You are on page 1of 2

Topic: Initial Interest Confusion Facts: Steinway & Sons was founded by Heinrich Steinweg in the USA while

e Grotrian-Steinweg was founded by his son, Theodore Steinweg, in Germany. Theodore subsequently migrated to the USA and sold the german company to his employees, one of which was Grotrian who eventually got control of the company. F. Theodor Steinweg granted the German buyers the privilege of continuing the business under the firm name "Successors to C. F. Theodor Steinweg" for ten years, but because of confusion with defendant the name was changed by agreement to "Grotrian, Helfferich, Schulz, Successors to Th. Steinweg." Later, however, Grotrian first registered the trademark Grotrian-Steinweg in Germany and then, in 1895, registered the name Steinweg. Grotrians use of the latter name caused defendant to bring an action in Germany resulting in the cancellation of the registration. Nevertheless, in December 1918, shortly after the armistice, the Grotrian family, plaintiff's owners, petitioned for an official change of the family name to "Steinweg or at least GrotrianSteinweg," In 1925, the company established a sales presence in the US as a Delaware corporation called Grotrian-Steinweg Company. Upon discovering the sales in 1928, Steinway & Sons complained to the distributor and to Grotrian-Steinweg. A family representative of Steinway went to Germany to discuss the problem directly with the Grotrian-Steinweg family. Arriving at a private agreement, the two family leaders smoked a "peace cigar and Grotrian-Steinweg subsequently stopped using the names "Steinweg" and "Grotrian-Steinweg" in the US. However, in 1952, plaintiff quietly reentered the American market on a mail order basis and for the next twenty years regularly shipped a relatively insignificant number of pianos to small dealers who sold only in their own localities. In 1961, Knut Grotrian-Steinweg (b. 1935) joined the company. In 1966, the company formed a contract with Wurlitzer to sell Grotrian-Steinweg pianos in the US, and the Steinway company brought suit in New York Steinway now sued Grotrian-Steinweg claiming there was confusion.

Issue: WON the mark Grotrian-Steinweg on the piano is similar enough to Steinway or to Steinway & Sons that its use is likely to cause confusion, mistake or deception of any kind. Held: Yes, there is a high chance of confusion and initial interest confusion. In determining the existence of a likelihood of confusion, a number of factors must be considered. Among these are: the strength of the Steinway marks; the alleged infringer's purpose in adopting its marks; the degree of similarity between the marks; the degree of similarity between the products; the competitive proximity of the products; actual confusion; and the degree of care likely to be exercised by consumers THE STRENGTH OF THE STEINWAY MARKS o the name "Steinway" is so associated in the minds of prospective buyers and the public with defendant and its product that plaintiff's own dealers were of the opinion that "Steinway competition is tough, since the name STEINWAY has a magic influence on buyers," has an "attraction" or "excitement," and that "people seem to be swayed by this name PURPOSE in ADOPTING THE MARK o The ancestral Grotrians candidly adopted the name Steinweg for the sole purpose of exploiting the Steinweg name in exporting pianos to English-speaking countries. Moreover, they did this despite knowledge of defendant's trademark and its objections.

THE DEGREE OF SIMILARITY BETWEEN AND THE COMPETITIVE PROXIMITY OF THE PRODUCTS. o Both parties manufacture lines of upright and grand pianos and both pianos are considered "the very finest and expensive pianos that cater and administer to artists and the professions. Thus, the products are virtually identical and compete on a direct basis. .

ACTUAL CONFUSION. o The court affirmed the lower court's ruling in favor of the defendant that piano buyers would be misled in their "initial interest" in the two piano brands; "a potential Steinway buyer may satisfy himself that the less expensive GrotrianSteinweg is at least as good, if not better, than a Steinway
o Misled into an initial interest, a potential Steinway buyer may satisfy himself that the less expensive Grotrian-Steinweg is at least as good, if not better, than a Steinway. Deception and confusion thus work to appropriate defendant's good will. This confusion, or mistaken beliefs as to the companies' interrelationships, can destroy the value of the trademark which is intended to point to only one company. Thus, the mere fact that purchasers may be sophisticated or discriminating is not sufficient to preclude the likelihood of confusion. "'Being skilled in their own art does not necessarily preclude their mistaking one trademark for another when the marks are as similar as those here in issue, and cover merchandise in the same general field. Even a discriminating purchaser might well assume that the marks in issue were trademarks on companion products of a single producer.

You might also like