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`ESTTA Tracking number:
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`ESTTA814905
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`Filing date:
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`04/17/2017
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91225707
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Attachments
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`Plaintiff
`Sara Lee Foods, LLC
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`JOHN J DABNEY
`MCDERMOTT WILL & EMERY LLP
`500 NORTH CAPITOL STREET NW
`WASHINGTON, DC 20001
`UNITED STATES
`jdabney@mwe.com, mhallerman@mwe.com, dciplit@mwe.com, hpmorris-
`on@mwe.com
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`Response to Board Order/Inquiry
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`John J. Dabney
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`jdabney@mwe.com, mhallerman@mwe.com, dciplit@mwe.com, kbukr-
`insky@mwe.com
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`/s/ John J. Dabney
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`04/17/2017
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`Sara Lee v. Parks, Opp. No. 91225707 Response to Board Order.pdf(451762
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`SARA LEE FOODS, LLC,
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`Opposer,
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`PARKS, LLC,
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`Applicant.
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`Opposition No. 91225707
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`Serial No. 86600528
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`Mark: PARKS
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`OPPOSER’S RESPONSE TO BOARD’S MARCH 21 ORDER
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`Opposer Sara Lee Foods, LLC respectfully submits this response to the Board’s
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`March 21, 2017 Order (Dkt. No. 8), inquiring of the status of the civil action that occasioned
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`the suspension of this Opposition, Parks, LLC v. Tyson Foods, Inc. et al., Civil Action No.
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`5:15cv946 (E.D. Pa.). On May 10, 2016, the Court in that Civil Action entered judgment
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`against Applicant Parks, LLC because Applicant had failed to establish it owned a valid
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`trademark for PARKS due to its failure to demonstrate that its unregistered mark had
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`secondary meaning. (See Exhibit 1.) On June 10, 2016, Applicant filed a Notice of Appeal
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`to appeal that decision to the United States Court of Appeals for the Third Circuit (Exhibit
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`2). The appeal was argued on March 22, 2017, and remains pending.
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`In light of the pending appeal, Opposer submits that this proceeding should remain
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`suspended.
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`Respectfully submitted,
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`Dated: April 17, 2017
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`/s/John J. Dabney
`John J. Dabney
`Mary D. Hallerman
`McDERMOTT WILL & EMERY LLP
`500 North Capitol Street NW
`Washington, DC 20001
`Email: jdabney@mwe.com;
`mhallerman@mwe.com
`Telephone: 202-756-8000
`Fax: 202-756-8087
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`Counsel for Opposer Sara Lee Foods, LLC
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing Motion has been
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`served on Applicant’s counsel by mailing said copy on April 17, 2017, via First Class
`Mail, postage prepaid to:
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`John S. Child, Jr.
`Paul & Paul
`Three Logan Square
`1717 Arch Street
`Suite 3740
`Philadelphia, PA 19103
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`/s/ Katie Bukrinsky
`Katie Bukrinsky
`McDERMOTT WILL & EMERY LLP
`500 North Capitol Street NW
`Washington, DC 20001
`Email: kbukrinsky@mwe.com
`Telephone: 202-756-8194
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`EXHIBIT 1
`EXHIBIT 1
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`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 1 of 24
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF PENNSYLVANIA
`__________________________________________
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`PARKS, LLC,
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`Plaintiff,
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`v.
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`TYSON FOODS, INC.;
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`HILLSHIRE BRANDS COMPANY,
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`Defendants.
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`__________________________________________
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`No. 5:15-cv-00946
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`MEMORANDUM OPINION
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`Defendants’ Motion for Summary Judgment, ECF No. 124 – Granted
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`Joseph F. Leeson, Jr.
`United States District Judge
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`I.
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`Introduction
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`May 10, 2016
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`This case involves a trademark and false advertising dispute.
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`The Plaintiff, Parks, LLC, claims to be the owner of the trademark “Parks” that is used to
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`sell sausages and other food products. Defendants Tyson Foods, Inc. and Hillshire Brands
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`Company are owners of the “Ball Park” trademark that is used to sell a popular brand of
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`frankfurters.
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`In 2014, Defendants launched a new line of “super-premium” frankfurters under the
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`name “Park’s Finest.” Parks claims that by doing so, Defendants have infringed upon its “Parks”
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`trademark and engaged in false advertising and other unlawful conduct.
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`In February 2015, Parks filed a complaint charging Defendants with engaging in false
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`advertising, trademark infringement, and trademark dilution in violation of the Lanham Act, 15
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`U.S.C. § 1125, as well as violating Pennsylvania law prohibiting unfair trade practices,
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`trademark dilution, and unfair competition. Parks moved for a preliminary injunction on the
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`1
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`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 2 of 24
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`basis of its false advertising claim, seeking to have Defendants enjoined from using the name
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`“Park’s Finest” on any of Defendants’ products. After a hearing, the Court denied the motion
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`because Parks failed to demonstrate that it was likely to succeed on its false advertising claim.
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`See Parks, LLC v. Tyson Foods, No. 5:15-cv-00946, 2015 WL 4545408 (E.D. Pa. July 28,
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`2015). The parties then commenced discovery, and the Court was called upon to resolve a
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`number of disputes, including a dispute over Defendants’ written discovery requests, see Parks,
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`LLC v. Tyson Foods, 2015 WL 5042918 (E.D. Pa. Aug. 26, 2015), Parks’s written discovery
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`requests, see Parks, LLC v. Tyson Foods, 2015 WL 9316060 (E.D. Pa. Dec. 23, 2015), and the
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`scope of a deposition, see id.
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`Discovery has concluded, and Defendants have moved for summary judgment. Parks has
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`conceded that judgment is warranted in Defendants’ favor on its claims of trademark dilution and
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`its claim under the Pennsylvania Unfair Trade Practices and Consumer Protection Law. See Pl.’s
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`Mem. Opp’n 1, ECF No. 138. That leaves Parks’s claims of false advertising and trademark
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`infringement in violation of the Lanham Act and unfair competition under Pennsylvania law. The
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`Court has determined that no reasonable factfinder1 could find in Parks’s favor from the
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`evidence the parties have presented. Therefore, Defendants’ Motion for Summary Judgment is
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`granted.
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`II.
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`Legal standard – Motion for summary judgment
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`Summary judgment is appropriate if the moving party “shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R.
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`Civ. P. 56(a). A fact is material if the fact “might affect the outcome of the suit under the
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`governing law,” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986), and a dispute is
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`genuine if “the evidence is such that a reasonable jury could return a verdict for the nonmoving
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`1
`The parties disagree over whether Parks would be entitled to a jury trial on these claims.
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`2
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`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 3 of 24
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`party,” id. When the evidence favoring the nonmoving party is “merely colorable” or “not
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`significantly probative, summary judgment may be granted.” Id. at 249-50 (citations omitted).
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`The parties must support their respective contentions—that a fact cannot be or is genuinely
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`disputed—by “citing to particular parts of materials in the record” or by “showing that the
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`materials cited do not establish the absence or presence of a genuine dispute.” Fed. R. Civ. P.
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`56(c)(1). “The court need consider only the cited materials, but it may consider other materials in
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`the record.” Fed. R. Civ. P. 56(c)(3).
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`Judgment is warranted in Defendants’ favor on Parks’ claim of false advertising.
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`Parks’s allegations do not relate to the “nature, characteristics, qualities, or
`geographic origin” of Defendants’ Park’s Finest product.
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`Parks’s false advertising claim was the basis for its request for preliminary injunctive
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`III.
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`A.
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`relief. In the course of explaining why Parks was not likely to succeed on the merits of this
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`claim, the Court laid out the scope of the Lanham Act’s prohibition on false advertising:
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`[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).
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`Parks, 2015 WL 4545408, at *7. At the time, the Court suggested that Parks may not have a
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`viable claim for false advertising because the allegedly false representation that Defendants are
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`making—calling their product “Park’s Finest”—does not relate to the “nature, characteristics,
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`qualities, or geographic origin” of the product. See id. at *7 n.15. The Court now holds that for
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`this reason, Parks’s allegations do not state a claim for a violation of § 1125(a)(1)(B).
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`3
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`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 4 of 24
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`Section 1125(a) prohibits “two major and distinct types” of conduct. 5 J. Thomas
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`McCarthy, McCarthy on Trademarks and Unfair Competition § 27:9, Westlaw (database updated
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`Mar. 2016). Section 1125(a)(1)(A) prohibits misrepresentations that are “likely to cause
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`confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of [a]
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`person with another person, or as to the origin, sponsorship, or approval of his or her goods,
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`services, or commercial activities by another person.” 15 U.S.C. § 1125(a)(1)(A). Section
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`1125(a)(1)(B), by contrast, prohibits advertising and promotional activities that “misrepresent[]
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`the nature, characteristics, qualities, or geographic origin of [a person’s] goods, services, or
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`commercial activities.” Id. § 1125(a)(1)(B). “Section 1125(a) thus creates two distinct bases of
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`liability: false association, § 1125(a)(1)(A), and false advertising, § 1125(a)(1)(B).” Lexmark
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`Int’l, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377, 1384 (2014) (citing Waits v.
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`Frito–Lay, Inc., 978 F.2d 1093, 1108 (9th Cir. 1992)). The two provisions have “separate . . .
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`substantive rules and applicability,” see McCarthy, supra, § 27:9, which means that to properly
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`analyze a claim under this section of the Lanham Act, the claim must be correctly classified.
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`Section 1125(a)(1)(A) acts as a “vehicle for assertion of a claim of infringement of an
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`unregistered mark,” McCarthy, supra, § 27:14, and claims under this provision are generally
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`analyzed under the “law governing infringement of registered trademarks.” Island Insteel Sys.,
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`Inc. v. Waters, 296 F.3d 200, 206 n.1 (3d Cir. 2002). False advertising claims under
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`§ 1125(a)(1)(B) are analyzed under a different framework that is designed to assess whether an
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`advertisement about a product has a tendency to deceive prospective purchasers about the nature
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`or characteristics of the product. See Groupe SEB, 774 F.3d at 198 (quoting Pernod Ricard USA,
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`LLC v. Bacardi U.S.A., Inc., 653 F.3d 241, 248 (3d Cir. 2011)) (setting forth the test that applies
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`to a claim of false advertising).
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`4
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`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 5 of 24
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`According to Parks, Defendants’ use of the name “Park’s Finest” constitutes false
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`advertising because “Park’s Finest unambiguously refer[s] to Parks,” see Pl.’s Mem. Opp’n 4,
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`which “misrepresent[s] Tyson’s products as products of Parks,” see Am. Compl. ¶ 51, ECF
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`No. 4. This is a claim of false association, not false advertising. Parks is not contending that
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`Defendants have misrepresented the nature, characteristics, or qualities of their new line of
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`frankfurters; its claim is that the name “Park’s Finest” is “likely to cause confusion, or to cause
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`mistake, or to deceive as to the affiliation, connection, . . . association . . . [or] origin” of the
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`product. “Absent a false statement about geographic origin, a misrepresentation is actionable
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`under § 1125(a)(1)(B) only if it misrepresents the ‘characteristics of the good itself’—such as its
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`properties or capabilities.” Kehoe Component Sales Inc. v. Best Lighting Prods., Inc., 796 F.3d
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`576, 590 (6th Cir. 2015) (quoting Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137, 1144
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`(9th Cir. 2008)); see Forschner Grp., Inc. v. Arrow Trading Co. Inc., 30 F.3d 348, 357 (2d Cir.
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`1994) (rejecting a claim that use of the phrase “Swiss Army knife” to describe “an inexpensive
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`and shoddy multifunction pocketknife manufactured in China” constituted false advertising
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`because the representation did not relate to either the geographic origin or the quality of the
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`product). As the Court observed in connection with Parks’s request for preliminary injunctive
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`relief, Defendants’ use of the name “Park’s Finest” could deceive consumers only if it led them
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`to believe that the product was associated with Parks. That could happen only if the word
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`“Parks” “identif[ies] and distinguish[es]” Parks’s products “from those manufactured and sold
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`by others”—in other words, only if the word “Parks” constitutes a protectable trademark. See 15
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`U.S.C. § 1127 (defining “trademark”). Because Parks’s claim rises or falls based on whether it is
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`able to establish that “Parks” functions as a trademark in the minds of consumers, the proper
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`analytical framework in which to assess this claim is the law of trademarks.
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`5
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`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 6 of 24
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`A reasonable trier of fact could not conclude that Defendants’ use of the name
`“Park’s Finest” constitutes false advertising.
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`B.
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`Even if the false advertising framework applied, a reasonable trier of fact could not find
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`in Parks’s favor. To establish liability, a plaintiff must show
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`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.
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`Groupe SEB, 774 F.3d at 198 (alteration in original) (quoting Pernod Ricard USA, LLC v.
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`Bacardi U.S.A., Inc., 653 F.3d 241, 248 (3d Cir. 2011)). A false statement can take one of two
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`forms: either the statement is literally false, which means that it unambiguously conveys a false
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`message to the intended audience, or the statement is “literally true or ambiguous, but has the
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`tendency to deceive consumers.” Id. (quoting Novartis Consumer Health, Inc. v. Johnson &
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`Johnson-Merck Consumer Pharm. Co., 290 F.3d 578, 586 (3d Cir. 2002)).
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`1.
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`Defendants have not made a literally false statement.
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`Determining whether a statement is literally false is essentially a matter of construction,
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`which calls upon the court to examine whether the statement “on its face, conflicts with reality.”
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`See Schering Corp. v. Pfizer Inc., 189 F.3d 218, 229 (2d Cir. 1999) (Sotomayor, J.); Novartis,
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`290 F.3d at 587. “[A] court may determine, based on its own review of the advertisement,
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`whether a literally true or literally false message is conveyed, using its ‘own common sense and
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`logic in interpreting the message of the advertisement.’” McCarthy, supra, § 27:56 (quoting
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`Hertz Corp. v. Avis, Inc., 867 F. Supp. 208, 212 (S.D.N.Y. 1994)). The important limiting
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`principle is that “[o]nly an unambiguous message can be literally false,” Novartis, 290 F.3d at
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`587, which reserves for this category only the “bald-faced, egregious, undeniable, over the top”
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`6
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`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 7 of 24
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`falsities, Schering-Plough Healthcare Products, Inc. v. Schwarz Pharma, Inc., 586 F.3d 500, 513
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`(7th Cir. 2009).
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`Defendants’ use of the name “Park’s Finest” is not one of those statements. As the Court
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`explained in denying Parks’s request for preliminary injunctive relief, the “Park’s Finest” mark
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`that appears on Defendants’ packaging does not unambiguously refer to Parks, and no reasonable
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`factfinder could conclude otherwise.
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`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.”
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`Parks, 2015 WL 4545408, at *2 (citations omitted). Even a consumer who is familiar with the
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`“Parks” brand would not inevitably come away with the impression that the “Park’s” in “Park’s
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`Finest” was a reference to Parks rather than to Defendants’ “Ball Park” brand, given that the
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`“Ball Park” name is directly integrated into both the Park’s Finest wordmark and the script of the
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`advertisements. Because the Park’s Finest name is, at the least, susceptible to “several plausible
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`meanings,” see Groupe SEB (quoting Clorox Co. P.R. v. Proctor & Gamble Commercial Co.,
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`228 F.3d 24, 35 (1st Cir. 2000)), the Court found that Defendants’ advertisements were not
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`literally false. Parks, 2015 WL 4545408, at *10.
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`Parks contends that this conclusion needs to be revisited because Defendants failed to
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`produce any evidence to support the testimony given by one of its officers at the preliminary
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`injunction hearing that the name “Park’s Finest” was intended to be seen as shorthand for their
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`“Ball Park” brand, or any customer surveys to show that consumers understand that connection.
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`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 8 of 24
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`In Parks’s view, the Court’s conclusion that Defendants had not made a literally false statement
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`depended upon that testimony, and Defendants’ failure to produce other evidence to substantiate
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`that testimony calls the Court’s conclusion into question.
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`This argument misapprehends the nature of the inquiry into whether a statement is
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`literally false. A statement is literally false only if the statement, on its face, unambiguously
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`conveys a false message. The Court’s conclusion that the use of the name “Park’s Finest” was
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`not literally false was based simply on the Court’s examination of that message in the context it
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`was presented. See Parks, 2015 WL 4545408, at *9 (“On the product’s packaging, Hillshire
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`integrated its Ball Park trademark into the Park’s Finest word mark, and in the television
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`commercials, Hillshire chose to verbally juxtapose the two names by using the phrase, ‘Park’s
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`Finest from Ball Park.’ . . . In that context, the name ‘Park’s Finest’ and the phrase ‘Park’s Finest
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`from Ball Park’ plausibly convey to consumers that the Park’s Finest frankfurters ‘are the
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`highest-end product line under the Ball Park brand.’”). “A determination of literal falsity rests on
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`an analysis of the message in context,” Groupe SEB, 228 F.3d at 198 (quoting Johnson &
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`Johnson-Merck Consumer Pharm. Co. v. Rhone-Poulenc Rorer Pharm., Inc., 19 F.3d 125, 129
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`(3d Cir. 1994)), not on the message the speaker intended to convey or on survey evidence of
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`what consumers may believe the message to mean.2 That “Park’s Finest” can be understood as a
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`2
`The same is true with regard to Parks’s contention that evidence produced during discovery revealed that
`the Park’s Finest product was born out of Defendants’ “intention to produce a product which would be seen as a
`sausage but would be called a hot dog.” Pl.’s Mem. Opp’n 7. This contention relates to Parks’s argument that
`consumers would not understand “Park’s Finest” to be a reference to the Ball Park brand because the “Park’s Finest”
`product is actually a sausage, not a frankfurter, and the Ball Park brand is associated with frankfurters, not sausages.
`The Court examined this contention at length in connection with Parks’s request for preliminary injunctive relief,
`and pointed out that “[e]ven if a consumer mistakenly believed that the Park’s Finest product was a sausage”—or
`even if the product was actually a sausage—“a consumer could still understand that the ‘Park’s Finest’ name, in the
`context Hillshire has created, was intended to be a reference to Defendants’ Ball Park brand.” See Parks, 2015 WL
`4545408, at *9 & n.8. A consumer who encounters the Park’s Finest product would not be privy to how Defendants
`intended for the product to be seen; the consumer would simply be presented with a package that contains the
`“Park’s Finest” name, the “Ball Park” logo superimposed on it, and the statement that the package contains
`“‘Uncured Beef Frankfurters’ in a font size that is significantly larger than much of the other text that appears on the
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`8
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`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 9 of 24
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`reference to the “Ball Park” brand is a matter of common sense and linguistics, see Parks, 2015
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`WL 4545408, at *10 n.9 (observing that the word “park” is a commonly understood abbreviation
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`for a ballpark), not whether there is a sufficient quantum of evidence documenting the fact that
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`Defendants intended for consumers to understand that reference.3
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`Defendants’ use of “Park’s Finest” is not likely to deceive a substantial portion of
`the intended audience.
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`If a statement is not literally false, it may nonetheless constitute false advertising if the
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`2.
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`statement can be shown to have a tendency to deceive a substantial portion of the intended
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`audience. See Pernod Ricard, 653 F.3d at 248; Novartis, 290 F.3d at 591, 594. Whether a
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`statement has a tendency to deceive “depends upon the message that is conveyed to consumers,”
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`which means “the success of the claim usually turns on the persuasiveness of a consumer
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`survey.” Rhone-Poulenc Rorer, 19 F.3d at 129-30. At the preliminary injunction hearing,
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`Defendants were the only ones to present any survey evidence. Their survey found that only one
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`person from a field of two hundred mistakenly believed that Defendants’ Park’s Finest product
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`originated with Parks—a rate of confusion of less than one percent. See Parks, 2015 WL
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`4545408, at *13-15.
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`In their opposition to the present motion for summary judgment, Parks has produced a
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`survey, which it relies upon to support both its false advertising claim and its trademark
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`infringement claim. The trouble with asking this survey to pull double-duty is that, as Defendants
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`package.” Id. at *15 n.24. No reasonable factfinder could conclude that the “Park’s Finest” name, in that context,
`could not be understood as a reference to the “Ball Park” brand.
`3
`Regardless, Defendants have produced documentary evidence that the “Park’s Finest” name was chosen
`precisely because it functioned as a reference to their Ball Park brand. Defendants produced a report from a
`marketing firm that conducted a series of focus groups early in the development of the Park’s Finest product.
`Among the names that the firm tested, “Park’s Finest” was one of two names that “merit[ed] consideration” because
`“[t]he word ‘Park’ evoked feelings of the baseball park experience that is strongly associated with hot dogs,” and the
`name “linked strongly to the Ball Park brand name.” Smith Decl. Ex. 1, at 9, ECF No. 127-1. Another study
`conducted approximately two months later also found “Park’s Finest” to be one of the top two performing names
`because it “show[ed] unique strength on Fit with [the] Ball Park brand.” Smith Decl. Ex. 2, at 6, ECF No. 127-2.
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`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 10 of 24
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`point out, the survey was designed to assess a claim of trademark infringement, not false
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`advertising. The Court of Appeals for the Third Circuit has suggested that, in the false
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`advertising context, “a well-designed consumer survey first asks ‘communication’ questions to
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`see what messages the viewer got and to ‘filter’ or separate those viewers who received certain
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`messages from those who did not,” and then “asks those who received a particular message . . .
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`‘comprehension’ questions to determine what the viewers thought the message meant.” See
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`Rhone-Poulenc Rorer, 19 F.3d at 134. This survey, however, presented each participant with an
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`array of five product images, including (in the test group) pictures of a Parks breakfast sausage
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`package, a Park’s Finest package, and three other unrelated sausage and hot dog products, before
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`asking whether the participant believed that two or more of those products were “from the same
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`company or are affiliated or connected.” See Lang Decl. Resp. Swann Critique Ex. 2, at 43-47,
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`ECF No. 138 (containing a copy of the survey form); id. at 49-53 (reproducing the product array
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`that was presented to the survey participants). If the participant answered in the affirmative, the
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`survey asked the participant to identify those products and explain why he or she believed that
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`they were affiliated or connected. Id. at 43-47.
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`What the survey did not do is ask the participants what message they received after
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`examining the Park’s Finest product or assess what they thought the message meant. A review of
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`the responses provided by those survey participants who believed that the Parks product depicted
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`in the image was affiliated with or connected to the Park’s Finest product depicted in the image
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`reveals that nearly seventy percent of them believed that they were related because they both had
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`the word “Park” in their name, while another twenty percent pointed to the fact that they both
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`had a same or similar name. Id. at 27. That sheds no light on what message a consumer receives
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`when they encounter the Park’s Finest packaging or, more importantly, whether the consumer
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`Case 5:15-cv-00946-JFL Document 181 Filed 05/10/16 Page 11 of 24
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`would receive the false message that the product originated with, or was affiliated with, Parks. A
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`survey participant who did not receive any message of origin from the image of the Park’s Finest
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`product may nonetheless have responded that the product was related to the image of the Parks
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`product simply because the participant noticed that that the word “Park” appeared in both
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`images. A properly designed false advertising survey would have “filtered” out any participant
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`who did not receive a message from the Park’s Finest packaging that had to do with the
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`product’s origin. See Novartis, 290 F.3d at 591 (quoting Johnson & Johnson-Merck Consumer
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`Pharm. Co. v. Smithkline Beecham Corp., 960 F.2d 294, 300 (2d Cir. 1992)). Inversely, a survey
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`participant who correctly understood from the packaging that the Park’s Finest product was
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`affiliated with Defendants’ Ball Park brand may nonetheless have answered that the Parks
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`product was connected to the Park’s Finest product, again, simply because the participant noted
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`that the two products had the word “Park” in common. But without assessing what message that
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`participant received from the Park’s Finest packaging, whether the packaging actually
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`communicated a false message cannot be ascertained. See id. (recognizing that the evidentiary
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`value of a false advertising survey depends upon whether the “questions are directed to the real
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`issues”). Instead of assessing the message that the Park’s Finest packaging communicates, this
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`survey assessed whether consumers who encounter the two products simultaneously would be
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`confused about their relationship to each other. While that may be an appropriate method to
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`assess the likelihood of confusion in connection with a trademark infringement claim, it is not
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`the appropriate methodology to assess the veracity of a message that an advertisement conveys to
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`its target audience.
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`Another, and perhaps more fundamental, flaw in the survey’s methodology is that it
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`effectively assumes that the “Parks” name possesses secondary meaning among the audience for
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`Defendants’ Park’s Finest product.4 As the Court has explained, the “Park’s Finest” name is
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`capable of conveying a false message only if a consumer who encounters the Park’s Finest
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`packaging would be deceived into believing that the product was affiliated with Parks. See Parks,
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`2015 WL 4545408, at *12-13. A consumer who is not familiar with the “Parks” name could not
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`be deceived by the “Park’s Finest” name, even if that consumer failed to comprehend that the
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`product is part of the Ball Park family. See id. at *12 (“The mere fact that a consumer may fail to
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`understand the association between the Park’s Finest name and the Ball Park brand does not
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`mean that Defendants’ statements are false or misleading. For a consumer who receives from
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`Defendants’ packaging or advertisements only the message that the product is called “Park’s
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`Finest”—neither believing the product to relate to [Parks] nor understanding Defendants’ play on
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`the “Ball Park” name—the name would contain little to no meaning at all, other than the
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`meaning the name derives from its association with the product.” (footnote omitted)). By
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`presenting each survey participant with an image of both the Park’s Finest product and the Parks
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`product, a participant could opine that he or she believed that the products were affiliated or
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`connected even if that participant had never before heard of the “Parks” name. Outside of the
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`survey environment, there would be no risk that this person would receive a false message from
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`the Park’s Finest packaging. That Parks’s false advertising claim turns on whether the “Parks”
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`name has secondary meaning in the marketplace reinforces the conclusion that this claim is
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`properly characterized as one of trademark infringement, not false advertising.
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`Finally, the survey was not directed at the appropriate universe of consumers. To
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`participate in the survey, a participant was required to live in one of approximately two hundred
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`ZIP codes in the country that, according to Parks, correspond to the locations of stores that sell
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`4
`As will be seen, this observation also explains why this survey does not offer evidentiary support for
`Parks’s contention that the “Parks” name had secondary meaning when Defendants launched their Park’s Finest
`product.
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`“Parks”-branded products. See Lang Decl. Resp. Swann Critique Ex. 2, at 8-9. Limiting a survey
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`universe to a particular geographic area may be appropriate in a dispute over trademark rights in
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`a limited territorial market, but to prevail on a claim of false advertising, “the plaintiff ‘must
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`persuade the court that the persons “to whom the advertisement is addressed” would find that the
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`message received left a false impression about the product.’” U.S. Healthcare, Inc. v. Blue Cross
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`of Greater Phila., 898 F.2d 914, 922 (3d Cir. 1990) (quoting Toro Co. v. Textron, Inc., 499
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`F.Supp. 241, 251 (D. Del. 1980)). Limiting the survey universe to areas where “Parks”-branded
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`products are allegedly sold was, in effect, an attempt to survey consumers of Parks’s products,
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`which may not be representative of whether a substantial portion of the intended audience for
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`Defendants’ Park’s Finest product would be deceived.
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`Because these flaws render Parks’s survey unsuitable for supporting a claim of false