Park claim fails to fly: formerly well-known mark lacks current secondary meaning

Parks LLC v. Tyson Foods, Inc., 2017 WL 3014273, -- F.3d --, No. 16-2768 (3d Cir. Jul. 6, 2017)

District court opinion discussed previously here. Since the 1950s, Parks Sausage Company has manufactured or licensed sausage under the brand name “PARKS,” though its registration expired in the early 2000s.  In 2014, Tyson, the owners of the frankfurter brand BALL PARK, which is responsible for 23% of the revenue of all franks sold in the US, launched the super-premium line PARK’S FINEST, and Parks sued for trademark infringement and false advertising.  Here, the court of appeals affirms the rejection of both claims.

“False advertising claims do not require proof of secondary meaning, so litigants may be tempted to frame a false association claim as a false advertising claim, to ease their evidentiary burden.”  That’s what seems to have happened here, so the court tried to clarify the distinction between §43(a)(1)(A) and §43(a)(1)(B) claims, holding that the false advertsing claim here failed because it was “essentially a false association claim in disguise.”

False advertising requires a misrepresentation of “the nature, characteristics, qualities, or geographic origin” of a product.  “PARK’S FINEST is only misleading in the way that Parks suggests if a consumer makes the connection between PARK’S FINEST and PARKS and has in mind a pre-existing association between PARKS and high quality products. This is a false association claim and nothing more.”  Even the argument that the name would misleadingly imply that the product was a sausage when it’s really an inferior frankfurter depended on the consumer knowing that PARKS was a mark for sausages and making a false association.

Even if Parks argued that “PARK’S FINEST” was misleading for blurring the distinction between frankfurters and sausages, the packaging was unambiguous that the product was frankfurters and the rest of the label couldn’t confuse consumers; plus Parks repeatedly took the position that a frankfurter is a kind of a sausage, meaning that there was no misleadingness by its own lights.

Parks contended that PARK’S FINEST was misleading with regard to “origin,” but that didn’t work both for the reasons given above and because §43(a)(1)(B) is about geographic origin, not other types of false designations of origin.  It’s not the right vehicle “for addressing claims of false designation of origin that are not concerned specifically with geographic origin.” “Geographic origin” “refers solely to the place of origin and not to the creator, manufacturer, or any broader conception of the term ‘origin.’”  (In a footnote, the court commented that it wasn’t resolving the issue of whether a term had to be a “geographically distinctive trademark” before a manufacturer could be found liable for falsely advertising the geographic origin of its goods.  Here “trademark” seems to mean something like “common-law certification or collective mark.”)  Because the name PARK’S FINEST says nothing about the product’s “geographic origin,” there was no valid §43(a)(1)(B) claim.

The false association claim then failed for want of a showing of secondary meaning.  As a surname-based mark, PARKS was required to show acquired distinctiveness; it didn’t have that any more.  Parks argued that inherent distinctiveness should have been a jury question because “parks” is also the plural of “park,” as in recreational land, and therefore could be seen as an “arbitrary” mark. “But it is undisputed that Parks was named after its founder, someone who Parks describes with justifiable pride as ‘an important figure in the history of American Business,’ and Parks’s reputation is closely linked to its founder,” so no reasonable juror could conclude that PARKS was anything other than a reference to the founder. (Isn’t there a logical problem here?  If in fact PARKS lacks acquired distinctiveness, why wouldn’t the hypothetical reasonable consumer encounter the mark in ignorance of its history, and thus not make the “link” as described, leaving her to figure out what was going on?)

Of note in the secondary meaning discussion, Parks tried to use its confusion survey to show secondary meaning; that didn’t work well.  An Ever-Ready survey shows consumers only the potentially-infringing product and asks open-ended questions to determine whether they believe the product is associated with the senior mark; it can also provide evidence of secondary meaning. This kind of survey works best for commercially strong marks.  “Holders of weaker marks more frequently employ a Squirt survey,” as here.  A Squirt survey puts two products side by side and asks consumers about their beliefs about source.  “[A] well-designed Squirt survey may show a likelihood of confusion. What it does not do or even purport to do, however, is prove secondary meaning.”  Because of how the survey is conducted, “a consumer who had never heard of PARKS could still conclude that the two products were affiliated.” Follow-up questions might have allowed participants to identify the source of PARKS or PARK’S FINEST, which could have shed light on secondary meaning, but the survey didn’t ask them.

Parks argued that proof of likely confusion proved secondary meaning, but that’s just wrong.  The evidence sometimes overlaps, but not always. “Establishing that two marks are similar does not necessarily lead to any valid conclusion about whether either of the two has secondary meaning.”