False Association Secondary Meaning Infringement "Origin" Inherently Distinctive Actual Confusion
Parks LLC v. Tyson Foods, Inc., PICS Case No. 17-1234 (3rd Cir. July 6, 2017) Jordan, J. (33 pages).
District court properly granted summary judgment to appellees in appellant's false advertising and trademark infringement claim because appellant failed to show a secondary meaning for its mark where there was almost no direct-to-consumer advertising, appellant had a miniscule market share and there was practically no record of actual confusion. Affirmed.
Appellant failed to renew its PARKS trademark registration sometime in the early 2000s. In 2014, appellees launched a hotdog product called PARK'S and appellant sued alleging false advertising and trademark infringement. Appellant was founded in 1950 and though its PARKS brand sausage likely had prominence sufficient for common law trademark protection earlier than 1970, the name was not registered until that year. After the death of its founder in 1989, appellant went bankrupt, was purchased by its present owners, ceased making PARKS products and entered into a licensing agreement with a deli meat producer. Around that time, the USPTO registration of the mark lapsed. For the past 17 years, PARKS-branded products were advertised primarily through grocery store handbills and circulars. Appellees' BALL PARK brand hot dogs accounted for 23 percent of all hot dogs sold in the U.S. The contested packaging had BALL PARK prominently displayed over the PARK'S FINEST label. The district court denied appellant's motion for a preliminary injunction, dismissed the trademark dilution claim and granted summary judgment in favor of appellee on the Lanham Act claims of false association and false advertising. Appellant appealed.
Appellant argued that appellees' PARK'S FINEST name falsely implied that appellees' product was one of appellant's product. The court found that argument to be a false association claim. The court also found that appellant's argument that the name PARK'S FINEST was misleading because it blurred the distinction between hot dogs and sausage failed because the PARK'S FINEST packaging displayed a factually accurate and unambiguous statement that the package contained hot dogs. Furthermore, appellant had stated before the district court and on appeal that hot dogs and sausages were not distinctive. Additionally, appellant's argument that the name was misleading with regard to "origin" failed because 1125(a)(1)(B) focused specifically on statements that were false with regard to "geographic" origin only. The court agreed with the trial court's conclusion that PARKS was not inherently distinctive and had not achieved secondary meaning.
Trademarks based on the surname of a founder were not inherently distinctive. Secondary meaning was usually established through extensive advertising, but since 2001, PARKS had not been advertised directly to consumers except for $14,000 a year spent on circular advertisements and in-store product demonstrations. While PARKS had employed a ubiquitous and long-running ad campaign to reach consumers in the 1960s and 1970s, there was no evidence of recent "extensive advertising." The "length of use" factor favored appellant but mere length and exclusivity of use did not prove widespread familiarity. The survey method used by appellant's expert may or may not have been useful for illustrating a likelihood of confusion between the marks but was not probative of whether PARKS had secondary meaning. Additionally, the sales figures for PARKS were not probative of secondary meaning. Appellant's evidence of actual confusion was from friendly sources, described only four instances of confusion and was of little probative value.