Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA868486
`
`Filing date:
`
`01/02/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`91225707
`
`Defendant
`Parks, LLC
`
`JOHN S CHILD JR
`PAUL & PAUL
`1717 ARCH ST STE 3740
`PHILADELPHIA, PA 19103-2840
`UNITED STATES
`Email: johnchild@paulandpaul.com, info@paulandpaul.com,
`j.c.mcconnon@paulandpaul.com, asluzas@paulandpaul.com
`
`Response to Board Order/Inquiry
`
`Jeffrey P. Lewis
`
`jlewis@eckertseamans.com, jtorres@eckertseamans.com
`
`/Jeffrey P. Lewis/
`
`01/02/2018
`
`91225707 Response to TTAB Order.pdf(743437 bytes )
`Order and Opinion re Summary Judgment.pdf(144737 bytes )
`PARKS TYSON MEMORANDUM OPINION DENYING DEFT MOTION FOR
`ATTORNEY FEES AND COSTS.PDF(94398 bytes )
`THIRD CIRCUIT OPINION.PDF(318928 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`SARA LEE FOODS, LLC,
`
`OPPOSER
`
`v.
`
`: Opposition No. 91225707
`
`PARKS, LLC,
`
`APPLICANT.
`
`RESPONSE BY APPLICANT, PARKS, LLC, TO TTAB ORDER
`
`Honorable Commissioner for Trademarks
`
`(ECF Filing)
`P. O. Box 1451
`
`Alexandria, VA 22313—1451
`
`Applicant, Parks, LLC (“Applicant”), hereby responds to the Order of the Board issued
`
`November 30, 2017 to show cause as to why the Board should not enter judgment against
`
`Applicant in this proceeding in light of the decision in Parks v. Tyson Foods, Inc., et al., 186
`
`F.Supp. 3d 405 (ED. Pa. 2016) (the “District Court Proceeding”), afl’d Parks v. Tyson Foods,
`
`Inc, et al., 863 F.3d 220 (3d Cir. 2017) wherein Applicant was the plaintiff.1 Applicant has
`
`attached a copy of the full District Court decision, the decision of the Third Circuit on appeal and
`
`the decision of the District Court denying Defendant’s Motion for Attomey’s Fees and Costs to
`
`this Response.
`
`Applicant respectfully submits that the Board should not enter judgment against
`
`Applicant. The court in the District Court Proceeding did not decide the issue of acquired
`
`distinctiveness within the geographic area of Southeastern Pennsylvania, Southern New Jersey,
`
`1 It is Applicant’s understanding that the mark in question is now owned by Tyson Foods, Inc.
`but to date applicant has not moved to amend to reflect this change in ownership.
`
`{M1574550.1}
`
`

`

`and Delaware (the “tri—state area”). Additionally, the issue of likelihood of confusion, also
`
`claimed as a basis for the opposition, was not decided in the District Court Proceeding. As there
`
`are different factual issues involved in this proceeding than before the District Court, these issues
`
`are not precluded from being decided in the instant Opposition. Additionally, Opposer does not
`
`have standing to oppose merely based on the threat of or filing of counter—oppositions or federal
`
`trademark actions.
`
`I. The factual issues in the District Court Proceeding and the instant Opposition are
`
`distinct and therefore Applicant is not precluded from having the issue of acquired
`
`distinctiveness decided in the instant proceeding.
`
`The general rule regarding issue preclusion is: “[w]hen an issue of fact or law is actually
`
`litigated and determined by a valid and final judgment, and the determination is essential to the
`
`judgment, the determination is conclusive in a subsequent action between the parties, whether on
`
`the same or a different claim.” Restatement (Second) of Judgments § 27, p. 250 (1980); See also
`
`B&B Hardware, Inc. v. Hargis Industries, Inc. 135 S.Ct. 1293 (2015) ( “B&B Hardware”).
`
`While the Court has ruled that an issue may be precluded from being litigated in District Court
`
`after being determined in a TTAB proceeding and vice versa (Cf B&B Hardware at 1310), there
`
`is “no claim or issue preclusion if the claim and issue in a TTAB opposition or cancellation
`
`proceeding is different in scope from that decided in a prior court infringement case.” McCarthy
`
`on Trademarks and Unfair Competition § 32:94 (5th Ed. 2017); See, Mayer/Berkshire Corp. v.
`
`Berkshire Fashions, Inc. 424 F.3d 1229 (Fed. Cir. 2005).
`
`Here, the claim and scope of the issues decided by the District Court are different than
`
`those before the TTAB in this opposition proceeding. The factual proofs necessary to sustain a
`
`claim under 15 U.S.C. § 1125 in the District Court Proceeding are distinct from the factual
`
`

`

`proofs necessary to demonstrate that Applicant has a sufficient right in any geographic area in
`
`the US to secure registration of Applicant’s mark.
`
`The inquiry in the District Court Proceeding for the false association claim under 15
`
`U.S.C. § 1125(a)(1)(A) was directed to the Eastern United States (east of the Mississippi River).
`
`The issue of fact before the court was whether in that region, Applicant had ‘market penetration
`
`significant enough to pose the real likelihood of confusion among the consumers in that area’
`
`Parks LLC v. Tyson Food, Inc. et al, 863 F.3d 220, 230 (3d Cir. 2017) (citing Charles Jacquin Et
`
`Cie, Inc. v. Destileria Serralles, Inc. 921 F.2d 467, 472 (3d Cir. 1990)). In the District Court
`
`Proceeding, for the market in issue as the Eastern United States, the District Court analyzed
`
`Applicant’s proprietary rights in the mark based on secondary meaning in that market for the
`
`false association claim. The inquiry there was whether “a substantial number of consumers
`
`would associate the Park’s Finest name with [the] Parks’ name” Parks LLC v. Tyson Foods, Inc.
`
`et al., 2017 US. Dist. LEXIS 131234, No. 5:15-cv-00946 at *14 (ED Pa. Aug. 17, 2017).
`
`This inquiry is distinct from and irrelevant to the instant Opposition. The scope of rights
`
`that Applicant relies on in this instant Opposition are the rights based on its prior, commercially
`
`significant, and continuous use of the PARKS trademark and trade name in commerce in
`
`connection with refrigerated and/or frozen food products, namely pork sausage, fresh sausage,
`
`smoked sausage, cooked sausage, scrapple and cooked chitterlings since 1954 in the tri-state
`
`area.
`
`Based on these rights in the PARKS mark, Applicant can demonstrate secondary
`
`meaning in the geographic area in which it has established reputation and good will, which is
`
`sufficient to obtain a federal registration and refute the claims of the Notice of Opposition, even
`
`though the rights were found not sufficient to obtain an injunction in a much larger geographic
`
`area. The rights to the PARKS mark based on continuous use in commerce in the tri-state area
`
`

`

`affords Applicant prior rights in this geographic area in which it has established reputation and
`
`good will. See, Weiner King, Inc. v. Wiener King Corp, 615 F.2d 512 (CCPA 1980); Natural
`
`Footwear Ltd. v. Hart, Shaflner & Marx, 860 F.2d 1383 (3d Cir. 1985) (“Natural Footwear”). A
`
`senior user may not be able to obtain relief against a junior user in an area where it has no
`
`established trade or good will, since the injunctive relief is only available in the marketplaces
`
`where the marks are competing for the same customers. Natural Footwear at 1394, citing
`
`Holiday Inns ofAmerica, Inc. v. B&B Corp., 409 F.2d 614, 617 (3d Cir. 1969). As was found in
`
`the District Court Proceeding, the senior user (Applicant) did not have sufficient trade or good
`
`will to demonstrate secondary meaning in the Eastern United States, and thus could not obtain
`
`injunctive relief in that geographic area, but there was no such determination with respect to the
`
`narrower geographic area.
`
`The District Court in its Opinion denying Defendants’ Motion for Attorney’s Fees and
`
`Costs noted that Applicant had in place a “potentially meritorious false association suit” but
`
`needed to demonstrate that the mark was “sufficiently active in the marketplace (and the minds
`
`of consumers)” to sustain the claim. Parks LLC v. Tyson Foods, Inc. et al., 2017 US. Dist.
`
`LEXIS 131234, No. 5:15-cv-00946 at *16 (ED Pa. Aug. 17, 2017). The District Court also noted
`
`in the District Court Proceeding that “it is possible that in sales in certain of these states, such as
`
`Pennsylvania and New Jersey, could be large enough, relative to the market in those states, to be
`
`probative of secondary meaning in those markets.” Parks v. Tyson, 186 F.Supp.3d at 424,
`
`Footnote 12. Proving secondary meaning in the marketplace pertinent to the District Court
`
`Proceeding, namely in the Eastern United States, is not the same inquiry or scope of inquiry as
`
`that of the present opposition, which is proving prior proprietary rights, commercially significant
`
`and continuous use of the PARKS mark and name in commerce in any geographic area of use,
`
`which in this instance is a smaller geographic footprint than was asserted in the District Court
`
`

`

`Proceeding. As such, Applicant is not precluded from proving its prior proprietary, commercially
`
`significant, and continuous rights sufficient to defend this Opposition and obtain federal
`
`registration for its mark.
`
`The Applicant, senior user, has established rights and can demonstrate such rights in this
`
`proceeding, in the tri-state area. As the geographic scope of rights necessary to defend against
`
`Opposer’s claims are distinct from those required to show infringement of Applicant’s marks and
`
`to get an injunction in an action brought under the Lanham Act, 15 U.S.C. § 1125, the factual
`
`patterns, proofs, and legal precedents are also distinct. Accordingly, there is no issue preclusion.
`
`II. The District Court Proceeding did not litigate and determine the question of likelihood
`
`of confusion; accordingly, there is no issue preclusion.
`
`Opposer claims that it will be harmed if Applicant is granted a registration for its PARKS
`
`mark because Applicant will have primafacie evidence of rights in the applied—for mark and
`
`Applicant will attempt to assert these rights against Opposer, claiming likelihood of confusion.
`
`See 1116—17 1 TTABVUE 3. Applicant, as described above, based on its rights in the PARKS
`
`mark in the limited geographic region of the tri—state area, can establish priority of use sufficient
`
`to obtain a federal registration, and to sustain the related oppositions (Opposition Nos. 91223061,
`
`91223062, 91216899 (the “Related Oppositions”) and Response by Opposer, Parks, LLC to
`
`TTAB Order in Opposition No. 91216899, found at 24 TTABVUE 1—8, which is attached here).
`
`The issue of likelihood of confusion was not decided and it is not precluded from being
`
`decided in the instant opposition and the related oppositions where Applicant is Opposer. The
`
`court in the District Court Proceeding did not decide the issue of likelihood of confusion, nor
`
`was it even litigated there nor in the subsequent Third Circuit appeal, Parks LLC v. Tyson Food,
`
`Inc. et al, 863 F.3d 220, 237 (3d Cir. 2017) (“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”).
`
`The District Court’s determination of the lack of secondary meaning for Applicant’s
`
`PARKS mark in the Eastern United States for the purposes of sustaining a false association claim
`
`involved claims and issues and a scope of analysis different from those involved in the present
`
`TTAB Opposition. The District Court did not decide the issue of whether prior proprietary rights
`
`in a more narrow geographical area are a sufficient defense to the § 2(d) opposition and are
`
`rights sufficient to prosecute the Related Oppositions; accordingly, the Board is not precluded
`
`from addressing that issue in the present opposition. See, Response by Opposer, Parks, LLC to
`
`TTAB Order in Opposition No. 91216899, 24 TTABVUE.
`
`Without showing a likelihood of confusion, Opposer does not have standing to oppose
`
`Applicant’s mark as plead, as there is no harm since Opposer will not be damaged by the
`
`registration of Applicant’s mark. 11 16-17 1 TTABVUE 3. Opposer would need to establish prior
`
`proprietary rights in the terms it relies upon to prove likelihood of confusion and to demonstrate
`
`its standing. Otto Roth & Co., Inc. v. Universal Foods Corp., 640 F.2d 1317, 1320 (CCPA 1981).
`
`Applicant has grounds to demonstrate prior rights in its mark, as described above, based
`
`on prior use of a trade name, and prior use of a trademark in the Philadelphia Metropolitan area
`
`(the “Hi-state” area composed of Southeastern Pennsylvania, Southern New Jersey, and
`
`Delaware), where it has established a reputation and good will.
`
`In addition to the trademark use
`
`described above, Applicant can demonstrate use of Parks, LLC as a trade name and business
`
`entity formed as a Maryland Limited Liability Company on June 21, 1996, reinstated on
`
`September 7, 2006, and currently in good standing. Prior to Applicant, the mark was used by
`
`HG. Parks, Inc., d/b/a Parks Sausage Company since 1954, who assigned its entire interest in the
`
`mark and goodwill associated therewith and sold the assets including the factory where the goods
`
`

`

`are produced to Applicant on September 19, 1996. Applicant also can demonstrate substantially
`
`exclusive and continuous use of the PARKS trademark since 1954 in the tri-state area
`
`(Southeastern Pennsylvania, Southern New Jersey, and Delaware) in connection with sausages
`
`and other meat products.
`
`Whether Applicant has proprietary rights/secondary meaning in the eastern United States
`
`market to sustain a claim for false association under 15 U.S.C. § 1125 is a distinct question from
`
`whether Applicant has prior proprietary rights in a trademark or trade name required to sustain a
`
`defense in the instant Opposition and to prosecute the Related Oppositions. The standards for
`
`each claim are different as are the grounds upon which each claim may be brought. The former
`
`has been litigated, but the latter has yet to be litigated.
`
`III. Opposer does not have standing to oppose Applicant’s mark based on the threat of
`
`concurrent or pending litigation.
`
`Opposer’s only claim to damage is that it will be harmed by Applicant’s assertion of
`
`prima facie rights in Applicant’s mark in the concurrent opposition proceedings and the District
`
`Court Proceeding if the registration at issue in the instant opposition is granted. This is not
`
`sufficient damage to sustain an opposition. Morton Foods, Inc. v. Frito Co., 314 F.2d 822,
`
`(CCPA 1963) (“[O]pposer is in effect here arguing that its right to use its mark in commerce
`
`would be impaired by giving applicant an alleged tactical advantage in pending litigation which
`
`seeks to determine whether Opposer has such a right to use
`
`[I]t cannot be said that such
`
`advantages as may be gained by applicant from the granting of a registration here will constitute
`
`‘damage’ to the Opposer in the sense of Sec. 13 of the Lanham Act ....”); Yard—Man, Inc. v. Getz
`
`Exterminators, Inc., 157 U.S.P.Q. 100, 1968 WL 8094 (TTAB 1968) (“It is well settled
`
`that
`
`the mere threat of a suit for infringement and/or the filing and litigation of an opposition
`
`

`

`proceeding does not, per se, constitute damage within the meaning of Sections 13 and 14 of the
`
`Statute”).
`
`For the reasons stated above, Applicant respectfully requests the Board not enter
`
`judgment against Applicant in the present Opposition.
`
`Dated: January 2, 2018
`
`Respectfully submitted,
`
`By: s/ Jeffrey P. Lewis, Esg.
`Jeffrey P. Lewis, Esq.
`Jenna P. Torres, Esq.
`ECKERT SEAMANS CHERIN & MELLOTT, LLC
`Two Liberty Place
`50 S. 16th Street, 22nd Floor
`Philadelphia, PA 19102
`(215) 851-8522
`jlewis@eckertseamans.com
`jtorres@eckertseamans.com
`
`ATTORNEYS FOR APPLICANT
`
`

`

`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the attached
`
`Applicant’s Response to TTAB Order was served on counsel for Applicant, John J. Dabney, on
`
`the date listed below Via electronic mail to j dabney@mwe.com, Inhallerman@mwe.com,
`
`dciplit@mwe.com.
`
`Dated:
`
`/[ Z [2 Y
`
`

`

`Case 5:15-cv-00946-JFL Document 182 Filed 05/10/16 Page 1 of 1
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF PENNSYLVANIA
`
`__________________________________________
`
`
`
`
`
`
`
`
`PARKS, LLC,
`
`
`
`
`:
`
`
`
`
`
`
`
`:
`
`
`
`Plaintiff,
`
`
`:
`
`
`v.
`
`
`
`
`:
`
`
`
`
`
`
`
`:
`TYSON FOODS, INC.; HILLSHIRE
`
`:
`BRANDS COMPANY,
`
`
`
`:
`
`
`
`
`
`
`
`:
`
`
`
`Defendants.
`
`
`:
`__________________________________________
`
`JUDGMENT ORDER
`
`No. 5:15-cv-00946
`
`
`
`
`
`
`
`
` AND NOW, this 10th day of May, 2016, for the reasons set forth in the accompanying
`
`Memorandum Opinion, IT IS ORDERED as follows:
`
`1.
`
`2.
`
`3.
`
`
`
`
`
`
`
`
`
`
`Defendants’ Motion for Summary Judgment, ECF No. 124, is GRANTED.
`
`JUDGMENT IS ENTERED in favor of each Defendant.
`
`The Clerk of Court is directed to close this case.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BY THE COURT:
`
`/s/ Joseph F. Leeson, Jr.__________
`JOSEPH F. LEESON, JR.
`United States District Judge
`
`1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 1 of 24
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF PENNSYLVANIA
`__________________________________________
`
`
`
`
`
`
`
`
`PARKS, LLC,
`
`
`
`
`:
`
`
`
`
`
`
`
`:
`Plaintiff,
`
`
`:
`
`
`
`
`:
`v.
`
`
`
`
`
`
`:
`
`
`
`TYSON FOODS, INC.;
`
`
`
`:
`HILLSHIRE BRANDS COMPANY,
`
`:
`
`
`
`
`
`
`
`:
`
`
`
`Defendants.
`
`
`:
`__________________________________________
`
`
`
`
`No. 5:15-cv-00946
`
`
`
`MEMORANDUM OPINION
`
`Defendants’ Motion for Summary Judgment, ECF No. 124 – Granted
`
`
`Joseph F. Leeson, Jr.
`United States District Judge
`
`I.
`
`Introduction
`
`May 10, 2016
`
`
`
`
`
`This case involves a trademark and false advertising dispute.
`
`The Plaintiff, Parks, LLC, claims to be the owner of the trademark “Parks” that is used to
`
`sell sausages and other food products. Defendants Tyson Foods, Inc. and Hillshire Brands
`
`Company are owners of the “Ball Park” trademark that is used to sell a popular brand of
`
`frankfurters.
`
`
`
`In 2014, Defendants launched a new line of “super-premium” frankfurters under the
`
`name “Park’s Finest.” Parks claims that by doing so, Defendants have infringed upon its “Parks”
`
`trademark and engaged in false advertising and other unlawful conduct.
`
`
`
`In February 2015, Parks filed a complaint charging Defendants with engaging in false
`
`advertising, trademark infringement, and trademark dilution in violation of the Lanham Act, 15
`
`U.S.C. § 1125, as well as violating Pennsylvania law prohibiting unfair trade practices,
`
`trademark dilution, and unfair competition. Parks moved for a preliminary injunction on the
`
`
`
`1
`
`

`

`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 2 of 24
`
`basis of its false advertising claim, seeking to have Defendants enjoined from using the name
`
`“Park’s Finest” on any of Defendants’ products. After a hearing, the Court denied the motion
`
`because Parks failed to demonstrate that it was likely to succeed on its false advertising claim.
`
`See Parks, LLC v. Tyson Foods, No. 5:15-cv-00946, 2015 WL 4545408 (E.D. Pa. July 28,
`
`2015). The parties then commenced discovery, and the Court was called upon to resolve a
`
`number of disputes, including a dispute over Defendants’ written discovery requests, see Parks,
`
`LLC v. Tyson Foods, 2015 WL 5042918 (E.D. Pa. Aug. 26, 2015), Parks’s written discovery
`
`requests, see Parks, LLC v. Tyson Foods, 2015 WL 9316060 (E.D. Pa. Dec. 23, 2015), and the
`
`scope of a deposition, see id.
`
`Discovery has concluded, and Defendants have moved for summary judgment. Parks has
`
`conceded that judgment is warranted in Defendants’ favor on its claims of trademark dilution and
`
`its claim under the Pennsylvania Unfair Trade Practices and Consumer Protection Law. See Pl.’s
`
`Mem. Opp’n 1, ECF No. 138. That leaves Parks’s claims of false advertising and trademark
`
`infringement in violation of the Lanham Act and unfair competition under Pennsylvania law. The
`
`Court has determined that no reasonable factfinder1 could find in Parks’s favor from the
`
`evidence the parties have presented. Therefore, Defendants’ Motion for Summary Judgment is
`
`granted.
`
`II.
`
`Legal standard – Motion for summary judgment
`
`
`
`Summary judgment is appropriate if the moving party “shows that 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 fact is material if the fact “might affect the outcome of the suit under the
`
`governing law,” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986), and a dispute is
`
`genuine if “the evidence is such that a reasonable jury could return a verdict for the nonmoving
`
`1
`The parties disagree over whether Parks would be entitled to a jury trial on these claims.
`
`
`
`2
`
`

`

`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 3 of 24
`
`party,” id. When the evidence favoring the nonmoving party is “merely colorable” or “not
`
`significantly probative, summary judgment may be granted.” Id. at 249-50 (citations omitted).
`
`The parties must support their respective contentions—that a fact cannot be or is genuinely
`
`disputed—by “citing to particular parts of materials in the record” or by “showing that the
`
`materials cited do not establish the absence or presence of a genuine dispute.” Fed. R. Civ. P.
`
`56(c)(1). “The court need consider only the cited materials, but it may consider other materials in
`
`the record.” Fed. R. Civ. P. 56(c)(3).
`
`III.
`
`A.
`
`
`
`
`Judgment is warranted in Defendants’ favor on Parks’ claim of false advertising.
`
`Parks’s allegations do not relate to the “nature, characteristics, qualities, or
`geographic origin” of Defendants’ Park’s Finest product.
`
`Parks’s false advertising claim was the basis for its request for preliminary injunctive
`
`relief. In the course of explaining why Parks was not likely to succeed on the merits of this
`
`claim, the Court laid out the scope of the Lanham Act’s prohibition on false advertising:
`
`[15 U.S.C. § 1125(a)(1)(B)] prohibits using “in commerce any word, term, name,
`symbol, or device, or any combination thereof, or any false designation of origin,
`false or misleading description of fact, or false or misleading representation of
`fact” either “on or in connection with any goods or services, or any container for
`goods,” which “in commercial advertising or promotion, 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); see Groupe
`SEB USA, Inc. v. Euro-Pro Operating LLC, 774 F.3d 192, 198 (3d Cir. 2014).
`
`
`Parks, 2015 WL 4545408, at *7. At the time, the Court suggested that Parks may not have a
`
`viable claim for false advertising because the allegedly false representation that Defendants are
`
`making—calling their product “Park’s Finest”—does not relate to the “nature, characteristics,
`
`qualities, or geographic origin” of the product. See id. at *7 n.15. The Court now holds that for
`
`this reason, Parks’s allegations do not state a claim for a violation of § 1125(a)(1)(B).
`
`
`
`3
`
`

`

`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 4 of 24
`
`
`
`Section 1125(a) prohibits “two major and distinct types” of conduct. 5 J. Thomas
`
`McCarthy, McCarthy on Trademarks and Unfair Competition § 27:9, Westlaw (database updated
`
`Mar. 2016). Section 1125(a)(1)(A) prohibits misrepresentations that are “likely to cause
`
`confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of [a]
`
`person with another person, or as to the origin, sponsorship, or approval of his or her goods,
`
`services, or commercial activities by another person.” 15 U.S.C. § 1125(a)(1)(A). Section
`
`1125(a)(1)(B), by contrast, prohibits advertising and promotional activities that “misrepresent[]
`
`the nature, characteristics, qualities, or geographic origin of [a person’s] goods, services, or
`
`commercial activities.” Id. § 1125(a)(1)(B). “Section 1125(a) thus creates two distinct bases of
`
`liability: false association, § 1125(a)(1)(A), and false advertising, § 1125(a)(1)(B).” Lexmark
`
`Int’l, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377, 1384 (2014) (citing Waits v.
`
`Frito–Lay, Inc., 978 F.2d 1093, 1108 (9th Cir. 1992)). The two provisions have “separate . . .
`
`substantive rules and applicability,” see McCarthy, supra, § 27:9, which means that to properly
`
`analyze a claim under this section of the Lanham Act, the claim must be correctly classified.
`
`Section 1125(a)(1)(A) acts as a “vehicle for assertion of a claim of infringement of an
`
`unregistered mark,” McCarthy, supra, § 27:14, and claims under this provision are generally
`
`analyzed under the “law governing infringement of registered trademarks.” Island Insteel Sys.,
`
`Inc. v. Waters, 296 F.3d 200, 206 n.1 (3d Cir. 2002). False advertising claims under
`
`§ 1125(a)(1)(B) are analyzed under a different framework that is designed to assess whether an
`
`advertisement about a product has a tendency to deceive prospective purchasers about the nature
`
`or characteristics of the product. See Groupe SEB, 774 F.3d at 198 (quoting Pernod Ricard USA,
`
`LLC v. Bacardi U.S.A., Inc., 653 F.3d 241, 248 (3d Cir. 2011)) (setting forth the test that applies
`
`to a claim of false advertising).
`
`
`
`4
`
`

`

`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 5 of 24
`
`According to Parks, Defendants’ use of the name “Park’s Finest” constitutes false
`
`advertising because “Park’s Finest unambiguously refer[s] to Parks,” see Pl.’s Mem. Opp’n 4,
`
`which “misrepresent[s] Tyson’s products as products of Parks,” see Am. Compl. ¶ 51, ECF
`
`No. 4. This is a claim of false association, not false advertising. Parks is not contending that
`
`Defendants have misrepresented the nature, characteristics, or qualities of their new line of
`
`frankfurters; its claim is that the name “Park’s Finest” is “likely to cause confusion, or to cause
`
`mistake, or to deceive as to the affiliation, connection, . . . association . . . [or] origin” of the
`
`product. “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.” Kehoe Component Sales Inc. v. Best Lighting Prods., Inc., 796 F.3d
`
`576, 590 (6th Cir. 2015) (quoting Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137, 1144
`
`(9th Cir. 2008)); see Forschner Grp., Inc. v. Arrow Trading Co. Inc., 30 F.3d 348, 357 (2d Cir.
`
`1994) (rejecting a claim that use of the phrase “Swiss Army knife” to describe “an inexpensive
`
`and shoddy multifunction pocketknife manufactured in China” constituted false advertising
`
`because the representation did not relate to either the geographic origin or the quality of the
`
`product). As the Court observed in connection with Parks’s request for preliminary injunctive
`
`relief, Defendants’ use of the name “Park’s Finest” could deceive consumers only if it led them
`
`to believe that the product was associated with Parks. That could happen only if the word
`
`“Parks” “identif[ies] and distinguish[es]” Parks’s products “from those manufactured and sold
`
`by others”—in other words, only if the word “Parks” constitutes a protectable trademark. See 15
`
`U.S.C. § 1127 (defining “trademark”). Because Parks’s claim rises or falls based on whether it is
`
`able to establish that “Parks” functions as a trademark in the minds of consumers, the proper
`
`analytical framework in which to assess this claim is the law of trademarks.
`
`
`
`5
`
`

`

`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 6 of 24
`
`A reasonable trier of fact could not conclude that Defendants’ use of the name
`“Park’s Finest” constitutes false advertising.
`
`B.
`
`
`
`Even if the false advertising framework applied, a reasonable trier of fact could not find
`
`in Parks’s favor. To establish liability, a plaintiff must show
`
`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.
`
`Groupe SEB, 774 F.3d at 198 (alteration in original) (quoting Pernod Ricard USA, LLC v.
`
`Bacardi U.S.A., Inc., 653 F.3d 241, 248 (3d Cir. 2011)). A false statement can take one of two
`
`forms: either the statement is literally false, which means that it unambiguously conveys a false
`
`message to the intended audience, or the statement is “literally true or ambiguous, but has the
`
`tendency to deceive consumers.” Id. (quoting Novartis Consumer Health, Inc. v. Johnson &
`
`Johnson-Merck Consumer Pharm. Co., 290 F.3d 578, 586 (3d Cir. 2002)).
`
`1.
`
`Defendants have not made a literally false statement.
`
`
`
`Determining whether a statement is literally false is essentially a matter of construction,
`
`which calls upon the court to examine whether the statement “on its face, conflicts with reality.”
`
`See Schering Corp. v. Pfizer Inc., 189 F.3d 218, 229 (2d Cir. 1999) (Sotomayor, J.); Novartis,
`
`290 F.3d at 587. “[A] court may determine, based on its own review of the advertisement,
`
`whether a literally true or literally false message is conveyed, using its ‘own common sense and
`
`logic in interpreting the message of the advertisement.’” McCarthy, supra, § 27:56 (quoting
`
`Hertz Corp. v. Avis, Inc., 867 F. Supp. 208, 212 (S.D.N.Y. 1994)). The important limiting
`
`principle is that “[o]nly an unambiguous message can be literally false,” Novartis, 290 F.3d at
`
`587, which reserves for this category only the “bald-faced, egregious, undeniable, over the top”
`
`
`
`6
`
`

`

`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 7 of 24
`
`falsities, Schering-Plough Healthcare Products, Inc. v. Schwarz Pharma, Inc., 586 F.3d 500, 513
`
`(7th Cir. 2009).
`
`
`
`Defendants’ use of the name “Park’s Finest” is not one of those statements. As the Court
`
`explained in denying Parks’s request for preliminary injunctive relief, the “Park’s Finest” mark
`
`that appears on Defendants’ packaging does not unambiguously refer to Parks, and no reasonable
`
`factfinder could conclude otherwise.
`
`The new frankfurters appear in a package that features the name “Park’s Finest”
`prominently displayed in a capitalized, sans-serif typeface, with the word “Park’s”
`located on a separate line directly above the word “Finest.” The two words are set
`in a justified alignment, and together they form a large, rectangular-shaped word
`mark. Superimposed on the center of, and partially obscuring, the “Park’s Finest”
`text is Defendants’ “Ball Park” trademark—the mark that appears on Defendants’
`Ball Park-branded frankfurters. The new Park’s Finest name and the Ball Park
`brand are also used together in the radio and television advertisements Defendants
`created, which describe the product as “Park’s Finest from Ball Park.”
`
`
`Parks, 2015 WL 4545408, at *2 (citations omitted). Even a consumer who is familiar with the
`
`“Parks” brand would not inevitably come away with the impression that the “Park’s” in “Park’s
`
`Finest” was a reference to Parks rather than to Defendants’ “Ball Park” brand, given that the
`
`“Ball Park” name is directly integrated into both the Park’s Finest wordmark and the script of the
`
`advertisements. Because the Park’s Finest name is, at the least, susceptible to “several plausible
`
`meanings,” see Groupe SEB (quoting Clorox Co. P.R. v. Proctor & Gamble Commercial Co.,
`
`228 F.3d 24, 35 (1st Cir. 2000)), the Court found that Defendants’ advertisements were not
`
`literally false. Parks, 2015 WL 4545408, at *10.
`
`
`
`Parks contends that this conclusion needs to be revisited because Defendants failed to
`
`produce any evidence to support the testimony given by one of its officers at the preliminary
`
`injunction hearing that the name “Park’s Finest” was intended to be seen as shorthand for their
`
`“Ball Park” brand, or any customer surveys to show that consumers understand that connection.
`
`
`
`7
`
`

`

`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 8 of 24
`
`In Parks’s view, the Court’s conclusion that Defendants had not made a literally false statement
`
`depended upon that testimony, and Defendants’ failure to produce other evidence to substantiate
`
`that testimony calls the Court’s conclusion into question.
`
`This argum