In July 2017, the Third Circuit ruled against Appellant Parks, LLC (“Parks”) in its false association trademark claim against Tyson Foods, Inc. and Hillshire Brands Company (collectively “Tyson”). Parks, LLC v. Tyson Foods, Inc., 863 F.3d 220 (3d Cir. 2017). Parks manufactured sausage under the brand name “Parks,” taken from the founder’s surname, from the 1950s until 2000 when it entered into a licensing agreement with Dietz and Watson, a Philadelphia based producer of delicatessen meats. Dietz and Watson, as well as Super Bakery, Inc., has continued to make and sell Parks branded products since partnering in 2000. In 2014, Tyson introduced a line of frankfurters under their trademarked “Ball Park” line called “Park’s Finest.” In 2015, Parks filed suit against Tyson for false association, among other claims, in the District Court. The trial court granted Tyson’s motion for summary judgment, and the Third Circuit affirmed.
To make a successful false association 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.” A mark can be valid and legally protectable if it is either inherently distinctive or achieves secondary meaning. Since trademarks based on a surname are not inherently distinctive, Parks argued that “Parks” has a secondary meaning which occurs 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.” In order to evaluate if “Parks” has a second meaning, the Court examined factors including the extent of advertising, length and exclusivity of use, evidence of copying, customer surveys, size of the company and number of sales and customers, and actual confusion.
While Parks could show that it had a long history and exclusivity of use of “Parks,” considering its nearly 60-year history of using the mark, it was unable to prove the other factors. First, Parks could not show that there was recent evidence of extensive advertising sufficient to create a mental association between the mark and the product because their product was merely advertised locally. Second, Parks could not prove that Tyson purposefully copied the “Parks” brand. Third, Parks was unable to show that there was brand confusion using a Squirt survey, in which participants are asked questions about the products in the claim alongside control products to see if there is confusion. Here, the survey did show consumer confusion; however, the Court rejected the results as the participants were primed to find these products to be similar amongst the varied control products. Finally, Parks’ minimal sales compared to Tyson’s large presence in the national market lends to the conclusion that “Parks” did not have a second meaning because people more likely associate the mark with the larger Tyson and historically have not actually confused the two brands as evidenced through extensive discovery.
Even though the Court recognized Parks’ long history and exclusivity of the “Parks” mark, it found that Parks’ false association claim could not continue in the face of its lack of advertising, its “miniscule market share,” and its lack of brand confusion.