TTAB Judicial Appointments Constitutionality Sound

Thursday, September 16, 2021

The US Court of Appeals for the Federal Circuit determined for the first time whether the recent decision of the United States Supreme Court in the United States v Arthrex, Inc. case also did not apply to the Trademark Trial and Appeal Board (TTAB), the constitutionality of the judicial appointments of the TTAB and the cancellation of the SCHIEDMAYER trademark by the TTAB. Piano Factory Group, Inc. v Schiedmayer Celesta GMBH, Case No. 20-1196 (Fed. Cir. September 1, 2021) (Bryson, J.)

Schiedmayer Celesta is the remaining corporate unit from a centuries-old line of German keyboard instrument manufacturers that use the SCHIEDMAYER brand in connection with the sale of their products. Sweet 16 Musical Properties and Piano Factory Group (jointly Piano Factory) operated Hollywood piano retail stores selling “no-name” pianos with “Schiedmayer” labels bought from China. The owner of Piano Factory, who believed that the SCHIEDMAYER brand had been abandoned, applied for the SCHIEDMAYER brand to be registered and the registration took place in 2007.

In 2015, Schiedmayer filed a request to delete Piano Factory’s registration as it falsely suggested a connection with Schiedmayer and thus violated Section 2 (a) of the Lanham Act. After TTAB granted the cancellation request, Piano Factory appealed.

Between the time the parties filed their appeals and the Federal Court of Justice published its ruling, the Supreme Court issued its ruling in the United States v Arthrex case, which found that the appointment of administrative judges to the Patent Trial & Appeal Board ( PTAB) violates the appointment clause of Article II of the Constitution. On appeal, Piano Factory argued that the appointment of TTAB administrative judges (specifically the administrative judge who issued the decision to appeal against Piano Factory) was also unconstitutional. However, the court disagreed, citing a phrase from the Arthrex decision that “effectively confirmed that. . . the legal regulation of the TTAB decision-making is not subject to the problem of the appointment clause, which the court established in relation to the PTAB. “

In addition, Piano Factory cited the Trademark Modernization Act of 2020 (TMA) in support, which explicitly addressed this issue. Piano Factory argued that since the TMA was only enacted after the TTAB’s decision to delete the SCHIEDMAYER registration, its enactment shows that the TTAB was previously flawed. Again, the Federal Circuit disagreed, stating that “the 2020 legislation itself makes it clear that it merely confirmed and not changed the framework that existed before the TMA”.

Piano Factory also questioned the merits of the TTAB’s decision, including applying the four-factor test for false association, which takes into account:

  1. Whether the attacked trademark is identical or almost identical to a name previously used by another person;

  2. whether the trademark should be understood as a clear and unmistakable reference to this person;

  3. Whether the person mentioned by the contested mark was connected to the applicant’s activities and

  4. Whether the name of the older user is so well known that a connection with the applicant would be presumed if the contested mark was used to identify the applicant’s goods.

Piano Factory contested the TTAB’s decision on factors two and four. The Federal Supreme Court found that the “limited third party uses” cited by Piano Factory were cited as evidence that Schiedmayer was not referring to the complainant “clearly and unambiguously”, and “tegend to support the finding that consumers have the Continued to associate the brand with the Schiedmayer companies ”. and its successor, Schiedmayer Celesta. “With regard to the fourth point, the court found that” all relevant factors – similarity of the goods, recognition by certain consumers and intent in using the mark – support the Chamber’s finding that the name of the Complainant to the consumers of the [appellant’s] Products that would be suspected of having a connection with the complainant. “Accordingly, the court upheld TTAB’s decision to delete Piano Factory’s SCHIEDMAYER registration, which it considered to be” the essence of the falsely suggestion of a connection with another facility in accordance with Section 2 (a) of the Lanham Act “designated”.

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