Schiedmayer Celesta GmbHv.Piano Factory Group, Inc. and Sweet 16 Musical Properties, Inc.

Trademark Trial and Appeal Board

Sep 11, 2019

92061215 (T.T.A.B. Sep. 11, 2019)

Mailed: September 11, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
————
Schiedmayer Celesta GmbH
v.
Piano Factory Group, Inc. and Sweet 16 Musical Properties, Inc.
___

Cancellation No. 92061215

___

Michael J. Striker of Collard & Roe, PC
for Schiedmayer Celesta GMBH.

Adam Stephenson of IPTechLaw
for Piano Factory Group, Inc. and Sweet 16 Musical Properties, Inc.
______
Before Taylor, Adlin and Pologeorgis,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Respondent Sweet 16 Musical Properties, Inc. (“Sweet 16”) (by assignment from
co-Respondent Piano Factory Group, Inc. (“Piano Factory”)) owns a registration for
the mark SCHIEDMAYER in typed form for “pianos, namely, upright pianos, grand
pianos, and digital pianos.”1 In its third amended petition for cancellation, 34

1 Registration No. 3340759, issued November 20, 2007; Section 8 affidavit accepted and
Section 15 affidavit acknowledged; renewed (the “Registration”).
This Opinion is a
Precedent of the TTAB
Cancellation No. 92061215
2
TTABVUE,2 Petitioner Schiedmayer Celesta GmbH (“Schiedmayer”) alleges that it is
the “successor in interest to the trademark SCHIEDMAYER dating to its origin in
the year 1735,” and that beginning well prior to Respondents’ first use of the involved
mark, “Schiedmayer and its predecessors in interest have manufactured and sold
Schiedmayer keyboard instruments” worldwide, including in the United States. As
grounds for cancellation, Petitioner alleges that Respondents’ use of SCHIEDMAYER
falsely suggests a connection with Petitioner under Section 2(a) of the Trademark
Act, 15 U.S.C. § 1052(a), and that Respondents abandoned the involved mark based
on nonuse with intent not to resume use.3 In their answer, Respondents admit that
they have no connection to Petitioner, but otherwise deny the salient allegations in
the third amended petition for cancellation; they also assert the affirmative defenses
of laches and acquiescence.
I. The Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
the file of Sweet 16’s involved Registration. In addition, Petitioner introduced:
Notice of Reliance (“Pet. NOR”) on Respondent’s discovery
responses and initial disclosures. 37 TTABVUE.4

2 Citations to the record reference TTABVUE, the Board’s online docketing system. The
number preceding “TTABVUE” corresponds to the docket entry number(s), and any
number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the
cited materials appear.
3 Petitioner asserted a separate abandonment claim based on Piano Factory rather than
Sweet 16 signing the Section 8 declaration submitted to maintain the Registration, but has
withdrawn this claim. 75 TTABVUE 13 (Petitioner’ Trial Brief at 8).
4 We have considered Respondents’ written discovery responses, but not the unauthenticated
documents Respondents produced in response to Petitioner’s document requests. Trademark
Rule 2.120(k)(3)(ii) (“A party that has obtained documents from another party through
Cancellation No. 92061215
3
Testimony Declaration of Elianne Schiedmayer,
Petitioner’s Chief Executive Officer, and the exhibits
thereto (“Schiedmayer Dec.”). 38-39 TTABVUE.

Testimony Declaration of Olga Fuchs, an administrator
with Petitioner’s law firm, and the exhibits thereto (“Fuchs
Dec.”). 40 TTABVUE.

Testimony Declaration of Helga Kasimoff, a co-owner of
Kasimoff-Blüthner Piano Co., and the exhibits thereto
(“Kasimoff Dec.”). 41 TTABVUE.

Discovery deposition of Glenn Treibitz, Respondents’
principal and “main shareholder,” and the exhibits thereto
(“Treibitz Disc. Tr.”). 42 TTABVUE.

Oral cross-examination of Mr. Treibitz (concerning his
testimony declaration) (“Treibitz Test. Tr.”). 71 TTABVUE.

Rebuttal NOR on printed publications and Internet
printouts. 72 TTABVUE.

Rebuttal declaration of Ms. Schiedmayer and the exhibits
thereto (“Schiedmayer Rebuttal Dec.”). 73 TTABVUE.

Rebuttal declaration of Michael Floymayr, a German
patent attorney, and the exhibits thereto (“Floymayr
Rebuttal Dec.”). 74 TTABVUE.

Respondents introduced:
Notice of Reliance on Petitioner’s discovery responses,5 and
Trademark Office and Board records relating to uninvolved
application Serial No. 73475680 and Opposition No.
91073054 between Petitioner and a third party (“Resp.
NOR.”). 65 TTABVUE.

disclosure or under Rule 34 of the Federal Rules of Civil Procedure may not make the
documents of record by notice of reliance alone, except to the extent that they are admissible
by notice of reliance under the provisions of [37 C.F.R.] § 2.122(e) or the party has obtained
an admission or stipulation from the producing party that authenticates the documents.”).
5 For the reasons explained in footnote 4, we have not considered the documents Petitioner
produced in response to Respondents’ document requests, unless separately authenticated.
Cancellation No. 92061215
4
Testimony declaration of Russell Kassman, founder and
Chief Executive Officer of Lewent Enterprises LLC DBA R.
Kassman Piano (“Kassman Dec.”). 66 TTABVUE.

Testimony declaration of Mr. Treibitz, and the exhibits
thereto (“Treibitz Dec.”). 66 TTABVUE.

II. Facts of Record
Petitioner manufactures and sells “a keyboard musical instrument known as a
Celesta.” 38 TTABVUE 4 (Schiedmayer Dec. p. 1).6 Celestas have much in common
with pianos, but rather than striking wires, as piano keys do, celesta keys strike a
metal plate to make sounds:

Id. at 17. Notwithstanding this specific difference, a celesta “generally resembles a
piano and is played as a piano would be played,” as depicted in the advertisement
below:

6 Neither party numbered the paragraphs in any of the testimony declarations.
Cancellation No. 92061215
5

Id. at 5, 18 (Schiedmayer Dec. p. 2 and Ex. A).
Petitioner and its CEO Ms. Schiedmayer are connected to the German
Schiedmayer family and the Schiedmayer family businesses known for offering
musical keyboard instruments, including pianos and celestas, throughout the world.
Id. “The first Schiedmayer musical keyboard instrument was a clavichord
manufactured by Balthasar Schiedmayer in 1735.” Id. More than 200 years after
Balthasar Schiedmayer manufactured his first clavichord, Elianne Schiedmayer’s
late husband, Georg Schiedmayer, inherited the Schiedmayer family-affiliated
business Schiedmayer & Soehne from his father. Id.
Eventually, in 1980, Georg Schiedmayer “closed down the production of the
Schiedmayer pianos in Stuttgart,” and renamed the company Schiedmayer GmbH &
Co. KG. Id. at 6 (Schiedmayer Dec. p. 3). “In 1980, a joint venture company [had] been
created with Rud. Ibach GmbH in order to have Schiedmayer pianos manufactured
Cancellation No. 92061215
6
by the firm Ibach in Germany,” but that relationship ended quickly, and Georg
Schiedmayer decided in 1980 to specialize in celestas. Id. “[T]he trademark
SCHIEDMAYER was never sold, licensed, assigned or in any way transferred to Rud.
Ibach & Sohn,” however. 73 TTABVUE 5 (Schiedmayer Rebuttal Dec. p. 2).7 In any
event, “at some time in the 1990’s, Rud. Ibach & Sohn nevertheless started a
cooperation with the Kawai Company and some pianos were manufactured by Kawai
under a false SCHIEDMAYER trademark. These sales continued for a short period
of time and were then discontinued. Kawai never obtained any right or license or
assignment of any type of the SCHIEDMAYER trademark ….” Id. Mr. Floymayr, the
German patent attorney, testified that based on his search of German trademark
registrations, “no company bearing the name [Rud. Ibach & Sohn or] Ibach ever
obtained any rights to the trademark SCHIEDMAYER in Germany, either by original
filing, by assignment or any other transfer.” 74 TTABVUE 4-15 (Floymayr Dec. p. 1
and Ex. A).
Georg Schiedmayer died in 1992 and Elianne Schiedmayer was his sole heir. 38
TTABVUE 7, 29-31 (Schiedmayer Dec. p. 4 and Ex. C). She is now sole owner of
Schiedmayer GmbH & Co. KG, the current name of “Schiedmayer & Soehne GmbH
founded in 1809 by Johann Lorenz Schiedmayer in Stuttgart, Germany.” 73
TTABVUE 4 (Schiedmayer Rebuttal Dec. p. 1). In addition, Ms. Schiedmayer founded
Petitioner in 1995. Petitioner claims to be the only current producer of celestas that

7 It is not clear that “Rud. Ibach GmbH” (referenced in Ms. Schiedmayer’s original
declaration) is the same as “Rud. Ibach & Sohn” (referenced in her rebuttal declaration), but
this is ultimately immaterial to our decision.
Cancellation No. 92061215
7
meet the specifications developed by the celesta’s inventor. 38 TTABVUE 7-8
(Schiedmayer Dec. pp. 4-5); 73 TTABVUE 4 (Schiedmayer Rebuttal Dec. p. 1).
Ms. Schiedmayer testified, with support from Petitioner’s invoices and those of its
distributors, that Petitioner began offering celestas in the United States prior to
Respondent’s first use of the involved mark. 38 TTABVUE 9, 77-220 (Schiedmayer
Dec. p. 6 and Ex. F). Ms. Kasimoff testified that her Los Angeles piano store,
Kasimoff-Blüthner Piano Co., “imported our first Schiedmayer Celesta in 1967 and
since 1967 we have continuously offered for sale and rental Schiedmayer Celestas in
the United States.” 41 TTABVUE 11 (Kasimoff Dec. p. 1). The following are
representative advertisements for Petitioner’s celestas which predate Respondents’
first use of SCHIEDMAYER:

Id. at 236, 253. “[M]ost orchestras in the United States … have purchased and are
currently using at least one Schiedmayer Celesta,” including the New York
Philharmonic Orchestra, Boston Symphony Orchestra, Cleveland Orchestra, Los
Cancellation No. 92061215
8
Angeles Philharmonic, San Francisco Symphony and many others. 38 TTABVUE 10,
71-75 (Schiedmayer Dec. p. 7 and Ex. E); 41 TTABVUE 4-5 (Kassimoff Dec. p. 1-2).
The Wikipedia entry for “Schiedmayer” indicates that it “is the name of a German
Instrument-manufacturing family. Established in 1735 as a keyboard instrument
manufacturer, it is still active today as a family business.” 40 TTABVUE 8 (Fuchs
Dec. Ex. A). Google searches for “Schiedmayer” or “Schiedmayer celesta” yield results
that almost exclusively refer to Petitioner, the Schiedmayer family or Schiedmayer
keyboard instruments. Id. at 4, 13-35 (Fuchs Dec. p. 1 and Exs. B and C).8 From the
second half of the 19th century through the first half of the 20th, keyboard instruments
manufactured by the Schiedmayer family and its affiliated companies won many
awards and gained worldwide notoriety. 38 TTABVUE 10 (Schiedmayer Dec. p. 7). A
1796 Schiedmayer clavichord is on display in the permanent collection of the Boston
Museum of Fine Arts. Id. at 11 (Schiedmayer Dec. p. 8). Ms. Kasimoff testified that
she is “aware that the reputation and fame of Schiedmayer musical instruments
dates back almost 300 years and that Schiedmayer Celesta GmbH and Elianne
Schiedmayer represent the continuum of a history relating to the sale of keyboard
musical instruments dating back almost 300 years.” 41 TTABVUE 7 (Kasimoff Dec.
p. 4); see also 38 TTABVUE 22, 26-27 (Schiedmayer Dec. Ex. B, Musikinstrument

8 We have not relied on this Internet evidence for the truth of the matters asserted therein,
but only for what it shows on its face. Specifically, we have considered what these sources
state, rather than the truth of what they state.
Cancellation No. 92061215
9
article Ms. Schiedmayer testified is “true and correct” entitled “The Heavenly Piano
Builders”).
Respondent Sweet 16 is a Los Angeles piano dealer which claims to have acquired
all of Respondent Piano Factory’s assets in 2006.9 66 TTABVUE 6 (Treibitz Dec. p.
1). The Registration issued the following year, and in 2016 Respondents recorded an
assignment of the Registration to Sweet 16. Sweet 16 now uses both “Piano Factory”
and “Hollywood Piano” as DBAs. Id. Respondents are retailers, and do not
manufacture pianos. 37 TTABVUE 7 (Respondents’ Response to Petitioner’s
Interrogatory No. 5).
Respondents’ owner and president Mr. Treibitz has “been involved with piano
fortes (pianos) since 1981 as a performing artist and in working in every facet of the
piano business from sales and marketing to hands on rebuilding in a piano rebuilding
shop.” 66 TTABVUE 6 (Treibitz Dec. p. 1); 71 TTABVUE 7 (Treibitz Test. Tr. 4); 37
TTABVUE 132 (Respondents’ Initial Disclosures). He has also “been involved in the
sale and rental of approximately 50,000 pianos, including nearly all major piano
brands being manufactured today and many historical brands no longer under
manufacture.” 66 TTABVUE 6 (Treibitz Dec. p. 1).
In 2001, Mr. Treibitz had an “understanding,” apparently based on Kawai no
longer selling SCHIEDMAYER-branded pianos, that the SCHIEDMAYER mark had
been abandoned in the United States for pianos. Id. at 9 (Treibitz Dec. p. 4). Piano

9 Reel/Frames 5866/0016 and 5866/0019. Sweet 16 was joined as a co-defendant by the
Board’s December 21, 2016 order. 33 TTABVUE 21-22.
Cancellation No. 92061215
10
Factory filed its application to register the mark the following year, and the
application subsequently matured into the involved Registration.
Respondents merely sold, but did not manufacture, pianos bearing the
SCHIEDMAYER mark, however. “[T]he practice at Hollywood Piano was that when
a SCHIEDMAYER branded piano was needed on the showroom floor, we often
selected a quality piano from those in our warehouse that was a ‘no name’ or
unbranded piano manufactured by companies like American Sejung Corporation
(ASC) and placed our SCHIEDMAYER brand nameplate on it.” Id. In fact, all
“Schiedmayer” pianos Respondents have ever sold were bought “as no-name pianos
from China,” and Respondents affixed SCHIEDMAYER labels to each of them. 71
TTABVUE 30 (Treibitz Test. Tr. 27). Respondents purchased the “SCHIEDMAYER”
labels from trophy stores and decal makers. Id. at 31 (Treibitz Test. Tr. 28).
Respondents’ practice of buying unbranded, “no-name” pianos from China and
later branding them with marks of unaffiliated manufacturers is apparently not
uncommon in the keyboard instrument industry. The no-name pianos are known in
the industry as “stencil pianos,” and Mr. Treibitz agrees that “[a] classic example of
stencil pianos is when manufacturers produce a cheap-end piano that has a German
sounding name.” Id. at 36, 40 (Treibitz Test. Tr. 33, 37). Mr. Treibitz also agrees that
Respondents “are selling a relatively cheap no-name Chinese piano as a Schiedmayer
piano.” Id. at 41 (Treibitz Test. Tr. 38). As summarized in The Complete Idiot’s Guide
to Buying a Piano, which Mr. Treibitz testified was written by two of his former
employees, 70 TTABVUE 40 (Treibitz Test. Tr. 37):
Cancellation No. 92061215
11
Not all pianos are what they appear to be. For decades,
some manufacturers have built generic, lower-quality
pianos for distributors and retailers with a variety of
names stenciled on the front. These are called stencil
pianos. Often the stenciled name sounds close to that of a
more famous and recognizable brand. Frequently these
names come from old, defunct American companies that
still command some recognition in the marketplace. Names
are usually chosen because they sound American or
German, even though the piano may be made in Indonesia
or mainland China … Unsuspecting customers see that
name on a piano and assume they are getting great value,
when in fact, the actual instrument may or may not be at
the level of quality that name implies.

72 TTABVUE 9. See also id. at 12-13 (separate article mentioning use of
“Schiedmayar” as an example of a stenciled name which “sounds like Schiedmayer &
Soehne”) and 15-17. According to Ms. Schiedmayer, “[t]he sale of cheap ‘no name’
pianos manufactured in China and Indonesia under the great name Schiedmayer
diminishes and violates the fame and reputation of my name and the name of my
company and one of the great names in musical keyboard instruments ….” 73
TTABVUE 7 (Schiedmayer Rebuttal Dec. p. 4).
Mr. Treibitz testified that Sweet 16 sold “approximately 29” pianos bearing the
SCHIEDMAYER mark from 2007-2018. 66 TTABVUE 10 (Treibitz Dec. p. 5). The
quantity is approximate, and not supported by business records, “[d]ue to data losses
resulting both from migration of my record keeping software and due to losses
suffered from computer system failure.” Id. at 9 (Treibitz Dec. p. 4). Rather, the
figures are based on a “general recollection.” 71 TTABVUE 25 (Treibitz Test. Tr. 22).
Mr. Treibitz further testified, in conclusory fashion, that Sweet 16 never intended
to discontinue use of the SCHIEDMAYER mark, and never discontinued use of the
Cancellation No. 92061215
12
mark with an intent not to resume use. 66 TTABVUE 10 (Treibitz Dec. p. 5). Instead,
over the past three years, Mr. Treibitz has “been working diligently (including
traveling to China on multiple occasions) to evaluate Chinese piano manufacturers
to make pianos suitable for sale under the SCHIEDMAYER brand line.” Id. at 11
(Treibitz Dec. p. 6).
Respondents advertise their pianos bearing the SCHIEDMAYER mark by touting
their “German strings” as shown below:

Cancellation No. 92061215
13
Id. at 48 (Treibitz Dec. Ex. 12).
Mr. Treibitz acquired the “schiedmayer.com” domain name in 2002, and since that
time a “DNS redirect” has redirected those accessing “schiedmayer.com” to Hollywood
Piano’s website. Id. at 9, 11 (Treibitz Dec. pp. 4, 6); 40 TTABVUE 5, 66 (Fuchs Dec.
p. 2 and Ex. H). In addition, Mr. Treibitz owns the domain names “ritmuller.com,”
“voseandsons.com” and “shoninger.com,” and applied to register VOSE & SONS as a
trademark for “pianos, namely, upright pianos, grand pianos, and digital pianos;
piano keyboard instruments.”10 40 TTABVUE 5, 60-67 (Fuchs Dec. p. 2 and Ex. H);
42 TTABVUE 39-41, 148 (Treibitz Disc. Tr. 36-38 and Ex. 8); 66 TTABVUE 12
(Treibitz Dec. p. 7). Ritmuller, Vose and Sons and Shoninger are, or at least were,
piano manufacturers, and Respondents apparently use their names in connection
with stencil pianos, the same way they use SCHIEDMAYER. 42 TTABVUE 36-42,
54-57 (Treibitz Disc. Tr. 33-39, 51-54). Respondents advertise these brands as well as
their SCHIEDMAYER stencil pianos on their website:

10 Application Serial No. 78157550. Mr. Treibitz testified that after his application to register
the mark VOSE & SONS was refused and eventually abandoned, another company,
Wrightwood Enterprises, registered the same mark. He further testified that “[i]t is my belief
that Wrightwood Enterprises, Inc. had knowledge of my application and its status and
strategically made their filing to ensure they were able to prevent my adoption of the mark
after the ex parte appeal failed (i.e., ‘stole’ the trademark from me). This is because I am
unaware of any association between Wrightwood Enterprises, Inc. and any of the former
users of the VOSE & SONS trademark.” 66 TTABVUE 12 (Treibitz Dec. p. 7).
Cancellation No. 92061215
14

Id. at 110 (Treibitz Disc. Tr. Ex. 5).
III. Standing
Petitioner is named after the Schiedmayer family known for keyboard musical
instruments, is owned by a member of that family and uses SCHIEDMAYER as a
trademark for keyboard musical instruments in the United States. 38 TTABVUE 4-
7 (Schiedmayer Dec. p. 1-4). This establishes that it has a personal stake in this
proceeding, and is not an intermeddler. See Empresa Cubana Del Tabaco v. Gen.
Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Bos. Athletic Ass’n
v. Velocity, 117 USPQ2d 1492, 1494-95 (TTAB 2015). See generally Association pour
la defense et la Promotion de L’oeuvre de Marc Chagall dite Comite Marc Chagall v.
Bondarchuk, 82 USPQ2d 1838, 1842 (TTAB 2007) (committee which defends the
rights and work of Marc Chagall had standing to challenge registration of MARC
Cancellation No. 92061215
15
CHAGALL for vodka); Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1385 (TTAB
1991) (estate of ball point pen inventor had standing to challenge registration of
inventor’s surname for ball point pens).
IV. False Suggestion of a Connection
To prevail on its false suggestion claim, Petitioner bears the burden of proving
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).
A. Is SCHIEDMAYER the Same as Petitioner’s Previously Used Name or
Identity?
Petitioner is Schiedmayer Celesta GmbH, with “celesta” merely identifying
Petitioner’s primary keyboard product and GmbH merely being a German entity
designation. In other words, Schiedmayer is Petitioner’s name and identity.
Respondents have registered the exact same name. See In re White, 73 USPQ2d 1713,
Cancellation No. 92061215
16
1719 (TTAB 2004) (“Just as an applicant cannot take another’s name and add matter
to it to avoid a refusal of false suggestion under Section 2(a), an applicant cannot take
a significant element of the name of another and avoid a refusal by leaving one or
more elements behind, provided that that which has been taken still would be
unmistakably associated with the other person.”); see also In re Jackson Int’l Trading
Co., 103 USPQ2d 1417, 1419 (TTAB 2012) (“We find that the commercial impression
engendered by applicant’s mark [BENNY GOODMAN COLLECTION THE FINEST
QUALITY (stylized)] is that there is a ‘Benny Goodman’ collection of products which
makes applicant’s mark a close approximation of the name Benny Goodman.”).
Petitioner prominently promotes its connection to the Schiedmayer family and its
continuation of the Schiedmayer family tradition of offering keyboard musical
instruments. 38 TTABVUE 16-27, 33-70 (Schiedmayer Dec. Exs. A, B, D). This is
clear from Petitioner’s promotional materials and articles about Petitioner:

38 TTABVUE 21, 33 (Schiedmayer Dec. Exs. B, D). Moreover, Petitioner is owned by
Elianne Schiedmayer, who is a member of the well-known Schiedmayer family,
Cancellation No. 92061215
17
another in a long line of Schiedmayer family members in the keyboard musical
instrument business and the literal and figurative heir to Schiedmayer family
businesses. 38 TTABVUE 7, 29-31 (Schiedmayer Dec. p. 4 and Ex. C); 73 TTABVUE
4 (Schiedmayer Rebuttal Dec. p. 1). See In re Sauer, 27 USPQ2d 1073 (TTAB 1993),
aff’d, 26 F.3d 140 (Fed. Cir. 1994) (finding that a wide variety of products bearing the
name Bo Jackson establish that “Bo” is Mr. Jackson’s name or identity); Buffett, 226
USPQ at 430 (finding that promotional materials and press reports associating
MARGARITAVILLE with Jimmy Buffett tend to support a finding that the term is
Buffett’s identity). While Petitioner is known formally as “Schiedmayer Celesta
GmbH,” the record, including encyclopedia entries, Internet search results and media
mentions, reveals that Petitioner and its instruments are known to and by the public
as “Schiedmayer.” In re White, 73 USPQ2d at 1719; cf. In re Urbano, 51 USPQ2d
1776, 1779 (TTAB 1999) (“while the general public in the United States may or may
not have seen the upcoming Olympic Games referred to precisely as ‘Sydney 2000’ we
have no doubt that the general public in the United States would recognize this
phrase as referring unambiguously to the upcoming Olympic Games in Sydney,
Australia, in the year 2000”).
The fact that other Schiedmayer family-affiliated companies have previously also
offered keyboard musical instruments does not mean that SCHIEDMAYER is not
Petitioner’s identity, especially where Petitioner’s founder and chief executive is the
Cancellation No. 92061215
18
heir to some of those companies.11 In fact, “the statute clearly contemplates refusal of
matter that would falsely suggest a connection with multiple persons, whether
natural or juristic, or with multiple institutions.” In re White, 73 USPQ2d at 1717-18.
In White we rejected the “contention that because none of the federally-recognized
Apache tribes goes by the name APACHE alone and each has one or more other terms
in its name, APACHE per se cannot be found to be the name or equivalent thereof of
these tribes.” Id. at 1719. In short, SCHIEDMAYER is Petitioner’s name or identity.
B. Would SCHIEDMAYER Be Recognized As Petitioner’s Name or
Identity, Pointing Uniquely and Unmistakably to Petitioner?
In determining whether SCHIEDMAYER would be recognized as Petitioner’s
name or identity, the question is whether it points “uniquely and unmistakably” to
Petitioner “in the context of the [Respondents’] goods.” Hornby, 87 USPQ2d at 1424,
1426-27; White, 73 USPQ2d at 1658; Wielinski, 49 USPQ2d at 1757. It does.
All of the evidence indicates that the name SCHIEDMAYER is associated with a
family that has been prominent in the keyboard musical instrument industry for
hundreds of years. Respondents do not even suggest another meaning for
SCHIEDMAYER.12 In fact, Mr. Treibitz admits to knowing about the Schiedmayer

11 This is not a case where SCHIEDMAYER is no longer in use, or in which Petitioner’s
connection with SCHIEDMAYER keyboard musical instruments is in dispute. Cf. In re
Wielinski, 49 USPQ2d 1754, 1758 (TTAB 1998) (“There could be someone who stands in the
shoes of the former truck company, but this record does not establish who that might be.”),
overruled in part on other grounds, In re WNBA Ent. LLC, 70 USPQ2d 1153 (TTAB 2003).
12 Respondents’ argument that SCHIEDMAYER would point to a number of people because
it is a surname is not well-taken, nor is Respondents’ attempt to impose on Petitioner a higher
burden of proof on this factor. Indeed, the record here clearly shows that the name
Cancellation No. 92061215
19
family and SCHIEDMAYER keyboard musical instruments, and admits that he only
filed the application underlying the Registration when he believed that the
SCHIEDMAYER mark had been abandoned. 66 TTABVUE 7-9 (Treibitz Dec. pp. 2-
4).13
Furthermore, in the context of pianos, celestas and other keyboard musical
instruments, SCHIEDMAYER has only one meaning ─ it points uniquely, and
unmistakably, to the SCHIEDMAYER family of which Elianne Schiedmayer is a
member, and to the family’s businesses which have long offered keyboard musical
instruments. The record reveals that Petitioner is the SCHIEDMAYER family
business which currently offers SCHIEDMAYER keyboard musical instruments in
the United States.
Respondents’ argument that third parties are offering or at one time offered
SCHIEDMAYER-branded keyboard instruments and therefore that the name does
not point uniquely and unmistakably to Petitioner is not well-taken. There is no
evidence that anyone other than Petitioner and Respondents are currently using
SCHIEDMAYER for keyboard musical instruments in the United States, and to the
extent that others may have used the term in the United States at one time, there is
no evidence that this use was unauthorized, that it continues or that it had any effect

SCHIEDMAYER, which is Petitioner’s name, enjoys fame and recognition in connection with
keyboard musical instruments, which is Petitioner’s field.
13 We need not find that Petitioner owns United States trademark rights in SCHIEDMAYER
in order to find that Respondents’ use of SCHIEDMAYER falsely suggests a connection with
Petitioner.
Cancellation No. 92061215
20
on the public perception of the SCHIEDMAYER name as referring to Petitioner.14
Nor does the one-time existence of other Schiedmayer family-affiliated businesses
which used SCHIEDMAYER as a mark detract from the finding that
SCHIEDMAYER now points uniquely and unmistakably to Petitioner. The applicant
in In re Peter S. Herrick, P.A., 91 USPQ2d 1505 (TTAB 2009) made a somewhat
analogous argument when his application to register U.S. CUSTOMS SERVICE &
Design was refused because that was the former name of U.S. Customs and Border
Protection, a U.S. government agency. Applicant’s claim that his mark did not point
uniquely and unmistakably to the U.S. Customs Service, because it no longer existed,
was rejected:
Applicant’s use of the former U.S. Customs Service seal in
connection with its offer of legal services “concentrating” on
U.S. customs law is strong evidence that applicant is
attempting to draw a connection between its services and
the agency that oversees customs issues, especially because
a segment of the public still uses U.S. Customs Service to
refer to United States Customs and Border Protection.
Finally, the name “U.S. Customs Service” has meaning
only as a governmental agency. The only entity the name
“U.S. Customs Service” could possibly identify is the
government agency and, therefore, it is associated only
with United States Customs and Border Protection.

Id. at 1508. Here, the same logic applies – Respondents’ use of SCHIEDMAYER on
keyboard musical instruments is strong evidence that they seek to draw a connection

14 As Petitioner points out, Respondents’ arguments on this issue appear to be based only on
printed publications and Internet printouts, which are not admissible for the truth of the
matters asserted therein. Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118 USPQ2d 1392, 1399
n.62 (TTAB 2016); Nat’l Pork Bd. and Nat’l Pork Producers Council v. Supreme Lobster and
Seafood Co., 96 USPQ2d 1479, 1483 (TTAB 2010).
Cancellation No. 92061215
21
between their goods and Petitioner, the prominent source of SCHIEDMAYER
keyboard musical instruments in the United States. In fact, in the field of keyboard
musical instruments, the only entity SCHIEDMAYER “could possibly identify,” id.,
is Petitioner. The record thus establishes that SCHIEDMAYER points to Petitioner
uniquely and unmistakably.
C. Is Petitioner Connected to Respondents or Their Activities?
Respondents concede that they are not connected in any way to Petitioner. 35
TTABVUE 4 (Answer ¶ 8) (“Respondents admit that they have had no formal
business relationship with Petitioner.”); 76 TTABVUE 23 (Respondents’ Trial Brief
at 17) (“The Respondent agrees that they are in no way connected with the goods sold
or the activities performed by Petitioner.”).
D. Is SCHIEDMAYER Sufficiently Famous That When Respondents Use
the Name a Connection Between the Parties Would be Presumed?
The inquiry under this Section 2(a) factor differs from the traditional likelihood of
confusion or dilution analyses of fame in that “the key is whether the name per se …
as used would point uniquely to the person or institution.” White, 73 USPQ2d at 1720.
Here, the Schiedmayer name and family has been associated with keyboard musical
instruments for centuries. Schiedmayer keyboard musical instruments have won
many awards, are used by prominent United States orchestras, a Schiedmayer
keyboard musical instrument is on permanent display at the Boston Museum of Fine
Arts, and Internet reference works and search results identify SCHIEDMAYER with
keyboard musical instruments from the Schiedmayer family and essentially nothing
Cancellation No. 92061215
22
else.15 This establishes that SCHIEDMAYER is sufficiently famous in the United
States that Respondents’ use of it would lead to a presumption that the parties are
somehow connected.16
In light of the evidence that SCHIEDMAYER is famous in the United States in
connection with keyboard musical instruments,17 and given Respondents’ use of
SCHIEDMAYER for keyboard musical instruments, “we 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)).18

15 We have not considered the Internet reference works and search results for the truth of the
matters asserted therein, but only for what they show on their face, specifically that certain
searches and materials point to Ms. Schiedmayer’s family and its businesses and their
musical instruments.
16 We have focused on the evidence of Petitioner’s fame and reputation in the United States,
but have also considered the degree to which Petitioner is famous abroad. See Hornby, 87
USPQ2d at 1416 (“Because evidence of fame or reputation in other countries may have
relevance to the extent that consumers in the United States would be aware of her as a result
of these activities, we will not exclude this evidence, but will give it only the probative weight
to which it is entitled.”). To be clear, however, the SCHIEDMAYER name is sufficiently
famous in the United States to find for Petitioner on its false suggestion claim, even if we did
not consider any evidence from abroad.
17 Respondents concede that Petitioner “may have some level of fame or reputation” for
celestas (described above) and glockenspiels (a percussion instrument which may have a
keyboard), but argue that this fame or reputation does not carry over to pianos. 76 TTABVUE
24 (Respondents’ Trial Brief at 18). The argument is not well-taken. As shown above, the
differences between celestas and pianos are internal, mechanical and perhaps not even
noticeable to or known by some consumers of keyboard musical instruments. Celestas and
pianos are so similar that Respondents’ use of the SCHIEDMAYER name for pianos would
result in consumers making a false association between the parties.
18 Petitioner makes clear that the references in its Trial Brief to “palming off” are not to a
separate ground for cancellation. 75 TTABVUE 21 (Petitioner’s Trial Brief at 13) (“Plaintiff
Cancellation No. 92061215
23
E. Conclusion Regarding False Suggestion Claim
Petitioner has established each of the four factors, and thus that use of
Respondents’ mark would falsely suggest a connection between the parties.
V. Laches/Acquiescence
Although Respondents have asserted “laches” and “acquiescence” as separate
affirmative defenses, it is clear that Respondents are using the two terms to describe
the same conduct (or lack thereof) by Petitioner, and that Respondents’ defenses are
based on the same legal theory. Indeed, Respondents’ fourth affirmative defense is
pleaded as follows: “Petitioner’s Petition for Cancellation is barred by laches.
Petitioner did not seek cancellation of the Respondent’s registration for nearly 7.5
years.” Respondents’ pleading of their fifth affirmative defense is substantively the
same: “Petitioner’s Petition for Cancellation is barred by acquiescence. Petitioner did
not seek to cancel Respondent’s registration for such a long period of time that it
amounts to a relinquishment of any claims by Petitioner to cancel it.” 35 TTABVUE
6-7. Not only is the basis for both pleaded defenses essentially the same, but in their
Trial Brief Respondents discuss “laches” under its own heading, but do not separately
address “acquiescence.” 76 TTABVUE 34-38 (Respondents’ Trial Brief at 28-32). See
generally Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes, Inc., 971 F.2d 732, 23
USPQ2d 1701, 1703 (Fed. Cir. 1992) (“While laches and estoppel are entirely separate

wishes to emphasize that this Petition to Cancel is not based upon Defendants’ palming off
of Plaintiff’s products. Rather, Plaintiff is calling attention to Defendants’ acts of palming off
as it establishes intent, which is a strong element in finding a 2(a) violation ….”). We have
therefore considered Petitioner’s allegations of “palming off” only to the extent that they
relate to Petitioner’s claim of false suggestion of a connection.
Cancellation No. 92061215
24
defenses … in this case both defenses turn on essentially the same facts.”). Here,
Respondents’ laches defense subsumes their acquiescence defense.
“The elements of laches are (1) unreasonable delay in assertion of one’s rights
against another; and (2) material prejudice to the latter attributable to the delay.”
Lincoln Logs, 23 USPQ2d at 1703. In this case, and Board proceedings generally,
laches “must be tied to a party’s registration of a mark not to a party’s use of the
mark.” Lincoln Logs, 23 USPQ2d at 1703. “[L]aches is available against a false
suggestion claim.” Hornby v. TJX Cos., Inc., 87 USPQ2d 1411, 1419 (TTAB 2008)
(citing Bridgestone/Firestone Research Inc. v. Automobile Club de l’Ouest de la
France, 245 F.3d 1359, 58 USPQ2d 1460, 1462 (Fed. Cir. 2001)).
A. Was the Delay Unreasonable?
The facts surrounding Petitioner’s delay are somewhat murky. Petitioner argues
that it learned about the Registration’s existence “in connection with the filing of its
own trademark applications” in April 2015, but does not specifically state when in
relation to the preparation, filing and examination of the application it learned about
the Registration; nor does Petitioner state when it learned of Respondents’ use. 75
TTABVUE 35 (Petitioner’s Trial Brief at 27). Respondents point out that sometime
after Mr. Treibitz registered the domain name “schiedmayer.com” in August 2002,
Elianne Schiedmayer called him to discuss the domain name, and argue that “[a]t the
very least Petitioner should have known that a trademark application may have been
filed and been put to inquiry as to whether one existed following the [conversation]
with Mr. Treibitz regarding his intentions with the mark.” 76 TTABVUE 35
(Respondents’ Trial Brief at 29). In any event, there is no dispute that the
Cancellation No. 92061215
25
Registration’s underlying application was published for opposition on June 22, 2004,
and the Registration issued on November 30, 2007.
“[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). Thus, in cases where a plaintiff has actual
knowledge of the defendant’s trademark use, or its application, laches begins to run
from the date of publication of the application, but where the plaintiff does not have
actual knowledge of a party’s use or application to register a mark before the close of
the opposition period, laches begins to run from the date the registration issues. Ava
Ruha Corp. v. Mother’s Nutritional Ctr., Inc., 113 USPQ2d 1575, 1580 (TTAB 2015)
(“in a cancellation proceeding, laches begins to run no earlier than the date the
involved mark was published for opposition (if there was actual knowledge), and no
later than the issue date of the registration (when Plaintiff is put on constructive
notice, see 15 U.S.C. § 1072)”); Jansen Enters. Inc. v. Israel Rind and Stuart Stone,
85 USPQ2d 1104, 1114 (TTAB 2007); Teledyne Techs., Inc. v. W. Skyways, Inc., 78
USPQ2d 1203, 1210 & n.10 (TTAB 2006), aff’d 208 F. App’x. 886 (Fed. Cir. 2006).
Here, Petitioner did not petition to cancel the Registration until almost seven and
one-half years after it issued, and after Respondents filed their declarations under
Sections 8 & 15. This delay was fairly long, and in the absence of extenuating
circumstances or an excuse, unreasonable. See Bridgestone Firestone, 58 USPQ2d at
Cancellation No. 92061215
26
1463 (finding unreasonable delay based in part on “the absence of a reasonable excuse
by the Automobile Club for its inaction”); Alfacell Corp. v. Anticancer, Inc., 71
USPQ2d 1301, 1307 (TTAB 2004) (finding seven year delay unreasonable where
“Petitioner has been completely silent as to the reason for its delay”); Turner v. Hops
Grill & Bar Inc., 52 USPQ2d 1310, 1312 (TTAB 1999) (finding five year delay
unreasonable where “the only reason petitioner presented for his delay is his lack of
actual knowledge,” pointing out that actual knowledge “is not the appropriate
measure, and the length of the delay is clearly substantial”). Here, because Petitioner
had at least constructive knowledge of the Registration since its date of issuance,
November 20, 2007, and has provided no excuse for not filing the petition to cancel
until April 1, 2015, seven and one-half years later, we find that Petitioner’s delay is
unreasonable.
B. Have Respondents Suffered Material Prejudice Attributable to the
Delay?
Mere delay is not enough to establish Respondents’ laches defense, however.
Indeed, to meet their burden of proving that laches bars Petitioner’s claims,
Respondents must establish that they suffered harm as a result of the delay. Ralston
Purina Co. v. Midwest Cottage Co., 373 F.2d 1015, 153 USPQ 73, 76 (CCPA 1967)
(respondent “bears the burden of showing the injustice”). See also
Bridgestone/Firestone, 58 USPQ2d at 1462; Charette Corp. v. Bowater Comm’n
Papers Inc., 13 USPQ2d 2040, 2043 (TTAB 1989) (“There can be no question that
mere delay in asserting one’s trademark rights is insufficient to give rise to an
Cancellation No. 92061215
27
estoppel. More is needed.”); Trans Union Corp. v. Trans Leasing Int’l Inc., 200 USPQ
748, 755 (TTAB 1978).
Here, Respondents have not met their burden. The entirety of their argument that
they have suffered material prejudice is “the Respondent sold and rented
SCHIEDMAYER branded pianos continuously for seven years.” 76 TTABVUE 36
(Respondents’ Trial Brief at 30). The entirety of the evidence Respondents provided
in support of this argument is Mr. Treibitz’s “general recollection” unsupported by
documentary evidence that Respondents sold at most 17 SCHIEDMAYER-labeled
pianos between issuance of the Registration and the filing of the petition to cancel in
2015. 71 TTABVUE 25 (Treibitz Test. Tr. 22); 66 TTABVUE 10 (Treibitz Dec. p. 5)
(claiming that Respondents sold approximately 12 pianos bearing the
SCHIEDMAYER mark in 2016 and 2017). Respondents provide no information about
any advertisement or promotion of SCHIEDMAYER-labeled pianos specifically, as
opposed to general advertising of all brands on offer. Nor have Respondents shown
any other “material prejudice” attributable to Petitioner’s delay.
This showing falls short, and calls to mind Ralston Purina, in which the
respondent did not make a “serious effort to show prejudice to itself.” Ralston Purina,
153 USPQ at 76. The Court found that the respondent did not establish material
prejudice and that laches did not apply, for reasons equally applicable here:
We have no evidence of promotional expenditure. Sales
data are too imprecise even to indicate any substantial
growth of registrant’s trade in the six-month period
between petitioner’s alleged acquiescence and first
assertion of right in the mark for baler twine … We do not
scan petitioner’s history for one fatal misstep. We sustain
Cancellation No. 92061215
28
petitioner’s rights in the absence of a showing that to do so
would work injustice.

Id. at 76-77. Similarly, in Alfacell, the Board found the evidence of prejudice
insufficiently specific, because “it is difficult to gauge, in the absence of dollar
amounts or other specific information relative to its promotional efforts, the degree
to which there has been any detriment.” Alfacell, 71 USPQ2d at 1308. See also
Hornby, 87 USPQ2d at 1419 (unsupported claim that investment was made in a mark
not credited); Charrette Corp., 13 USPQ2d at 2043 (no laches where “registrant has
submitted no evidence to show that it acted to its detriment in reliance on petitioner’s
failure to act more promptly”); Cf. Bridgestone Firestone, 58 USPQ2d at 1463
(“Bridgestone asserted economic prejudice, presenting evidence of its longstanding
investment in and promotion of the LEMANS brand of tires, including use of the
mark on at least four types of tires manufactured by Bridgestone … Bridgestone
presented testimony on the advertising of the LEMANS brand and the role of the
LEMANS brand in Bridgestone’s marketing structure … It was undisputed that
Bridgestone invested in and promoted the LEMANS brand tires over this lengthy
period, during which the Automobile Club was silent.”); Ava Ruha, 113 USPQ2d at
1583 (finding material prejudice based on showing of tens of millions of dollars spent
on growing a business, adding at least 15 stores and spending over $7 million
promoting its marks); Turner, 52 USPQ2d at 1313 (“Looking at the evidence from
1992, when petitioner was put on constructive notice of respondent’s mark,
respondent had four restaurants in Florida. By 1994 it had nine restaurants; during
1995 respondent opened four new restaurants … In 1996 five new restaurants were
Cancellation No. 92061215
29
opened, and twelve were added in 1997. Its sales during this period of time went from
approximately $7 million to $58 million, and the business continues to grow.”).
Here, while the record includes a few of Respondents’ advertisements, there is no
evidence regarding how widely they were distributed or seen, and in those
advertisements Respondents promoted not just SCHIEDMAYER-labeled pianos, but
also pianos bearing a number of other, unrelated marks. See Alfacell, 71 USPQ2d at
1308 (“respondent’s testimony regarding its appearances at conferences, trade shows
and presentations is diminished by the fact that it was promoting other drugs at the
same time … respondent might very well have attended the various trade shows and
conferences to promote its other drugs even if its ONCASE brand drug had not been
developed”). Moreover, and perhaps more importantly, 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. It is obvious that
the costs of acquiring pianos will dwarf the negligible cost of buying labels from
trophy or decal sellers, and that re-labeling the pianos as something other than
SCHIEDMAYER would be quick, easy and inexpensive. In any event, Respondents
have produced no evidence to the contrary, much less established any material
prejudice arising from changing the names on stencil pianos.
Cancellation No. 92061215
30
“Economic prejudice arises when a defendant suffers the loss of monetary
investments or incurs damage that likely would have been prevented by an earlier
suit. … A nexus must be shown between the delay in filing suit and the expenditures;
the alleged infringer must change his position because of and as a result of the
plaintiff’s delay.” Alfacell, 71 USPQ2d at 1307. Here, Respondents have not shown
any meaningful economic or other damage resulting from Petitioner’s delay in
seeking to cancel the Registration, or any significant change of position as a result of
Petitioner’s delay. Because material prejudice is a necessary element of any laches
defense, Respondents have not met their burden of establishing that the petition is
barred by laches.
VI. Conclusion
Because Respondents have used Petitioner’s unique name and identity in
connection with keyboard musical instruments similar to those for which Petitioner
and the Schiedmayer family are famous, use of Respondents’ mark will falsely
suggest a connection between Petitioner and Respondents. We need not reach
Petitioner’s abandonment claim. See Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477,
1478 (TTAB 2017) (Board has “discretion to decide only those claims necessary to
enter judgment and dispose of the case”) (quoting Multisorb Tech., Inc. v. Pactive
Corp., 109 USPQ2d 1170, 1171, 72 (TTAB 2013)).

Decision: The petition is granted and the Registration will be cancelled in due
course.