# Piano Factory v. Schiedmayer: False Suggestion of Connection and a Constitutional Test for the TTAB

> The Federal Circuit affirmed cancellation of SCHIEDMAYER under Section 2(a) and held that TTAB judges are lawfully appointed after Arthrex.

Topic: Trademarks  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/blog/piano-factory-v-schiedmayer-false-suggestion/


Trademark law rarely lets a merchant borrow a stranger's identity, and *Piano Factory Group, Inc. v. Schiedmayer Celesta GmbH*, 11 F.4th 1363 (Fed. Cir. 2021) (No. 2020-1196), is a precise illustration of why. Decided September 1, 2021, the precedential opinion from the U.S. Court of Appeals for the Federal Circuit did two things at once. It affirmed the Trademark Trial and Appeal Board's cancellation of a registration for SCHIEDMAYER on the ground that the mark falsely suggested a connection with a nearly three-hundred-year-old family of German keyboard-instrument makers, and it resolved a fresh constitutional attack on the very judges who had ordered that cancellation. The result is a rare full appellate walkthrough of Section 2(a)'s false-suggestion doctrine bundled with an answer to the post-*Arthrex* question every trademark litigant was asking.

## At a glance

- **Case:** *Piano Factory Group, Inc. v. Schiedmayer Celesta GmbH*, 11 F.4th 1363 (Fed. Cir. 2021), No. 2020-1196.
- **Decided:** September 1, 2021; precedential opinion of a Federal Circuit panel; TTAB cancellation affirmed.
- **Holding:** Substantial evidence supported cancellation of SCHIEDMAYER under Section 2(a) for falsely suggesting a connection with the German instrument maker, and TTAB administrative trademark judges are lawfully appointed inferior officers.
- **Status:** Final; rehearing denied.

## The name on the piano

The dispute began with a labeling practice. Piano Factory Group and its affiliate acquired unbranded pianos, described in the record as "no-name" instruments manufactured in China, and affixed to them the name SCHIEDMAYER before selling them in the United States. The registrant obtained a federal registration for the SCHIEDMAYER mark covering pianos. On the other side stood Schiedmayer Celesta GmbH, the modern successor to a line of German companies that had made and sold keyboard instruments under the Schiedmayer name for close to three centuries. Its current specialty is the celesta, a struck-keyboard instrument that resembles a small upright piano and produces the bell-like tone familiar from orchestral works. Schiedmayer Celesta petitioned to cancel the registration, arguing that the retailer had appropriated a storied name to lend imported pianos an aura of European craftsmanship the instruments did not earn.

## The four elements of false suggestion

Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), bars registration of a mark that "may falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols." The Federal Circuit tests that prohibition through the four-part framework it announced in *University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.*, 703 F.2d 1372 (Fed. Cir. 1983). A challenger must show that the defendant's mark is the same as or a close approximation of the challenger's previously used name or identity; that the mark would be recognized as such, pointing uniquely and unmistakably to the challenger; that the challenger is not connected with the goods sold or activities performed under the mark; and that the challenger's name or identity is of sufficient fame or reputation that, when the mark is used on the defendant's goods, a connection with the challenger would be presumed.

The Board found each element satisfied, and the Federal Circuit held that substantial evidence supported those findings. SCHIEDMAYER was not merely similar to the German maker's identity; it was that identity. The Schiedmayer name pointed to a single, identifiable source in the world of keyboard instruments, and the record showed the registrant had no connection to that source. The court also credited evidence that the retailer intended to trade on the German name's cachet, which reinforced the conclusion that consumers would presume a connection. False suggestion under Section 2(a) does not require proof of likely confusion in the ordinary trademark sense. It asks a narrower and more identity-focused question: would the mark cause the public to assume a link to a real person or institution that has no such link.

## Why the challenger needed no registration of its own

One of the opinion's most practically important points concerns standing and the nature of the right Section 2(a) protects. Piano Factory argued that Schiedmayer Celesta could not prevail because it did not own a U.S. trademark registration or established U.S. trademark rights in SCHIEDMAYER. The Federal Circuit rejected that premise. Section 2(a) protects a party's name and persona against false association; it is not a contest between two trademark owners. A person or institution may invoke the false-suggestion bar to stop someone else from registering a mark that trades on the party's identity, whether or not that party has ever sought its own registration. The doctrine guards identity, not priority. That distinction is what makes Section 2(a) a distinct tool from a conventional likelihood-of-confusion opposition, and it is why famous names, historical figures, and foreign institutions can block registrations even without a U.S. trademark portfolio.

## The Arthrex challenge and the structure of the TTAB

While the appeal was pending, the Supreme Court decided *United States v. Arthrex, Inc.*, 594 U.S. 1 (2021), holding that the administrative patent judges of the Patent Trial and Appeal Board had been exercising the unreviewable power of principal officers without the presidential appointment the Appointments Clause of Article II requires. The Court's remedy was to make PTAB decisions reviewable by the USPTO Director. Piano Factory seized on the ruling, contending that the administrative trademark judges who had cancelled its registration suffered the same constitutional defect.

The Federal Circuit disagreed and drew a structural distinction. The problem in *Arthrex* was that sections 6(c) and 318(b) of the Patent Act deprived the Director of the power to review and reverse PTAB decisions on the merits. The TTAB is different because no analogous statutory restraint limits the Director's authority in the trademark context, so the Director possesses authority to review and control the Board's decisions. Piano Factory pressed a timing argument, since the Board decided this case in 2019, before the Trademark Modernization Act of 2020 addressed the Director's role. The court rejected it: the 2020 legislation, in the court's words, "merely confirmed, and did not alter, the Director's authority," which the trademark statutes had already supplied. Because the Director can review and modify TTAB determinations, the administrative trademark judges act as inferior officers, and their appointment by the Secretary of Commerce is constitutional. The upshot: the constitutional fault line the Supreme Court found at the PTAB does not run through the TTAB, and litigants cannot use *Arthrex* to unwind trademark cancellations.

## Open questions

- **How much intent evidence is needed?** The court treated evidence of the registrant's intent to trade on the Schiedmayer name as reinforcing the false-suggestion finding, but Section 2(a) does not formally require bad intent. The weight intent carries in closer cases remains unsettled.
- **How famous must a foreign institution be?** SCHIEDMAYER pointed uniquely to a specialized instrument maker known within a niche. Just how broad the relevant public must be for a name to point "uniquely and unmistakably" is still fact-dependent.
- **What the court did settle about Director review.** This one is not open. The panel held it "irrelevant whether the Director has implemented a procedure for rehearing TTAB decisions," reasoning that the Appointments Clause exists to prevent unappointed officials from wielding too much authority, not to guarantee litigants procedural rights. Availability of the authority, not its exercise, is what matters.

## Implications for brands and businesses

- **Do not borrow a heritage you cannot claim.** Affixing an established maker's name to unrelated goods invites cancellation under Section 2(a) even if no one is technically confused about a competitor. The false-suggestion bar reaches identity itself.
- **You can defend your name without a U.S. registration.** If another party registers a mark that trades on your institution's identity, you may seek cancellation under Section 2(a) whether or not you hold your own U.S. trademark. Document the fame and uniqueness of your name.
- **Clear the field for personal and institutional names.** Before adopting a surname or historic brand, confirm it does not point uniquely to a living person, a defunct maker with a continuing successor, or an institution whose reputation the public would recognize.
- **Do not count on Arthrex to reopen TTAB losses.** The Federal Circuit has closed that avenue. Trademark cancellations and refusals rest on a constitutionally sound administrative structure.

## Frequently asked questions

**What does false suggestion of a connection under Section 2(a) require?** The Federal Circuit applies a four-part test: the mark is the same as or a close approximation of the other party's previously used name or identity; it points uniquely and unmistakably to that party; the party is not connected with the goods sold under the mark; and the party's name or reputation is famous enough that a connection would be presumed. All four elements must be met, and the challenger does not need to own its own U.S. trademark registration.

**Did the challenger have to own a U.S. trademark to win?** No. Section 2(a) protects a person or institution's name and identity, not only registered marks. Schiedmayer Celesta GmbH could seek cancellation even though it held no U.S. registration, because the statute guards against false suggestions of a connection with an identifiable party regardless of that party's own trademark filings.

**Are TTAB administrative trademark judges constitutionally appointed?** Yes. The Federal Circuit held that unlike the PTAB judges in United States v. Arthrex, TTAB administrative trademark judges are inferior officers because the USPTO Director has statutory authority to review and modify their decisions. That authority predates the Trademark Modernization Act of 2020, which the court said merely confirmed and did not alter it. Their appointment therefore does not violate the Appointments Clause.

## Authorities and sources

- [*Piano Factory Group, Inc. v. Schiedmayer Celesta GmbH*, No. 2020-1196 (Fed. Cir. Sept. 1, 2021) (precedential opinion)](https://www.cafc.uscourts.gov/9-01-2021-20-1196-piano-factory-group-inc-v-schiedmayer-celesta-gmbh-opinion-20-1196-opinion-9-1-2021_1827943/)
- [Opinion PDF, No. 2020-1196 (Fed. Cir. 2021)](https://www.finnegan.com/a/web/27TgLoFp1DHhwLxY7XF7by/3cSsEN/201196_pianofactorygroup_v_schiedmayercelesta.pdf)
- [*University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.*, 703 F.2d 1372 (Fed. Cir. 1983)](https://law.resource.org/pub/us/case/reporter/F2/703/703.F2d.1372.82-588.61847.html)
- [15 U.S.C. § 1052(a) (Lanham Act Section 2(a))](https://www.law.cornell.edu/uscode/text/15/1052)
- [*United States v. Arthrex, Inc.*, 594 U.S. 1 (2021)](https://www.supremecourt.gov/opinions/20pdf/19-1434_ancf.pdf)
- [Knobbe Martens, "Federal Circuit Finds No Constitutional Defect in Appointment of TTAB Judges"](https://www.knobbe.com/blog/federal-circuit-finds-no-constitutional-defect-appointment-ttab-judges/)
- [Kluwer Trademark Blog, "Trademark case: Piano Factory Group Inc. v. Schiedmayer Celesta GmbH"](https://legalblogs.wolterskluwer.com/trademark-blog/trademark-case-piano-factory-group-inc-v-schiedmayer-celesta-gmbh-usa/)