Parks LLC v. Tyson Foods, Inc. , 863 F.3d 220 ( 2017 )

PRECEDENTIAL
UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
_____________
No. 16-2768
_____________
PARKS LLC,
Appellant
v.
TYSON FOODS, INC;
HILLSHIRE BRANDS COMPANY
_______________
On Appeal from the United States District Court
for the Eastern District of Pennsylvania
(D.C. No. 5-15-cv-00946)
District Judge: Hon. Joseph F. Leeson, Jr.
_______________
ARGUED
March 22, 2017
Before: SMITH, Chief Judge, JORDAN, and ROTH, Circuit
Judges.
(Filed July 6, 2017)
_______________
Roberta Jacobs-Meadway
Jeffrey P. Lewis [ARGUED]
Eckert Seamans Cherin & Mellott
50 South 16th St. – 22nd Fl.
Philadelphia, PA 19102
Theodore H. Jobes
Ronald J. Shaffer
Fox Rothschild
2000 Market St. – 20th Fl.
Philadelphia, PA 19103
James C. McConnon
Alex R. Sluzas
Paul & Paul
1717 Arch St. – Ste. 3740
Philadelphia, PA 19103
Counsel for Appellant
Daniel T. Brier
Myers Brier & Kelly
425 Spruce St. – Ste. 200
Scranton, PA 18503
Mark H. Churchill
Holland & Knight
1600 Tysons Blvd. – Ste. 700
McLean, VA 22102
2
John J. Dabney [ARGUED]
Mary D. Hallerman
McDermott Will & Emery
500 N. Capitol St., N.W.
Washington, DC 20001
Counsel for Appellees
_______________
OPINION OF THE COURT
_______________
JORDAN, Circuit Judge.
This case concerns a trademark that once enjoyed
widespread recognition but has since grown considerably
weaker. Since the 1950s, Parks Sausage Company has
manufactured or licensed sausage under the brand name
“PARKS.”1 At one point, PARKS was placed on the
Principal Register of trademarks at the United States Patent
and Trademark Office (“USPTO”), but, sometime in the early
2000s, Parks failed to renew the registration. In 2014, Tyson
Foods, Inc. and Hillshire Brands Company (collectively,
“Tyson”),2 the owners of the frankfurter brand BALL PARK,
launched a premium frankfurter product called PARK’S
1
We use “Parks” in lowercase letters to refer to the
company and “PARKS” in capital letters to refer to the mark.
2
Hillshire Farms was acquired by Tyson in 2014 and
remains a wholly owned subsidiary. Parks, LLC v. Tyson
Foods, Inc., Civ. No. 5:15-00946, 2015 WL 4545408, at *1
(E.D. Pa. July 28, 2015).
3
FINEST. Parks sued, arguing that Tyson was engaged in
false advertising and was infringing Parks’s trademark.
The District Court determined that Parks’s claim for
false advertising was really a repetition of its trademark
claim, and that the PARKS mark was too weak to merit
protection against Tyson’s use of the PARK’S FINEST name.
We agree with the District Court and will affirm in all
respects.
I. BACKGROUND
A. Parks and PARKS
Parks was founded in the 1950s by Henry G. Parks, Jr.,
a pioneering African-American businessman. The company
had the distinction at one point of being the first African-
American-owned company to be publicly traded on the New
York Stock Exchange. Parks engaged in radio and television
advertising directed to consumers and developed a well-
known slogan, “More Parks Sausages, Mom, Please[.]”
(Opening Br. at 29.) Though the PARKS brand had likely
developed prominence sufficient for common law trademark
protection earlier than 1970, the name was not registered at
the USPTO until that year.
Following the death of Mr. Parks in 1989, the
company he built fell on hard times. It eventually went
bankrupt and was purchased by its current owners. Parks
stopped making and selling PARKS products and instead
entered into a licensing agreement in 2000 with Dietz &
Watson, a Philadelphia-based producer of delicatessen meats,
to make and sell PARKS-branded products. Around that
4
time, the USPTO registration of the mark lapsed. In 2002,
Parks also granted a license to Super Bakery, Inc., a supplier
of baked goods that is related to Parks by common ownership,
to sell PARKS-branded products in military commissaries.
At least since the licensing agreement with Dietz & Watson
17 years ago, PARKS-branded products have been advertised
primarily through grocery store handbills and circulars rather
than through television and radio advertising.
From 2008 through 2014, Dietz & Watson sold over
$38 million worth of PARKS-branded products. In 2014,
PARKS sales through Dietz & Watson increased 40% from
the previous year. In addition, from 2003 through August
2013, Super Bakery sold some $31 million in PARKS
products.
B. Tyson, BALL PARK, and PARK’S FINEST
BALL PARK brand frankfurters are well known,
accounting for 23% of the revenue of all franks sold in the
United States.3 Parks, LLC v. Tyson Foods, Inc., Civ. No.
5:15-00946, 2015 WL 4545408, at *4 (E.D. Pa. July 28,
2015). Tyson owns the BALL PARK mark and claims that
the brand is recognized by 90% of American adults over the
age of eighteen. Id. In 2014, Tyson introduced a line of
“super-premium” frankfurters that it decided to call
“[PARK’S FINEST].” Parks, LLC v. Tyson Foods, Inc., 186
F. Supp. 3d. 405, 412 (E.D. Pa. 2016). It says it chose that
3
Though it may distress the cognoscenti, we use the
terms “frankfurters,” “franks,” and “hot dogs,” as synonyms.
Not so with the term “sausage,” which we use to denote
something akin to but arguably different from hot dogs.
5
name after conducting extensive consumer research.
According to Tyson, surveys showed that the name “conveys
premium quality in a clever, memorable way that should be
ownable for the [BALL PARK] brand.” (App. at 375.)
Packaging for the frankfurters includes the BALL
PARK logo superimposed over the words PARK’S FINEST.
(App. at 11.) Tyson says that it designed the packaging to
“strongly convey[]” the BALL PARK mark so that
consumers would make the connection between BALL PARK
and the PARK’S FINEST product. (App. at 390.) In
advertisements, the product would be referred to as
“[PARK’S FINEST] from [BALL PARK],” Parks, 2015 WL
4545408 at *2, or sometimes “BALL PARK’S FINEST.”
(Opening Br. at 17.) Before the product was launched,
Tyson’s attorneys undertook a trademark search, discovered
the lapsed PARKS mark, and confirmed the cancellation of
the mark with the USPTO.
6
C. Procedural Background
Parks filed suit against Tyson in 2015, asserting false
advertising, false association, and trademark dilution claims
under the Lanham Act, as well as Pennsylvania common law
and statutory claims.4 It requested a nationwide injunction
and an accounting of the sales of PARK’S FINEST franks.
The District Court denied Parks’s motion for a
preliminary injunction because it concluded that Parks was
unlikely to succeed on the merits of its false advertising
claim. Parks, 2015 WL 4545408 at *16. Once discovery
ended, Tyson moved for summary judgment on all of Parks’s
claims. Parks conceded that its trademark dilution claim and
its state law claims should be dismissed, and they were. The
Court then granted summary judgment on the remaining
Lanham Act claims of false association and false advertising,
concluding that “no reasonable factfinder could find in
4
Specifically, Parks’s claims were: (1) false
advertising under the Lanham Act, 15 U.S.C.
§ 1125(a)(1)(B); (2) trademark infringement in the eastern
United States (all states east of the Mississippi river) under
the Lanham Act, 15 U.S.C. § 1125(a)(1)(A); (3) trademark
dilution under the Lanham Act, 15 U.S.C. § 1125(c); (4)
trademark infringement under Pennsylvania’s Unfair Trade
Practices and Consumer Protection Act, 54 Pa. Const. Stat.
§ 1123, although Parks confusingly says in the body of Count
4 that it is “under common law”; (5) trademark dilution under
Pennsylvania statutory law, 54 Pa. Const. Stat. § 1124; and
(6) unfair competition under Pennsylvania common law.
7
Parks’s favor[.]” Parks, 186 F. Supp. 3d. at 413 (footnote
omitted). Parks timely appealed.
II. DISCUSSION5
Section 43(a) of the Lanham Act, codified at 15
U.S.C. § 1125(a), creates “two distinct bases of liability: false
association … and false advertising.” Lexmark Int’l, Inc. v.
Static Control Components, Inc., __ U.S. __, 134 S. Ct. 1377,
1384 (2014); see also J. Thomas McCarthy, 5 McCarthy on
Trademarks and Unfair Competition § 27:9 (4th ed. 2017)
[hereinafter “McCarthy on Trademarks”] (describing “two
major and distinct types” of claims under § 1125(a)). Section
1125(a)(1)(A) prohibits “false or misleading” claims that are
“likely to cause confusion, or to cause mistake, or to deceive
as to … the origin, sponsorship, or approval of his or her
goods, services, or commercial activities by another
person[.]” That provision is “the foremost federal vehicle for
the assertion of … infringement of … unregistered marks,
5
The District Court had jurisdiction over the Lanham
Act claims under 28 U.S.C. § 1331 and the state law claims
under 28 U.S.C. § 1367. We have jurisdiction pursuant to 28
U.S.C. § 1291. Summary judgment is appropriate only if
“there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.” Fed. R.
Civ. P. 56(a). A dispute is genuine when “the evidence is
such that a reasonable jury could return a verdict for the
nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 248 (1986).
8
names and trade dress[.]”6 5 McCarthy on Trademarks
§ 27:9. Claims made under it are often called “false
designation of origin” or “false association” claims. Id. at n.
1.05. We will use the latter term here. To establish a false
association claim, the owner of an unregistered mark “has the
burden ... of proving the existence of a protectable mark.”
E.T. Browne Drug Co. v. Cococare Prod., Inc., 538 F.3d 185,
191 (3d Cir. 2008). When, as in this case, the mark is a
surname, a necessary step in showing that it is eligible for
protection as a trademark is demonstrating that it has acquired
secondary meaning. Id. at 191-92. “Secondary meaning” is a
term of art in trademark law that refers to “a mental
association in buyers’ minds between the alleged mark and a
single source of the product.” 2 McCarthy on Trademarks
§ 15:5.
Another portion of the statute, subsection (a)(1)(B),
forbids “commercial advertising or promotion” that
“misrepresents the nature, characteristics, qualities, or
geographic origin of his or her or another person’s goods,
services, or commercial activities[.]” 15 U.S.C.
§ 1125(a)(1)(B). Claims under that provision are called
“false advertising” claims. 5 McCarthy on Trademarks
§ 27:9. 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. Cf. Pernod Ricard USA, LLC v.
Bacardi U.S.A., Inc., 653 F.3d 241, 247 & n.8 (3d Cir. 2011)
6
For trademarks that are on the Principal Register at
the USPTO, as the PARKS mark once was, section 32 of the
Lanham Act, codified at 15 U.S.C. § 1114, also provides a
cause of action for infringement.
9
(noting that, in that case, the “false advertising dispute [was]
a proxy for the real fight the parties want[ed] to have, which
[was] over the right to the …use of … a trademark” and
observing that “[t]his [was] not the first time the false
advertising provision of the Lanham Act has been asked to
stand in for a trademark action”). That is what seems to have
happened here, and we take this opportunity to clarify the
distinction between claims brought under § 1125(a)(1)(A) and
§ 1125(a)(1)(B). As the District Court recognized, Parks’s
false advertising claim fails because it is essentially a false
association claim in disguise. The false association claim is
also infirm, for the reasons described by the District Court.
A. False Advertising
As noted above, the statement at issue in a false
advertising claim must “misrepresent[] the nature,
characteristics, qualities, or geographic origin” of a product.7
7
Broadly stated, the elements a false advertising claim
are:
1) that the defendant has made false or
misleading statements as to his own product [or
another’s]; 2) that there is actual deception or at
least a tendency to deceive a substantial portion
of the intended audience; 3) that the deception
is material in that it is likely to influence
purchasing decisions; 4) that the advertised
goods traveled in interstate commerce; and 5)
that there is a likelihood of injury to the plaintiff
in terms of declining sales, loss of good will,
etc.
10
15 U.S.C. § 1125(a)(1)(B); see Kehoe Component Sales Inc.
v. Best Lighting Prods., Inc., 796 F.3d 576, 590 (6th Cir.
2015) (“Absent a false statement about geographic origin, a
misrepresentation is actionable under § 1125(a)(1)(B) only if
it misrepresents the characteristics of the good itself– such as
its properties or capabilities. The statute does not encompass
misrepresentations about the source of the ideas embodied in
the object (such as a false designation of authorship)[.]”
(internal quotation marks and citation omitted)). Parks’s false
advertising claim fails because it depends upon the purported
false association between Tyson’s PARK’S FINEST brand
and the PARKS mark. So the false advertising claim rises
and falls with the false association claim, which we will
subsequently address. For now, we note simply that the
primary argument Parks advances is that the name PARK’S
FINEST falsely implies that Tyson’s product is one of Parks’s
products. As Parks puts it, Tyson marketed PARK’S FINEST
as “Parks’ sausages.” (Opening Br. at 21.) In other words,
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.
Parks also argues that PARK’S FINEST is misleading
with respect to the “nature, characteristics, [or] qualities,” 15
U.S.C. § 1125(a)(1)(B), of the product. Parks alleges that the
name PARK’S FINEST will imply to consumers that it is a
sausage when in reality it is a frankfurter – an item consumers
Warner-Lambert Co. v. Breathasure, Inc., 204 F.3d 87, 91-92
(3d Cir. 2000). The specific point at issue in this case bears
on the first element.
11
may see as inferior. Again, that contention largely duplicates
the one that we have already found wanting. Unless a
consumer knows that PARKS is a mark for sausages, the
name PARK’S FINEST does not carry any such implications.
At bottom, then, this too is a false association claim.8
To the extent that Parks is advancing the related
argument that the name “PARK’S FINEST” is misleading
because it blurs the distinction between frankfurters and
sausages and is therefore confusing to consumers, that
argument falters on two grounds.9 First of all, because the
packaging for PARK’S FINEST displays “a factually
accurate, unambiguous statement” that the product is a
frankfurter, “[n]o reasonable consumer could be misled by
those statements, and the rest of the label does not put those
statements in doubt.” See Pernod Ricard, 653 F.3d at 252
(reaching the same conclusion with regards to a rum called
Havana Club that was actually made in Puerto Rico but
8
The name PARK’S FINEST does touch upon the
“nature, characteristics, [or] qualities,” 15 U.S.C.
§ 1125(a)(1)(B), of the product in at least one respect. It
implies high quality. But Parks does not allege that PARK’S
FINEST is of poor quality or does not in fact deserve the
positive appellation of “finest.” Indeed, such a claim would
likely fail since calling a product the finest is “common
marketplace puffery,” Castrol Inc. v. Pennzoil Co., 987 F.2d
939, 945 (3d Cir. 1993) (internal quotation marks omitted).
9
It isn’t entirely clear whether Parks is actually
making such an argument, but we address it for the sake of
completeness.
12
informed consumers on the packaging that it was made in
Puerto Rico).10 Second, Parks has undercut its own argument
by repeatedly saying both at the District Court and before us
on appeal that hot dogs and sausages are actually not
distinctive.11 If a frankfurter is a kind of a sausage, as Parks
10
Parks points to evidence in the record suggesting
that Tyson may have hoped to create a cross-over product that
would appeal to both sausage and frankfurter consumers. For
instance, focus groups sessions conducted before launch
suggested that PARK’S FINEST was seen “as a satisfying
sausage in a convenient, fully-cooked, smaller link.” (App. at
788 (emphasis omitted).) However, as the District Court
noted “[a] consumer who encounters the [PARK’S FINEST]
product would not be privy to how [Tyson] intended for the
product to be seen” and would be exposed to the
unambiguously true statement that the product contains
“uncured beef frankfurters.” Parks, 186 F. Supp. 3d at 416
n.2.
11
For instance, Parks notes that some dictionaries
define a “hot dog” as “a small cooked sausage,” (Opening Br.
at 22 (quoting hot dog, Merriam-Webtster’s Online
Dictionary, https://www.merriam-
webster.com/dictionary/hot%20dog (last visited on May 1,
2017))), and frankfurter as “a cured cooked sausage[.]”
(Opening Br. at 22 (quoting frankfurter, Merriam-Webtster’s
Online Dictionary, https://www.merriam-
webster.com/dictionary/frankfurter (last visited on May 1,
2017)).) Parks also points out that hot dogs and sausages are
grouped in the same category under the Nice Classification
system, an international classification system for the
registration of trademarks, and that Parks’s food marketing
13
suggests, then there is nothing false or misleading if the
advertising for PARK’S FINEST suggests that to consumers.
Parks’s final argument is that the name PARK’S
FINEST is misleading with regard to “origin.” (Opening Br.
at 15-16.) To a large extent that argument falters because it
repeats the same mistakes we have already discussed. But it
also fails for another reason. Section 1125(a)(1)(B) focuses
specifically on statements that are false with regard to
“geographic origin” and not other types of “false
designation[s] of origin,” § 1125(a)(1).12 So, § 1125(a)(1)(B)
can be the proper vehicle for bringing a challenge to, for
example, a Swiss army knife not made in Switzerland, Black
Hills gold jewelry that is not made in the Black Hills, or
Scotch whiskey not manufactured in Scotland. Cf. Forschner
Grp., Inc. v. Arrow Trading Co. Inc., 30 F.3d 348, 355 (2d
Cir. 1994) (concluding that the term “swiss” in swiss army
expert testified that “the food industry considers and treats hot
dogs and sausages as one category.” (Opening Br. at 22;
App. at 633-34.)
12
Prior to 1989, § 43(a) of the Lanham Act did not
clearly distinguish between false association and false
advertising claims and merely prohibited “false designation[s]
of origin” generally. Lanham Act, Pub L. No. 79-489, § 43,
60 Stat. 427, 441 (1946); see also 5 McCarthy on Trademarks
§§ 27:6, 27:7 (describing the history of § 43(a)). In 1989, the
statute was amended by creating separate subsections
covering false association and false advertising, and by
adding the modifier “geographic” before “origin” in the false
advertising subsection. 15 U.S.C.A. § 1125(a)(1)(B); 5
McCarthy on Trademarks §§ 27:6, 27:7.
14
knife was not a geographic term of origin but adjudicating the
claim under § 1125(a)(1)(B)); Black Hills Jewelry Mfg. Co. v.
Gold Rush, Inc., 633 F.2d 746, 750 (8th Cir. 1980) (noting
that the Lanham Act’s prohibition on false advertising
“continue[s] [a] tradition of providing protection against
outsiders who use the same geographical designation”);
Scotch Whiskey Ass’n v. Barton Distilling Co., 489 F.2d 809,
811 (7th Cir. 1973) (applying an earlier version of the
Lanham Act to resolve a geographic origin claim). But that
subsection is not the right vehicle for addressing claims of
false designation of origin that are not concerned specifically
with geographic origin. See Pernod Ricard, 653 F.3d at 250
n.11 (noting that the most natural meaning of “geographic
origin” would extend only to “the place of a product’s
manufacture, not a broad inquiry into the product’s
background,” but affirming dismissal on alternative grounds).
We have suggested as much before in dicta, but never in a
holding. Id. The question is now squarely before us and we
conclude that the term “geographic origin” refers solely to the
place of origin and not to the creator, manufacturer, or any
broader conception of the term “origin.”13
13
We leave for another day the question of how
precisely the claimed geographic origin must match the actual
place of origin. We do not need to decide, for instance,
whether a company headquartered in a particular place can
truthfully label a product as coming from that location even
though the product was manufactured elsewhere. In Re
Nantucket Allserve Inc., 28 U.S.P.Q.2d 1144 (T.T.A.B. Aug.
11, 1993) (refusing to register the mark NANTUCKET
NECTARS when the company was headquartered in
Nantucket but the product was manufactured in Worcester,
MA); but see In Re Joint-Stock Co. Baik, 80 U.S.P.Q.2d 1305
15
That conclusion is consistent with precedent from
other circuit courts. See Forschner Grp., 30 F.3d at 355
(“The question is whether [the mark] can be construed to
mean that the product is made in a certain locale.”); cf. Black
Hills Jewelry Mfg. Co., 633 F.2d at 750 (noting that the
Lanham Act follows the common law “tradition of providing
protection against outsiders who use … [a] geographical
designation”). It is also consistent with Supreme Court
precedent interpreting the term “origin of goods” in the
context of a false association claim under the Lanham Act. In
Dastar Corp. v. Twentieth Century Fox, 539 U.S. 23, 37
(2003), the Court emphasized that “origin” could refer to
either “geographic origin” or “to origin of source or
manufacture” but rejected the argument that the term origin
could “be stretched” to include broader concepts of origin
such as “the creator of the underlying work,” id. at 29-33, or
“the author of any idea, concept, or communication embodied
in those goods,” id. at 37. So the term “origin” has already
been cabined.
Moreover, as we suggested in Pernod Ricard, the term
is further narrowed in § 1125(a)(1)(B) by the addition of the
modifier “geographic.” Pernod Ricard, 653 F.3d at 250 n.11
(questioning the district court’s effort to “use the modifier
(T.T.A.B. June 8, 2006) (registering a trademark for
BAIKALSKAYA VODKA manufactured in a town near
Lake Baikal and using some water from the Lake in the
manufacturing process). Nor do we need to resolve a case
like Pernod Ricard, in which the product in question had once
been manufactured in Havana but was no longer. Pernod
Ricard, 653 F.3d at 244.
16
‘geographic’ to expand the meaning of ‘origin’ into the realm
of history, heritage, and culture”). Dictionary definitions of
the term “geographic” are consistent with a focus on the place
of origin or manufacture. See Geographic, Webster’s Third
New International Dictionary 948 (1986) (defining
“geographic” as “belonging to or characteristic of a particular
region”). Likewise, under the common law of trademarks, a
“geographically descriptive trademark” is one that uses “a
geographic name to indicate where the goods are grown or
manufactured.” Geographically Descriptive Trademark,
BLACK’S LAW DICTIONARY 1631 (9th Ed. 2009) (emphasis
added); see also 2 McCarthy on Trademarks
§ 14:3 (providing examples of “geographically descriptive
term[s]”). When Congress used the term “geographic origin,”
it was not writing on a blank slate, but instead appears to have
intended to link the protections of the false advertising
provision to a well-defined and readily understood concept:
the place where the goods come from.14 Cf. Forschner Grp.,
14
To be clear, we are not opining that a mark must be
a “geographically distinctive trademark” before a
manufacturer may be found liable for falsely advertising the
geographic origin of its goods. The Second Circuit appears to
have reached that conclusion, see Forschner Grp., 30 F.3d at
353 (“Questions of false designation of geographic origin are
properly considered within the analytical framework used to
gauge the distinctiveness of trademarks.”), but whether
“geographic origin” in § 1125(a)(1)(B) is a term of art
incorporated in full from the common law of trademark
protection was not briefed by the parties and we need not
resolve that question today. We only hold that the term
“geographic origin” must refer, at the very least, to the place
17
30 F.3d at 354 (concluding that “[u]nder the false advertising
provision of the Lanham Act, a phrase is eligible for
protection as a representation of geographic origin only if the
phrase is geographically descriptive”).
The name PARK’S FINEST says nothing about the
product’s “geographic origin.” In the end, Parks has not
made a valid claim for false advertising because none of its
grievances concern the “nature, characteristics, qualities, or
geographic origin” of PARK’S FINEST.15
B. False Association
The elements of a false association trademark claim
under the Lanham Act track the elements of a common law
trademark infringement claim: a plaintiff must prove that “(1)
the marks are valid and legally protectable; (2) the marks are
owned by the plaintiff; and (3) the defendant’s use of the
marks to identify goods or services is likely to create
confusion concerning the origin of the goods or services.”
Ford Motor Co. v. Summit Motor Prod., Inc., 930 F.2d 277,
291 (3d Cir. 1991) (internal quotation marks omitted). Even
when those elements are satisfied, relief is limited in scope to
of the origin of goods and that PARK’S FINEST does not
meet that requirement.
15
The District Court also concluded that PARK’S
FINEST did not have a “tendency to deceive a substantial
portion of the intended audience.” Parks, 186 F. Supp. 3d at
417 (relying on Pernod Ricard, 653 F.3d at 248). Because
we conclude that Parks’s claims are not false advertising
claims, there is no necessity to address that conclusion.
18
where “market penetration is significant enough to pose the
real likelihood of confusion among the consumers in that
area.” Charles Jacquin Et Cie, Inc. v. Destileria Serralles,
Inc., 921 F.2d 467, 472 (3d Cir. 1990) (internal quotation
marks omitted).
A valid and legally protectable mark must be
“distinctive,” which may be shown in two ways. Some marks
are, by their very nature, considered distinctive. 2 McCarthy
on Trademarks § 11:2. Such inherently distinctive marks
include ones that are arbitrary or fanciful, such as APPLE for
computers or SHELL for gasoline, id. at § 11:11, as well as
ones that are suggestive of a product’s function but not
descriptive such as PENGUIN for freezers or SAMSON for
weight training machines, id. at § 11:67. On the other hand,
marks that are merely descriptive of the product are not
inherently distinctive and secondary meaning must be proven
before such a name will be protectable.16 Id. at 11:2; see
Commerce Nat’l. Ins. Servs., Inc. v. Commerce Ins. Agency,
Inc., 214 F.3d 432, 438 (3d Cir. 2000) (“If the mark has not
been federally registered … then validity depends on proof of
secondary meaning, unless the unregistered or contestable
mark is inherently distinctive.” (internal quotation marks
omitted)). The District Court concluded that PARKS was not
inherently distinctive and had not achieved secondary
meaning. We agree.
16
Wholly generic names cannot have trademark
significance, 2 McCarthy on Trademarks § 12:1, but
genericity is not at issue in this case.
19
1. Lack of Secondary Meaning
Trademarks based on the surname of a founder are not
inherently distinctive. Doeblers’ Pennsylvania Hybrids, Inc.
v. Doebler, 442 F.3d 812, 827 n.17 (3d Cir. 2006), as
amended (May 5, 2006). In a painful stretch, Parks argues
inherent distinctiveness should be a jury question because,
even though its mark is, in fact, the surname of the company’s
founder, the word “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,” (App. at 60) and Parks’s reputation is
closely linked to its founder.17 Based on that record, no
reasonable juror could conclude that the name PARKS was
anything other than a reference to the founder. It is obvious
that the mark is not inherently distinctive.
Parks was therefore required to demonstrate that the
mark had secondary meaning at the time that Tyson began to
use the name PARK’S FINEST. As noted earlier,
“[s]econdary meaning exists when the mark ‘is interpreted by
the consuming public to be not only an identification of the
product or services, but also a representation of the origin of
those products or services.’” Commerce Nat’l., 214 F.3d at
438 (quoting Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589
F.2d 1225, 1228 (3d Cir. 1978), superseded on other grounds
by statute, Fed. R. Civ. P. 52(a), as recognized in Shire US
Inc. v. Barr Labs., Inc., 329 F.3d 348, 352 n.10 (3d Cir.
17
Indeed, before its bankruptcy and acquisition, the
name of the Parks Sausage Company was H.G. Parks, Inc.
20
2003)). In assessing secondary meaning, we have relied on
the following factors, to the extent relevant:
(1) the extent of sales and advertising leading to
buyer association; (2) length of use; (3)
exclusivity of use; (4) the fact of copying; (5)
customer surveys; (6) customer testimony; (7)
the use of the mark in trade journals; (8) the size
of the company; (9) the number of sales; (10)
the number of customers; and, (11) actual
confusion.
Id. (citing Ford Motor Co., 930 F.2d at 292).
As did the District Court, we consider each of the
factors relevant to this case and conclude that no reasonable
juror could decide that PARKS enjoyed secondary meaning at
the time of the alleged infringement.18
i. Extent of Advertising
Secondary meaning is generally “established through
extensive advertising which creates in the minds of
consumers an association between the mark and the provider
of the [products or] services advertised under the mark.” Id.
Use of a mark “for a long period of time in a prevalent
advertising campaign” can “create a reasonable inference” of
18
There is no evidence in the record concerning
customer testimony or the use of the mark in trade journals,
so factors (6) and (7) of the Commerce National list are not
relevant.
21
secondary meaning. E.T. Browne Drug Co., 538 F.3d at 200.
Since approximately 2001, PARKS has not been advertised
directly to consumers aside from around $14,000 a year that
Dietz & Watson has spent on circular advertisements and in-
store product demonstrations. Super Bakery has primarily
engaged in direct marketing to “institutions and military
facilities.” Parks, 186 F. Supp. 3d at 422. Decades ago, in
the 1960s and ‘70s, PARKS had employed a ubiquitous and
long-running ad campaign to reach consumers, and while
there may still be some faint echoes of the campaign in the
minds of some people, there is no evidence of recent
“extensive advertising” such as would create the necessary
mental association between the mark and the product.
Commerce Nat’l., 214 F.3d at 438. This factor thus cuts
against a finding of secondary meaning.
ii. Length and Exclusivity of Use
The “length of use” factor favors Parks, as its mark has
been in continuous use for more than 50 years. Additionally,
Parks has used or licensed the mark exclusively throughout
the entirety of the company’s existence. And, of course, the
fact that PARKS was once on the Principal Register at the
USPTO indicates that PARKS had acquired secondary
meaning once upon a time. Cf. 2 McCarthy on Trademarks
§ 15:32 (describing how registration creates a presumption of
secondary meaning). But consumer perceptions have a half-
life, and “once a mark, always a mark” has never been a
principle of trademark law. Merely proving length and
exclusivity of use does not prove widespread familiarity. As
the District Court noted, “Parks has not cited to any evidence
to attempt to quantify how widespread the name was known
over those years before the present owners purchased the
22
company out of bankruptcy in the late 1990s[.]” Parks, 186
F. Supp. 3d at 426. So while the length and exclusivity of use
unquestionably favor Parks, those factors alone cannot carry
the day.
iii. Evidence of Copying
Parks contends that Tyson copied the PARKS mark
when it chose the name PARK’S FINEST. But Parks’s only
evidence of copying is a bare inference from the fact that
Parks and Tyson compete in a similar space and that Tyson,
upon a trademark search, found the lapsed PARKS mark. On
the other hand, Tyson submitted extensive focus group and
survey data that showed how the name PARK’S FINEST was
selected without any reference to PARKS. Tyson emphasized
that the name PARK’S FINEST was a finalist for the new
brand name even before the trademark search was conducted.
While on summary judgment the nonmoving party is entitled
to reasonable inferences, it would be unreasonable on this
record to conclude that Tyson copied PARKS. Even the most
generous weighing of this factor for Parks leaves it neutral.
iv. Customer Surveys
Parks conducted a survey that is used primarily to test
for consumer confusion, but it then sought to use that same
survey to also prove secondary meaning. The attempt to
make the survey do double duty was unwise.
There are two predominant formats of consumer
surveys used in trademark litigation to show a likelihood of
confusion. The first, the Ever-Ready survey, named after the
case of Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d
23
366, 385-88 (7th Cir. 1976), superseded on other grounds by
statute, Fed. R. Civ. P. 52(a), as recognized in Scandia Down
Corp. v. Euroquilt, Inc., 772 F.2d 1423, 1429 (7th Cir. 1985),
involves showing consumers only the potentially-infringing
product and asking open-ended questions to determine
whether they believe the product is associated with the senior
mark. See Jerre B. Swann, Likelihood of Confusion Studies
and the Straitened Scope of Squirt, 98 Trademark Rep. 739,
746 (2008) (describing the Ever-Ready format as the “gold
standard” for likelihood of confusion surveys). Even though
that survey design is most helpful for illustrating a likelihood
of confusion, it can also indicate secondary meaning by
showing a high degree of familiarity with the senior mark. Id.
at 745 (“The [Ever-Ready] format … addresses … brand
strength.” (emphasis added)).
An Ever-Ready survey is usually employed by owners
of commercially strong marks. Id. at 739. Holders of weaker
marks more frequently employ a Squirt survey, named after
the type used in SquirtCo v. Seven-Up Co., 628 F.2d 1086,
1089 n.4 (8th Cir. 1980). Parks’s expert, Mark Lang, chose
to use a Squirt survey because of what he described as “the
relatively weak commercial strength of the [PARKS]
brand[.]” (App. at 658-59.) He also said that a Squirt survey
was appropriate because PARKS and PARK’S FINEST
“have a high degree of proximity in the marketplace[.]”
(App. at 659.) In a Squirt survey, two products are placed
side by side, often with other products that serve as controls,
and participants are asked questions to determine if confusion
exists as to the source of the products.19 Swann, 98
19
Lang surveyed 893 individuals for Parks.
Participants were assigned randomly to one of four groups:
24
Trademark Rep. at 749-50. Courts have sometimes criticized
Squirt surveys for utilizing closed-ended questions that can
lead participants to the desired answer. See Scott Fetzer Co.
v. House of Vacuums Inc., 381 F.3d 477, 487-88 (5th Cir.
2004) (critiquing a Squirt survey for pushing “survey
participants to search for any connection, no matter how
attenuated ... instead of permitting participants to make their
own associations”); Riviana Foods Inc. v. Societe Des
Produits Nestle S.A., Civ. A. No. H-93-2176, 1994 WL
761242, at *4 (S.D. Tex. Dec. 20, 1994) (rejecting a Squirt
survey because it “used a leading question on the likelihood
of confusion issue”); see also Swann, 98 Trademark Rep. at
752-53 (compiling cases). Nevertheless, a well-designed
Squirt survey may show a likelihood of confusion. What it
two test groups and two control groups. The test groups were
shown an array of five hot dog or sausage products including
PARKS, PARK’S FINEST and three other brands. The
control groups were shown PARKS sausages and an
imaginary mark called BALL PARK OUR FINEST. All four
groups were asked an identical series of questions to gauge
product confusion. First, they were asked if “two or more” of
the products were “from the same company or are affiliated
or connected[.]” (App. at 664.) Then, those who said yes
were asked to identify which two brands were affiliated and
to explain why they felt the products were affiliated.
Of those in the test groups, 49.1% thought that two or
more of the products were affiliated, while only 19.3%
thought that in the control group. Based on the answers to the
follow-up questions, Lang concluded that around one in five
hot dog or sausage consumers were likely to confuse PARKS
and PARK’S FINEST.
25
does not do or even purport to do, however, is prove
secondary meaning.
As the District Court perceived, there was a
“fundamental[] flaw in the survey’s methodology,” if the
point was to show secondary meaning. Parks, 186 F. Supp.
3d at 418. Because the survey presented an image of both
PARKS and PARK’S FINEST, a consumer who had never
heard of PARKS could still conclude that the two products
were affiliated. Specifically, participants were shown two
products with the words “Parks” or “Park’s” in the title and
several other hot dog or sausage products with names bearing
no obvious linguistic connection to Parks, and then asked
whether any of the products were affiliated. Given the
products shown, PARKS and PARK’S FINEST were the
obvious choices. Cf. THOIP v. Walt Disney Co., 788 F.
Supp. 2d 168, 183 (S.D.N.Y. 2011) (rejecting a Squirt survey
in part because the allegedly infringing product “stood out
like a bearded man in a lineup with four clean-shaven men”
and therefore participants were pushed to reach a particular
outcome (internal quotation omitted)). Participants were
therefore primed to reach that conclusion, even if they were
not familiar with either PARKS or PARK’S FINEST as
trademarks.20 Cf. Nat’l Distillers Prods. Co., LLC v.
20
As the District Court noted, the survey might have
shed light on secondary meaning if participants had been
asked to identify the source of PARKS or PARK’S FINEST,
but no such follow-up questions were asked. Parks, 186 F.
Supp. 3d at 425; see also Ideal Toy Corp. v. Plawner Toy
Mfg. Corp., 685 F.2d 78, 82 (3d Cir. 1982) (relying on a
consumer survey showing participants an imitation product
and asking them to identify the manufacturer); E. I. DuPont
26
Refreshment Brands, Inc., 198 F. Supp. 2d 474, 484
(S.D.N.Y. 2002) (observing that a similar survey was flawed
because “every respondent was exposed to the [allegedly
infringed] product … thus acquainting them with a product
that they would almost certainly have been unfamiliar with
otherwise, due to [the product’s] very limited distribution
network and weak sales”).
As a result, while Lang’s survey may or may not have
been useful for illustrating a likelihood of confusion,21 it was
certainly not probative of whether PARKS had secondary
meaning. Rather, there were at least three equally plausible
conclusions that a participant could have reached when
responding that PARKS and PARK’S FINEST were
associated: 1) that PARK’S FINEST came from Parks (the
inference Parks obviously preferred); 2) that PARKS was
made by Tyson as an extension of the BALL PARK mark; or
3) that PARK’S FINEST and PARKS were both made by
some unknown third party. None of those inferences is more
likely than the other, so the survey tells us nothing about
whether the PARKS mark had achieved sufficient consumer
de Nemours & Co. v. Yoshida Int’l, Inc., 393 F. Supp. 502,
520 (E.D.N.Y. 1975) (involving a trademark dispute between
the makers of TEFLON products and a zipper named
EFLON, and highlighting a survey that established that
TEFLON was “fairly well known” among prospective
EFLON purchasers).
21
Tyson raised a variety of methodological concerns
with the survey that Parks employed. Given our conclusion
that the survey design is incapable of proving secondary
meaning, we need not discuss those other flaws.
27
recognition to qualify as having secondary meaning. Cf.
Itamar Simonson, The Effect of Survey Method on Likelihood
of Confusion Estimates: Conceptual Analysis and Empirical
Test, 83 Trademark Rep. 364, 387 (1993) (noting that the
“[Squirt] [f]ormat[] tend[s] to lead to relatively high
confusion estimates when the senior and junior marks appear
as logical extensions”).
Parks nevertheless argues that “proof of one –
likelihood of confusion – is proof of the other – secondary
meaning.” (Opening Br. at 35) (relying on Interpace Corp. v.
Lapp, Inc., 721 F.2d 460, 465 (3d Cir. 1983).) That is simply
wrong. It is true that evidence proving secondary meaning
and evidence proving likelihood of confusion may sometimes
overlap. But not always. See 2 McCarthy on Trademarks
§ 15:11 n.1 (“Not every response rate that shows likely
confusion establishes secondary meaning and not every
survey that fails to show likely confusion establishes an
absence of secondary meaning.” (quoting Vincent N.
Palladino, Secondary Meaning Surveys, in TRADEMARK AND
DECEPTIVE ADVERTISING SURVEYS: LAW, LAW SCIENCE,
AND DESIGN 98 (2012))). Two marks can be confusingly
similar even if neither has secondary meaning. See Scott
Paper, 589 F.2d at 1229 (noting that “[l]ikelihood of
confusion is an analytically distinct” concept from secondary
meaning). Consumers may find an association even if both
marks were previously unknown to them. Establishing that
two marks are similar does not necessarily lead to any valid
conclusion about whether either of the two has secondary
meaning. See Spraying Sys. Co. v. Delavan, Inc., 762 F.
Supp. 772, 779 (N.D. Ill. 1991) (“However proper the survey
question may have been to prove likelihood of confusion
between the marks, it was improper to prove secondary
28
meaning.”), aff’d, 975 F.2d 387 (7th Cir. 1992); Spraying Sys.
Co., v. Delavan, Inc., 975 F.2d 387, 394 (7th Cir. 1992)
(noting that a leading survey design “created a bias in favor of
identifying a single company” as the source of the products
and therefore the survey results could not prove secondary
meaning). The “customer survey” factor, Commerce Nat’l.,
214 F.3d at 438, thus favors neither Parks nor Tyson.
v. Size of the Company and Number
of Sales and Customers
The size of a company, its total sales, and the size of
its customer base can also be probative of secondary meaning
because the jury is entitled to draw the logical inference that
“[t]he larger a company and the greater its sales, the greater
the number of people who have been exposed to [the] symbol
used as a trademark, and the greater the number of people
who may associate [that] symbol with a company or source
with which they should be familiarized.” 2 McCarthy on
Trademarks § 15:49. But “[r]aw sales figures need to be put
into context to have any meaning.” Id. When put into
context, the sales figures for PARKS are not probative of
secondary meaning. Since 2011, sales of PARKS sausages
accounted for no more than 1.3% of the breakfast sausage
market in the northeast and 0.01% of the market in the mid-
south in any given year.22 Dinner sausage sales made up less
22
The District Court relied on Tyson’s data with
regard to the market share of PARKS products in various
regions of the country, because Parks did not provide a
detailed breakdown of sales. Tyson’s expert relied on data
provided by IRI, a data analytics company. In the IRI dataset,
the “northeast” was defined as including Pennsylvania, New
29
than 1% of the sales in the northeast and less than 0.5% of the
sales in the mid-south. Sales figures outside of those regions
were even less significant. None of the sales numbers are
large enough to indicate secondary meaning.
Sales in Pennsylvania and New Jersey were
considerably greater than sales in other states, so “[i]t is
possible that sales in … th[o]se states … could be large
enough, relative to the market in those states, to be probative
of secondary meaning in those markets.” Parks, 186 F. Supp.
3d at 424 n.12. Parks, however, made the expansive and
ultimately unfounded claim that its PARKS mark had
secondary meaning throughout the whole eastern United
States,23 and it failed to break down data on market share by
state. So, at most, Parks’s sales data might weakly support a
finding that the PARKS mark has secondary meaning in one
portion of the northeast, but it does not support the broader
claim that Parks made in its complaint.
Jersey, New York, Connecticut, Rhode Island, Massachusetts,
New Hampshire, Vermont, and Maine, and the “mid-south”
as Maryland, West Virginia, Virginia, Kentucky, Tennessee,
and North Carolina. On appeal, Parks does not question the
District Court’s reliance on the IRI data or the categorization
of various regions of the country, and so we likewise rely on
Tyson’s data.
23
The District Court noted that Parks failed to define
“[e]astern United States” but concluded, based on Parks’s
pleadings, that the term encompassed “all states east of the
Mississippi River.” Parks, 186 F. Supp. 3d at 421 n.8
(quoting Parks’s brief). Parks has not contested that
conclusion.
30
vi. Actual Confusion
The evidence that Parks put forth of actual confusion
was similarly unimpressive After extensive discovery, the
company could only produce two declarations from
employees of Dietz & Watson and Super Bakery. The first
declaration came from an employee at Dietz & Watson with
some responsibility for PARKS-branded products. He
recounted three instances of consumer confusion: one
consumer contacted Parks to complain about “[PARKS] from
BALL PARK,” and two consumers called Parks to complain
about the nitrate content of its sausages – presumably because
PARK’S FINEST prominently advertises that it is free of
nitrates. Parks, 2015 WL 4545408 at *6. The second
declaration came from a manager at Super Bakery who
recalled his own personal confusion when he first
encountered the PARK’S FINEST product. Id.
Such declarations from friendly sources are potentially
“self-serving and of little probative value.” 815 Tonawanda
St. Corp. v. Fay’s Drug Co., Inc., 842 F.2d 643, 648 (2d Cir.
1988). More importantly, though, PARK’S FINEST has sold
“many millions of units,” Parks, 186 F. Supp. 3d at 426
(internal quotation marks omitted), and one would expect to
see more than a handful of vague complaints of confusion. If
anything, the paucity of proof of actual confusion suggests
that the PARKS mark lacks secondary meaning. As we have
said before, “harmonious coexistence in the same
geographical area … cuts against [a] claim to secondary
meaning.” Commerce Nat’l., 214 F.3d at 440.
31
viii. Conclusion with Regard to
Secondary Meaning
At the end of the day, the fact that the PARKS mark
has existed for a long time and that it enjoyed secondary
meaning half a century ago cannot overcome the weight of
the factors against Parks. The record shows that there is
almost no direct-to-consumer advertising, that Parks had a
miniscule market share, and that there was practically no
record of actual confusion.24 To find secondary meaning,
24
Although the lack of secondary meaning would itself
be a sufficient basis for affirming the District Court’s grant of
summary judgment, Tyson’s alternative argument that there is
insufficient evidence of “market penetration” is persuasive.
(Ans. Br. at 41.) “[T]he trademark of a prior user should be
protected from infringement by a subsequent user of the same
mark only in areas where the prior user has established a
market for its goods[.]” Nat. Footwear Ltd. v. Hart,
Schaffner & Marx, 760 F.2d 1383, 1394 (3d Cir. 1985); see
also Charles Jacquin Et Cie, Inc. v. Destileria Serralles, Inc.,
921 F.2d 467, 473-74 (3d Cir. 1990) (applying Nat. Footwear
to the secondary meaning context). To determine market
penetration, we consider
(1) the volume of sales of the
trademarked product; (2) the growth trends
(both positive and negative) in the area; (3) the
number of persons actually purchasing the
product in relation to the potential number of
customers; and (4) the amount of product
advertising in the area.
32
jurors would have to make an impermissible “leap of faith[.]”
Parks, 186 F. Supp. 3d at 426 (quoting E.T. Browne Drug
Co., 538 F.3d at 199). Accordingly, the District Court
correctly concluded that no reasonable jury could find that the
PARKS mark had secondary meaning. 25
III. CONCLUSION
For the foregoing reasons, we will affirm the District
Court’s order granting summary judgment to Tyson on
Parks’s claims.
Nat. Footwear Ltd., 760 F.2d at 1398-99 (footnotes
omitted).
For many of the same reasons that we conclude that
the PARKS mark does not enjoy secondary meaning
throughout the eastern United States, we also conclude that it
lacked adequate market penetration. In particular, Parks
sought to enjoin Tyson from selling in at least five states
where there is no evidence of sales at all. And sales in many
states outside of the northeast are extremely limited if not “de
minimis,” id. at 1400.
25
Because we conclude that PARKS does not have
secondary meaning, we do not need to consider whether
Parks offered sufficient proof of a likelihood of confusion.
Likewise, we do not address Tyson’s affirmative defense of
abandonment through uncontrolled licensing.
33