Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
By Peter Leung
May 11 — Tyson Foods Inc. has won a summary judgment motion ending a trademark infringement suit brought against its “Park's Finest” frankfurters.
The U.S. District Court for the Eastern District of Pennsylvania granted the motion on May 10, finding that plaintiff Parks LLC's unregistered “Parks” trademark did not deserve protection because it lacked the necessary secondary meaning.(Parks LLC v. Tyson Foods Inc., 2016 BL 148589 (E.D. Pa. 2016)
The court sided with Tyson, even though Parks presented evidence that there was a relatively high likelihood of confusion.
The plaintiff and its predecessors had been selling sausages under the Parks name since 1950. Tyson, who owns the “Ball Park Franks” hot dog brand, in 2014 started selling a premium frankfurter product using the “Park's Finest” mark. Parks LLC sued Tyson, alleging trademark infringement, false advertising and several other claims.
After discovery concluded, Tyson moved for summary judgment on the trademark infringement claim. It argued the “Parks” mark was not protectable because it was not distinctive and did not have secondary meaning, even if all factual disputes were reasonably construed in the other side's favor.
The court granted Tyson's motion. It found that the mark is not distinctive because it was commonly recognized as a surname and did not have any other meaning.
If a mark is not distinctive, it is protectable only if it has secondary meaning in the marketplace. The court found that as a matter of law, the plaintiff's “Parks” mark had no secondary meaning in the marketplace.
In doing so, the court rejected several pieces of evidence Parks LLC used to dispute that finding.
First, the court found that the “Parks” name was only minimally advertised, which does not support a finding of secondary meaning. It found that Park LLC, through its licensees, only spent about $14,000 a year on advertising and product demonstrations. The court also found that evidence of personal sales calls and participation in “dozens of food shows” around the country were insufficient, because Parks LLC did not state to which extent these efforts were in the Eastern U.S., the only region where it claimed the mark had secondary meaning.
The court also ruled that Parks failed to present sufficient evidence for its claim that the company had substantial sales in the Eastern U.S. Though Parks claimed that it had $3.1 million of sales per year through one licensee, it did not specify how much of those sales took place in the Eastern U.S. Furthermore, there was evidence that the plaintiff's sales in the region accounted for less than one percent of the market.
Proving substantial sales would support a finding that the mark had secondary meaning because consumers were more likely to have encountered it.
Even a consumer survey showing that there was a 32.7 percent confusion rate between the Parks LLC and Tyson products could not defeat the summary judgment motion. While a high likelihood of confusion can support a finding of secondary meaning, it does not always lead to such a finding.
The structure of the plaintiff's survey was the problem, the court said. In this survey, consumers were presented with pictures of the plaintiff and defendant's products and asked if they believed the two products were connected. Even though many believed they were, the court explained that this does not help establish secondary meaning, because a respondent could believe the two products are related, even if they've never heard of the “Parks” brand before.
By contrast, the court pointed to another case where a survey helped to show secondary meaning. In Ideal Toy Corp. v. Plawner Toy Manufacturing Corp., 685 F.2d 78 (3d Cir. 1982), the survey showed only the “knock-off” product, and a high percentage of consumers identified it as being made by the plaintiff, the company behind the Rubik's Cube.
In addition to the infringement claim, the court granted summary judgment in favor of Tyson on the plaintiff's false advertising claim, bringing an end to the case.
Judge Joseph F. Leeson, Jr. decided the case. Paul & Paul and Fox Rothschild LLP represented Parks. McDermott Will & Emery LLP and Myers Brier and Kelly LLP represented Tyson.
To contact the reporter on this story: Peter Leung in Washington at email@example.com
To contact the editor responsible for this story: Mike Wilczek in Washington at firstname.lastname@example.org
Text is available at: http://src.bna.com/eUL.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)