Plaintiff fails to hit one out of the park with false advertising claim as substitute for TM

Parks, LLC v. Tyson Foods, Inc., 2015 WL 4545408, No.
5:15–cv–00946 (E.D. Pa. July 28, 2015)
Parks sells sausage and other processed meats; its origin is
in the H.G. Parks Sausage Company, known for the first African–American–owned
company to be publicly traded on a U.S. stock exchange and for its radio and
television advertisements that contained “a distinctive plea in the voice of a
child for ‘more Parks’ sausages Mom.’”  In 1995, the Parks Sausage Co. declared
bankruptcy, and plaintiff Parks acquired its assets in 1996, ultimately
licensing Dietz & Watson to produce and sell Parks processed meat
products.  Parks also licensed the use of
the “Parks” name to Super Bakery Inc., which “specializes in nutrition-oriented
foods for schoolchildren and sells food products to the armed services.”

Tyson Foods bought Hillshire Brands Co. and thus acquired the
“Ball Park” trademark, which has been used to sell frankfurters for over fifty
years.  The Ball Park brand generates
over $500 million in sales, primarily from sales of Ball Park-branded hot dogs
but also in part from the sale of frozen, pre-cooked hamburger patties sold
under the Ball Park brand. Research conducted between 2012 and 2014 found that
over 90% of adults over the age of eighteen were familiar with the brand.

In 2014, Hillshire launched a new line of franks under the
name Park’s Finest, which Parks alleged constituted false advertising and
trademark infringement.  Park’s and
Finest are on separate lines of the package, with Hillshire’s Ball Park
trademark superimposed in the center. Radio and TV ads describe the product as
“Park’s Finest from Ball Park.” A cross-sectional view on the front package
also allegedly showed “what appears to be a sausage link,” rather than a
frankfurter. Thus, Parks argued, defendants “are marketing and selling their
product as PARK’S FINEST sausages.”
Parks sought a preliminary injunction, relying only on its
false advertising claim.
Why I love Lanham Act cases: now we learn a little about the
market for hot dogs, which is three-tiered. 
“At the bottom of the food chain” (heh) are meat hot dogs, primarily
consumed by children.  The intermediate
level has “beef hot dogs” such as Ball Park hot dogs.  At the top are “super premium hot dogs,”
which “tend[ ] to be beef hot dogs with additional benefits, whether that be
flavor, or simpler ingredient statements.” Super premium is the fastest growing
segment of the market, and includes brands such as Nathan’s Famous and Hebrew
Park’s Finest targets this category.  Compared to a Ball Park-branded hot dog, a
Park’s Finest hot dog has “more seasoning, a coarser grind, [and] a bit more
snap to the exterior” as well as “a cleaner ingredient label” and “no added
preservatives” or nitrates. In choosing Park’s Finest as the name, Hillshire
desired to invoke its Ball Park brand but also to “communicate[ ] to consumers
that [Hillshire was] producing something different and better.” Hillshire
viewed Park’s Finest as  a “clear shorthand
version of Ball Park” that “convey[s] that this is Ball Park’s finest hot dog.”  Testing found that the name “evoked thoughts
among consumers of going to the ball park and that consumers linked PARK’S
FINEST to [Defendants’] BALL PARK brand.”  
The packaging was designed with the same objectives in mind
(differentiate but link, no pun intended, these hot dogs to the Ball Park
brand) and also to call attention to the product’s seasoning, flavors, and lack
of artificial preservatives. “When compared to cross-sectional views of the
inside of one of Defendants’ Ball Park-brand hot dogs and one of Defendants’
Hillshire smoked sausages, the [cross-sectional view of the] Park’s Finest hot
dog bears closer resemblance to a Hillshire smoked sausage than to a Ball Park
hot dog.” (When looking at actual sizes, however, the Park’s Finest frank has a
notably smaller diameter than a Hillshire smoked sausage.)  This appearance comes from the coarser grind
of meat and additional seasonings used in the Park’s Finest product.  But Hillshire didn’t want to sell the product
as sausage, because the hot dog market is so much bigger.  Thus, “uncured beef frankfurters” appears
prominently on the package.
Park’s Finest had the “biggest launch in the last four years
within the hot dog category.”  When he
first saw Park’s Finest, Patrick Caputo, an employee of Dietz & Watson and
Account Manager for the Parks Sausage Co., believed that the product consisted
of link sausages. Giuseppe Harris, an employee of Super Bakery and Marketing
Manager for Parks products, had a similar first impression.  One consumer contacted the Parks Sausage Co.’s
consumer telephone number “to complain about ‘Parks from Ball Park brand.’” Two
others complained to Caputo about the nitrate content of sausage products sold
under the Parks name, saying that TV commercials said that Parks sausages
didn’t contain nitrates. Caputo believed they were referring to the ads for
Park’s Finest, which do say that there are no nitrates.  However, Tyson’s VP and GM of the Ball Park
brand, didn’t learn of any instances of consumer confusion, though he was in a
position to do so.
The court found that the challenged statement wasn’t
literally false.  First, the court
determined that the meaning of Park’s Finest was ambiguous.  Parks argued that the only plausible meaning
of PARKS was Parks, so the name Park’s Finest meant that Ball Park was now
offering Parks’ “finest” products. 
Defendants responded that Park’s, in context, unambiguously referred to
the Ball Park brand.  While the
connection between Park’s Finest and Ball Park might not have been readily
apparent if Park’s Finest appeared in isolation, the context made that
connection, both on the package and in ads.
Parks argued that this connection was implausible because
the Ball Park trademark is associated with franks, not sausages, and that
defendants were marketing the Park’s Finest product as a sausage.  But that wasn’t true: they were marketing it
as a frank, and even if a customer mistakenly believed that Park’s Finest was a
sausage, or even were it a sausage, a consumer could still plausibly understand
that Park’s Finest, in context, referred to the Ball Park brand.  Even if there was currently no Ball
Park-sausage association, Hillshire “would effectively create that association
by integrating the Ball Park trademark into the Park’s Finest word mark.”  (Hillshire already sells about $100
million/year of beef patties under the Ball Park brand.) 
Thus, the name was not unambiguously false. But the court
declined to find that this was one of the rare cases in which a claim is so
unambiguously true that no further factfinding was required, rejecting
defendants’ argument that Park’s Finest unambiguously referred to Ball Park. In
defendants’ own survey, out of 200 survey respondents, 26 of them (13%)
identified “Parks” or “Park’s” as the company responsible for making the
product.  Another 41 respondents (21%)
responded that they “did not know” which company made it, and 23 respondents
(12%) responded that it was made by a company other than “Ball Park,” “Parks,”
or “Park’s.” 116 respondents (58%) identified “Ball Park” as the responsible
party.  Because respondents could give
multiple answers, between 81-90 respondents, or 40.5-45% of the sample, failed
to identify “Ball Park” as the source, making Park’s Finest not unambiguously a
reference to Ball Park.
However, whether Park’s Finest misrepresented the nature,
quality, or characteristics of the franks depended on whether consumers who
didn’t get the Ball Park connection would be deceived into believing that the
franks were plaintiff’s “finest.”  (There
was no other identified third party who might be referenced.)  Consumers’ failure to understand an
association between Park’s Finest and Ball Park wasn’t enough to show
misleadingness; in the absence of some further connection, “the name would
contain little to no meaning at all, other than the meaning the name derives
from its association with the product.” 
A seller is free to pick a trade name with no inherent connection to
itself, as long as that name isn’t infringing or otherwise deceptive.  Indeed, the court commented, it was
questionable whether “a consumer’s mere failure to appreciate the relationship
between the Park’s Finest name and the Ball Park brand—if determined to be in
some way deceptive—would relate to the ‘the nature, characteristics, qualities,
or geographic origin’ of the frankfurters.”
The false advertising claim “effectively collapses into an
inquiry into whether consumer surveys or other evidence show that a substantial
number of consumers would associate the Park’s Finest name with Plaintiff’s ‘Parks’
name.”  This meant a “substantial
overlap” between the §43(a)(1)(A) and (a)(1)(B) claims (a prior registration
was allowed to lapse, which is the source of much of Parks’ woes here), and the
court thus seemed skeptical that this was an appropriate use of §43(a)(1)(B),
though it gave Parks the benefit of the doubt even though false advertising
supposedly didn’t require Parks to show secondary meaning. (Which is, by the
way, one very good reason to channel trademark claims into §43(a)(1)(A), since
we spend a lot of energy preventing people who can’t show that they have valid
marks from suppressing the use of similar terms.  Query, however, whether there can be
materiality without secondary meaning.) 
Anyhow, Parks also made some false advertising-ish allegations, in that
they claimed that was false to designate Park’s Finest as the “finest” of the
Parks products, suggesting that other Parks products were less fine.
However, Parks did not produce a survey, only the statements
of Caputo and Harris, employees of Parks licensees.  Their declarations were insufficient to show
likely deception. Even assuming that the statements of the three consumers Caputo
mentioned supported a finding of likely confusion, the reactions of three
consumers couldn’t be extrapolated to find likely deception of a substantial
number of consumers. Nor did Harris and Caputo’s opinions that there would be
confusion add any support, given their connections with Parks. Not only was
their testimony self-serving, but also, as people who were intimately familiar
with Parks, “their perspectives are not representative of the perspectives of
consumers who may encounter the Park’s Finest product.”
Meanwhile, defendants did conduct a survey.  Only 13% of respondents identified “Parks” or
a variant thereof as the company that made Park’s Finest.  But a consumer’s identification of the name
“Parks” is different from a consumer’s identification of Parks, and respondents
were subsequently asked whether they’d previously heard of the company they
identified as the source.  Only 4% of the
sample said yes, and an additional 1.5% were unsure.  When the 4% were asked to name other products
made by the company they named, only one was able to identify any of Parks’
Parks objected that its reverse confusion theory meant that
defendants surveyed the wrong universe, but that didn’t help given that their
theory here was one of false advertising. 
A survey limited to people who “had purchased hot dogs at a grocery or
convenience store in the past six months and expected to do so again in the
next six months” and who were also required to have “purchased 100% beef hot
dogs in the past six months,” was “a proper attempt to limit participation in
the survey to the persons to whom Defendants’ statements are addressed.”  Other alleged flaws in the survey also didn’t
significantly undermine it.  (For
example, Parks argued that the survey was leading because it called the
products “hot dogs” and not sausages, but the package clearly says
“frankfurters.”  Also, the court didn’t
buy Parks’ argument that the potential for deception depended on the type of
processed meat product the consumer believed Park’s Finest to be, in the
absence of evidence, especially given that Super Bakery does use the Parks name
to sell other kinds of meat.  While this
argument wasn’t devoid of merit, it just wasn’t sufficient to reject the survey.)  Regardless of any flaws, Parks failed to meet
its burden to show likely deception.

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