## Facts

- Steinway & Sons manufactured and sold pianos in the United States since the mid-1800s under the registered marks “Steinway” and “Steinway & Sons,” developing substantial goodwill.
- Grotrian, a German piano manufacturer, was the successor to a German “Steinweg” piano business and used the mark “Grotrian-Steinweg.”
- In 1952 Grotrian began selling “Grotrian-Steinweg” pianos in the United States and later sought U.S. registration of “Grotrian-Steinweg.”
- Steinway opposed the registration; Grotrian filed a federal declaratory judgment action for non-infringement.
- Steinway counterclaimed for Lanham Act trademark infringement and unfair competition.
- After a bench trial, the district court found Grotrian “consciously and intentionally” infringed and competed unfairly, entered an injunction, and awarded Steinway monetary relief (damages and Grotrian’s U.S. profits).
- Grotrian appealed, challenging liability and the breadth of relief.

## Issues

1. Whether Grotrian’s use of “Grotrian-Steinweg” in the U.S. created a likelihood of confusion with Steinway’s marks, constituting trademark infringement and unfair competition.
2. Whether the district court’s relief—especially damages and disgorgement of profits—was overly broad or unsupported.

## Decision

- The Second Circuit affirmed liability, holding that Grotrian’s use of “Grotrian-Steinweg” infringed Steinway’s marks and constituted unfair competition due to likelihood of confusion.
- The court affirmed dismissal of Grotrian’s declaratory judgment complaint.
- The court affirmed injunctive relief barring specified uses of “Grotrian-Steinweg” (and related designations) in U.S. sales and U.S.-directed advertising and promotion.
- The court modified the judgment by vacating the award of Steinway’s damages and Grotrian’s profits from U.S. sales, finding the monetary awards improper on the record.

## Legal Principles

- Lanham Act infringement turns on whether the junior user’s mark is likely to cause consumer confusion with the senior user’s mark.
- Likelihood of confusion may include confusion that generates initial consumer interest by trading on the senior mark’s goodwill, even if the confusion is dispelled before purchase.
- Strong, long-established goodwill of a senior mark increases the risk that a similar junior mark will suggest affiliation, sponsorship, or continuation of a related tradition.
- Findings of intentional exploitation of a senior mark’s reputation support liability for infringement and unfair competition.
- Injunctive relief may issue to prevent ongoing confusion and misappropriation of goodwill, while monetary relief (damages and profits) requires adequate evidentiary and equitable support and may be denied or limited on the record.

## Conclusion

The Second Circuit held that “Grotrian-Steinweg” was likely to confuse U.S. consumers by improperly benefiting from Steinway’s established reputation, warranting injunctive relief, but it vacated damages and profit disgorgement as unsupported by the record.


Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1331 (2d Cir. 1975)