the Board to consider the issue of the Schiedmayer’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 Schiedmayer.
In sum, the Federal Circuit said that 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 Piano Factory’s products that a connection with the appellee would be presumed. The Federal Circuit concluded that substantial evidence supports the Board’s conclusion on that issue.