Parks LLC v. Tyson Foods, Inc.
2017 U.S. App. LEXIS 12717
| 3rd Cir. | 2017Background
- Parks Sausage Co. (Parks) used the surname-based mark PARKS since the 1950s; registration at the USPTO lapsed in the early 2000s and Parks later licensed production to Dietz & Watson and Super Bakery.
- Since the licensing arrangements (circa 2000), PARKS-branded products were sold largely via grocery circulars and institutional channels rather than broad consumer advertising; sales were modest and regionally concentrated in parts of the Northeast.
- Tyson (owner of BALL PARK) launched a premium frankfurter line in 2014 called PARK’S FINEST (packaged with prominent BALL PARK branding) after conducting consumer research and a trademark search that revealed the lapsed PARKS registration.
- Parks sued Tyson in 2015 under the Lanham Act for false advertising (15 U.S.C. §1125(a)(1)(B)), false association/infringement (15 U.S.C. §1125(a)(1)(A)), dilution, and state-law claims, seeking injunctive relief and an accounting.
- The district court granted summary judgment for Tyson on the Lanham Act claims, concluding Parks’ false-advertising claim was essentially a disguised trademark claim and that PARKS lacked secondary meaning and sufficient market penetration; the Third Circuit affirmed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| False advertising under §1125(a)(1)(B) | PARK’S FINEST falsely implies Tyson’s product is Parks’ sausage or misrepresents product characteristics/origin. | The name does not misrepresent product characteristics or geographic origin; any source implication is a trademark (false association) issue. | Dismissed: claim is a disguised false-association claim and fails on the merits; §1125(a)(1)(B) covers geographic origin, not general source attribution. |
| False association / trademark infringement (protectability) | PARKS is a protectable mark with acquired secondary meaning across the eastern U.S.; consumers will confuse PARK’S FINEST with PARKS. | PARKS is a surname-based mark that has become weak: limited recent advertising, low market share, scant evidence of actual confusion; no secondary meaning or sufficient market penetration. | Dismissed: no reasonable juror could find secondary meaning or adequate market penetration to support protection or likelihood of confusion. |
| Survey and evidence of confusion | Parks’ Squirt-format survey shows consumer association and thus secondary meaning and confusion. | The survey is methodologically flawed for proving secondary meaning (prime/leading design); isolated declarations of confusion are scant and self-serving. | Court found survey incapable of proving secondary meaning; actual confusion evidence too minimal. |
| Scope of §1125(a)(1)(B) — “geographic origin” | PARK’S FINEST misrepresents origin in a broader “source/creator” sense. | The statute’s modifier “geographic” limits §1125(a)(1)(B) to place-of-origin claims, not creator/author attribution. | Held: “geographic origin” refers to place/manufacture origin, not broader creator/source; §1125(a)(1)(B) not appropriate here. |
Key Cases Cited
- Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc., 653 F.3d 241 (3d Cir. 2011) (false-advertising limitations and analysis of consumer impressions on origin)
- Dastar Corp. v. Twentieth Century Fox, 539 U.S. 23 (U.S. 2003) (limits on interpreting “origin” to avoid expanding to creator/author attribution)
- E.T. Browne Drug Co. v. Cococare Prod., Inc., 538 F.3d 185 (3d Cir. 2008) (burden to prove existence of protectable mark and secondary meaning)
- Ford Motor Co. v. Summit Motor Prod., Inc., 930 F.2d 277 (3d Cir. 1991) (elements for false-association/trademark claim and factors for secondary meaning)
- Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225 (3d Cir. 1978) (definition and role of secondary meaning)
- Nat. Footwear Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383 (3d Cir. 1985) (market penetration considerations for territorial protection and infringement relief)