Double play: Tyson defeats TM and false advertising claims

Parks, LLC v. Tyson Foods, Inc., No. 15-cv-00946 (E.D. Pa.
May 10, 2016)
 
This case involves a trademark and false advertising
dispute. Previous
ruling denying an injunction.
Parks claimed to own “Parks” for sausages and
other foods. Tyson owns the “Ball Park” trademark for hot dogs; it launched a
new line of “super-premium” frankfurters under the name “Park’s Finest.” Here,
the court grants summary judgment to Tyson and illustrates the caution that a (putative) trademark owner who sues puts its own rights at risk.
 
False advertising: the court reaffirmed its conclusion that
Parks’s allegations didn’t relate to the “nature, characteristics, qualities,
or geographic origin” of the Park’s Finest product, and thus couldn’t properly
be brought under §43(a)(1)(B); §43(a)(1)(A) was the proper home of a false
association claim, which is a trademark claim. “Parks is not contending that Defendants
have misrepresented the nature, characteristics, or qualities of their new line
of frankfurters; its claim is that the name ‘Park’s Finest’ is ‘likely to cause
confusion, or to cause mistake, or to deceive as to the affiliation,
connection, . . . association . . . [or] origin’ of the product.” A
§43(a)(1)(B) claim has to misrepresent either geographic origin or the characteristics
of the good itself, such as its properties or capabilities. Citations: Kehoe
Component Sales Inc. v. Best Lighting Prods., Inc., 796 F.3d 576, 590 (6th Cir.
2015) (quoting Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137, 1144 (9th
Cir. 2008)); see Forschner Grp., Inc. v. Arrow Trading Co. Inc., 30 F.3d 348,
357 (2d Cir. 1994) (rejecting a claim that use of the phrase “Swiss Army knife”
to describe “an inexpensive and shoddy multifunction pocketknife manufactured
in China” constituted false advertising because the representation did not
relate to either the geographic origin or the quality of the product). Note the
inconsistency with the Fourth Circuit’s recent Belmora holding.
 

Use of “Park’s Finest”
 
could deceive consumers only if it
led them to believe that the product was associated with Parks. That could
happen only if the word “Parks” “identif[ies] and distinguish[es]” Parks’s
products “from those manufactured and sold by others”—in other words, only if
the word “Parks” constitutes a protectable trademark. Because Parks’s claim
rises or falls based on whether it is able to establish that “Parks” functions
as a trademark in the minds of consumers, the proper analytical framework in
which to assess this claim is the law of trademarks.
 
Even assuming that §43(a)(1)(B) applied, Parks would still
lose. The statement “Park’s Finest” wasn’t literally false. At the very least,
it could be a reference to the brand “Ball Park,” and was thus ambiguous. After
all, “Ball Park” was superimposed on “Park’s Finest” on the packaging, and both
phrases were used together in radio and TV ads: “Park’s Finest from Ball Park.”
Thus, even a consumer who knew the Parks brand wouldn’t “inevitably” perceive a
reference to Parks.
 
Tyson’s intent was irrelevant: what mattered was the message
in its context. “‘A determination of literal falsity rests on an analysis of
the message in context,’ not on the message the speaker intended to convey or
on survey evidence of what consumers may believe the message to mean.” Common
sense and linguistics were enough to establish that “Park’s Finest” could be
understood as a reference to the Ball Park brand. Plus, there was in fact
evidence that “Park’s Finest” was intended to interact with the meaning of Ball
Park, from Tyson’s market research firm, which concluded that “[t]he word
‘Park’ evoked feelings of the baseball park experience that is strongly
associated with hot dogs,” and the name “linked strongly to the Ball Park brand
name.”
 
Nor was the term misleading. Tyson presented a survey
showing that only one in 200 people mistakenly believed that Park’s Finest
originated with Parks. Parks produced a survey designed to show false
advertising and trademark infringement, but it didn’t follow the proper pattern
for a false advertising survey. It first should have asked what messages the
consumer got and then asked consumers who received a relevant message
“comprehension” questions to figure out what they thought the message meant.
 
Parks’s survey showed each subject five product images,
including (in the test group) pictures of a Parks breakfast sausage package, a
Park’s Finest package, and three other unrelated sausage and hot dog products,
before asking whether the participant believed that two or more of those
products were “from the same company or are affiliated or connected,” with
followups as necessary.  The respondents
who perceived a connection between Parks and Park’s Finest essentially all thought
it was because of name similarity, but this survey “sheds no light on what
message a consumer receives when they encounter the Park’s Finest packaging or,
more importantly, whether the consumer would receive the false message that the
product originated with, or was affiliated with, Parks.”  A respondent who didn’t receive any message
about origin from the Park’s Finest product standing alone could simply have
noticed that the word “Park” appeared in both images.  Such respondents should have been filtered
out for false advertising purposes.
 
Another flaw in the survey was that it assumed that “Parks”
had secondary meaning among the consumers of Park’s Finest.  “A consumer who is not familiar with the
“Parks” name could not be deceived by the ‘Park’s Finest’ name, even if that
consumer failed to comprehend that the product is part of the Ball Park family.”  The survey method allowed respondents to
identify a connection even if they’d never heard of Parks.  “Outside of the survey environment, there
would be no risk that this person would receive a false message from the Park’s
Finest packaging.”  The fact that this
claim turned on secondary meaning further reinforced that what was at issue was
a trademark claim, not a false advertising claim. 
 
Finally, the survey didn’t target the appropriate
universe.  Participants had to live in
one of approximately two hundred ZIP codes in the country that, according to
Parks, correspond to the locations of stores that sell “Parks”-branded
products.  This attempt to survey
consumers of Parks’s products might not be representative of whether a
substantial portion of the intended audience for Park’s Finest would be deceived.
 
The remaining evidence wasn’t enough to allow a reasonable
factfinder to conclude that a substantial portion of the target audience would
be likely to be deceived, even though Tyson’s survey wasn’t without flaws of
its own.  Parks cited reports by a
licensee, Dietz & Watson, that three consumers who contacted Dietz &
Watson after the launch of Park’s Finest product appeared to be confused about
the relationship of the Park’s Finest product to Dietz & Watson’s
“Parks”-branded products. Three consumers’ reaction was insufficient to be
extrapolated to likely confusion among a substantial number of consumers.  Nor was the testimony of one of Parks’s
co-owners that he’d been personally approached by personal friends who
mistakenly believed that Park’s Finest product came from Parks. These “anecdotal”
instances of confusion were also insufficient, both because of their small
number and because the friends of one of the owners weren’t likely to represent
average consumers.
 
Tyson also won summary judgment on the trademark
infringement claim because Parks couldn’t show secondary meaning in the Parks
name.  Its former federal registrations
expired between 2003 and 2011; Parks in context was clearly a surname,
requiring a showing of secondary meaning for protection (even though in other
context, like “Ball Park’s,” it wouldn’t be a surname). 
 
While the length of sales and exclusivity supported a
finding of secondary meaning, Parks failed to quantify how well the name was
known before its present owners purchased it out of bankruptcy.  The court pointed to minimal
advertising—Parks didn’t sell products directly, but licensed its marks to two
entities, one of which only used the marks in grocery store circulars and at
six “food shows” per year and the other of which sold Parks-branded products
predominantly to the US military. 
Likewise, company size and sales numbers didn’t establish secondary
meaning; Parks was “a very small company,” according to Dietz & Watson,
with its sales of Parks products about $5.5 million per year from 2008 to 2013,
with nearly all of those sales coming from the Eastern United States region
where Parks claimed to have secondary meaning. 
This was no more than 1.3% of the breakfast sausage market and less than
1% of the dinner sausage market in the Northeast.
 
No reasonable factfinder could conclude that Tyson copied
the Parks name.  Though a trademark
search revealed the expired registration, the search was itself evidence of
independent creation, since it was commissioned once the name was on the
table.  Nor was Parks’s survey probative
of secondary meaning.  Whether a survey
that shows likely confusion shows secondary meaning depends on survey format:
if respondents identify the plaintiff after being presented with nothing more
than the defendant’s accused product, that’s good evidence of secondary
meaning, but Parks’s survey was quite different.  All that Parks had was the “handful” of
alleged instances of confusion, and given that Tysons had sold “many millions
of units” of their Park’s Finest product to “[m]illions of consumers,” “reports
of only a few actual instances of confusion cast substantial doubt on Parks’s
claim of secondary meaning.”

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