GROTRIAN, HELFFERICH, SCHULZ, TH.

STEINWEG - Although Steinway learned of Grotrian exports to the US

NACHF. v. STEINWAY & SONS 1975
FACTS:
- 1835: Heinrich E. Steinweg began making pianos in
Germany. He emigrated to New York in 1850 with three sons,
changed his name to Steinway, and founded Steinway &
Sons (Steinway).
in Wurlitzer stores.
- Heinrich’s oldest son C.F. Theodor Steinweg remained in
Germany and began to make pianos under his own name.
He later sold his business to his 3 employees (Wilhelm
Grotrian, Adolph Helfferich, and H.G.W. Schulz). He then
moved to NY and joined Steinway as a partner in 1866.
on 21 Nov. 1967.
- The sale of the business to the three employees included the
right to use the name “C.F. Th. Steinweg Nachf. (Successors
to C.F. Theodor Steinweg)” for 10 years. The name was later
changed to “Grotrian, Helfferich, Schulz, Th. Steinweg
Nachf.” (Grotrian) and the present corporate name of
appellant. Grotrian registered the TMs “Grotrian-Steinweg”
as early as 1957, it did nothing until 1967. In January
1967, Grotrian entered into a distributing agreement with
the Wurlitzer Co. Wurlitzer agreed to use its best efforts to
sell “Grotrian-Steinweg” pianos in the US for five years.
Wurlitzer issued a press releasee in July announcing that the
world famous “Grotrian-Steinweg” piano would soon be sold
- Steinway promptly threatened Wurlitzer with legal action
to prevent the sale in the US of pianos with the “Grotrian-
Steinweg” name. Wurlitzer decided it couldn’t sell pianos
without the name, and cancelled the distribution contract
- No legal action was taken by Steinway or Grotrian regarding
the latter's export of pianos to the US until 29 July 1969
where Grotrian commenced the instant action against
Steinway, apparently in response to Steinway's opposition to
Grotrian's application for registration in the US of the TM
"Grotrian- Steinweg”

and “Steinweg” in Germany—the latter being cancelled as a - Grotrian’s complaint sought a declaratory judgment1 .
result of a suit by Steinway against Grotrian. In December Grotrian also sought an injunction to enjoin Steinway from
1918, shortly after the armistice, the Grotrian family (owners interfering or threatening to interfere with Grotrian's use of its
of the firm) petitioned German officials to change its name to TM and corporate name and from instituting suit anywhere in
“Steinweg, or at least Grotrian Steinweg” in order to aid in the world challenging Grotrian's right to use its TM or
the export of its product. The petition was granted to the corporate name. Grotrian also sought $93k damages for
extent of changing the name to “Grotrian-Steinweg”.
tortious interference with its contractual relationship with
- Grotrian first entered the American market in 1935, and from Wurlitzer, plus attorneys fees.

1926-1928 it sold a total of 25 pianos in the US. When - Steinway’s answer in substance denied the factual
Steinway learned of this in 1928, it protested claiming that allegations of the complaint and counterclaimed under the
the use of the mark “Grotrian-Steinway” on pianos infringed Federal Trade-Mark Act (Lanham Act) and under common
its trade names “Steinway” and “Steinway & Sons”; they law for TM infringement and unfair competition. An injunction
demanded that such must be discontinued on pianos in the was sought to enjoin Grotrian2 and Steinway also sought an
US. Instead, Grotrian increased its shipments to 47 in 1929.
accounting for all profits by reason of its illegal activities,
- William Steinway (officer of Steinway) decided to compensatory, and punitive damages for injuries, and
confront Grotrian face to face. He went to Germany in attorney’s fees.

1929 where a settlement was reached. Thereafter - Grotrian’s reply in substance denied the allegations of
Grotrian’s American activityes dwindled (the exported no Steinway’s counterclaim and pleased the defenses of laches
pianos from 1932-52). and unclean hands.

• Peace Cigar Settlement: settlement symbolized by - The District Court (DC) held that Grotrian is infringing
William Steinway’s smoking of a cigar with Grotrian’s Steinway's TMs “Steinway” and “Steinway & Sons” because
principal owner. the name Grotrian-Steinweg is likely to cause confusion,
- 1952: Grotrian reentered the American market on a mail mistake, or deception" in violation of the Lanham Act. They
order basis.
permanently enjoined Grotrian from infringing Steinway’s TM
• For the next 20 years it regularly exported a small number rights.

of pianos to the US and distributed them through small

local dealers.
WON the district court correctly held that Grotrian
• Grotrian never made any pianos in the US, nor did it consciously and intentionally infringed Steinway’s TMs and
employ an advertising agency or required advertising by had competed unfairly with Steinway—Court held that the
its US dealers although the latter were supplied with DC correctly concluded that Grotrian consciously and
promotional material.
intentionally infringed Steinway’s TMs.
• No representative of Grotrian ever came to the US from
1929-66.

1 (1) that its TM "Grotrian-Steinweg" and corporate name did not conflict with appellee's TMs "Steinway & Sons" and "Steinway"; (2) that Grotrian's
use of its TM and corporate name in the United States did not infringe Steinway's TM rights and did not constitute unfair competition; (3) that Steinway
was estopped by laches from asserting any claim of conflict between the respective marks or between the names of appellant and appellee; and (4)
that Grotrian had the right to use its TM and corporate name free from interference by Steinway in the United States or in any foreign country where the
activities of Grotrian or Steinway have a substantial effect on interstate or foreign commerce.

2 (1) from using the word "Steinweg" alone or in conjunction with any other words or symbols; (2) from using the name "Grotrian-Steinweg" in
connection with the sale of pianos in the UnitedStates; (3) from infringing Steinway’s TMs; (4) from competing unfairly with Steinway; and (5) from
prosecuting any application for registration of TMs in the United States Patent Office.
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- TM infringement under Sec. 32(1), Lanham Act occurs where - Despite the high price range of both pianos ($5k to $13k) and
the nonconsensual use of a colorable imitation of a valid the general sophistication of purchasers, the DC found that
mark is “likely to cause confusion, or to cause mistake, or to the degree of care exercised by buyers could not eliminate
deceive.”
the confusion between a Steinway and a Grotrian-Steinweg
- The District Court considered several factors: "the strength piano

of the Steinway marks; the alleged infringer's purpose in - It is undisputed that the parties are in direct competition
adopting its marks; the degree of similarity between the for a rather limited class of customer. Few people in the
marks; the degree of similarity between the products; the US ever have heard of a Grotrian-Steinweg. Whatever
competitive proximity of the products; actual confusion; and reputation Grotrian's products may enjoy outside the US
the degree of care likely to be exercised by consumers.”
and whatever may be the competition between the two
- DC concluded that Grotrian consciously and intentionally pianos in other countries, Steinway is the renowned
infringed Steinway’s TMs.
name in the US. We think it is inescapable that a potential
- Grotrian challanged the DC’s finding of a likelihood of American purchaser of the kind of piano which the
confusion
parties sell, upon hearing the name "Grotrian-Steinweg",
would associate Grotrian's product with Steinway.
(A) DELIBERATE INTENT TO INFRINGE: SC held that the - On the issue of actual confusion, the Court held that the
inference of malice is clear and intend to infringe is DC's finding that such confusion existed is not clearly
supported by substantial evidence. erroneous but is supported by substantial evidence.
- Essence of DC’s finding that Grotrian had a malicious • Dealer confusion incident: a Steinway dealer was told by
purpose: from the time Grotrian took over from Theodor a Grotrian dealer that the Grotrian- Steinweg was a
Steinweg, both the firm and its owners have made efforts to German Steinway.

annex the name “Steinweg” to their own business to exploit • Court also held that DC’s admittance of and giving of
its similarity to “Steinway” in the US where the latter has built weight to the surveys was not wrong.

a very substantial reputation.

- The Court found that despite the high price of the pianos and
- Court found that the DC’s finding of malice is fully supported the sophistication of the purchasers, the likelihood of
by the actions of Grotrian since 1926:
confusion resulting from the factors discussed could not be
- (1) There is evidence which supports a finding that Grotrian eliminated by the degree of care taken in selection:

has attempted to exploit the similarity between “Steinweg” • "It is the subliminal confusion apparent in the record as to
and “Steinway” to enhance sales in the US
the relationship, past and present, between the corporate
• "There is an obvious visual and audible similarity between entities and the products that can transcend the
'Steinway' and 'Steinweg', which is enhanced when the competence of even the most sophisticated consumer.
German 'veg' is translated to the English 'way.' The Misled into an initial interest, a potential Steinway buyer
probability of audible identity of the marks is virtually may satisfy himself that the less expensive Grotrian-
assured by plaintiff's instructions to its dealers.”
Steinweg is at least as good, if not better, than a
• Such is supported by an advertising brochure published Steinway. Deception and confusion thus work to
by Grotrian instructing English-speaking readers on how appropriate defendant's good will. This confusion, or
to pronounce “Grotrian-Steinweg”
mistaken beliefs as to the companies' interrelationships,
- (2) evidence of Grotrian's exploitation of Steinway's can destroy the value of the trademark which is intended
trademarks is found in another advertising brochure to point to only one company.”

published by Grotrian which had been in use for four or five - The Court declined to hold that actual or potential confusion
years at the time of trial. In that brochure Grotrian at the time of purchase necessarily must be demonstrated to
prominently referred to the "Grotrian-Steinweg" as "The establish trademark infringement under the circumstances of
Instrument of Immortals”. This was nothing less than a this case.

blatant copying of Steinway's registered slogan "Steinway • “The issue here is not the possibility that a purchaser
The Instrument of theImmortals.”
would buy a Grotrian-Steinweg thinking it was actually a
- Evidence demonstrates, at the very least, a deliberate intent Steinway or that Grotrian had some connection with
to lead prospective purchasers to believe that there is some Steinway and Sons. The harm to Steinway, rather, is the
connection between Grotrian and Steinway and their likelihood that a consumer, hearing the "Grotrian-
products.
Steinweg" name and thinking it had some connection
with "Steinway", would consider it on that basis. The
(B) SIMILARITY OF MARKS, ACTUAL CONFUSION, AND "Grotrian-Steinweg" name therefore would attract
DEGREE OF CARE: TMs are similar in sight and sound potential customers based on the reputation built up by
- In finding similarity of marks, DC noted that the words Steinway in this country for many years. The harm to
"Steinway" and "Steinweg" look and sound alike. The Steinway in short is the likelihood that potential piano
similarity between the names "Grotrian-Steinweg" and purchasers will think that there is some connection
"Steinway" is no less since the assumption that "Grotrian" is between the Grotrian-Steinweg and Steinway pianos.
the first name and "Steinweg" the last is inevitable in the - The Court cautions that each trademark infringement
United States where hyphenated surnames are uncommon.
case is to some extent Sui generis.

- Moreover, DC found actual confusion on the basis of two

surveys conducted by Steinway and the representation by an
American Grotrian dealer to a Steinway dealer that the
Grotrian-Steinweg was a German Steinway.

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