Jamie Kelly Jun. 1, 2016, 9:16am


PHILADELPHIA -- A recent false advertising and trademark infringement case in federal court offers an outline of what to do when a trademark is expired but a company still wants to bring an infringement case, says an expert on trademark law. 

In the case, Parks LLC v. Tyson Foods Inc., Parks, which makes sausages, sued Tyson, which owns the Ball Park trademark for its hot dogs, for using the brand “Park’s Finest” for a new line of hot dogs.

A judge in the U.S. District Court for the Eastern District of Pennsylvania ruled in Tyson’s favor earlier this month, and the flaws noted in his opinion outline how future litigants might be more successful, said J. Michael Keyes, an attorney with Dorsey and Whitney LLP.

“It's a pretty well-reasoned, well-thought-out decision that does provide, I think, a pretty good roadmap for what you need to consider when you don't have a registered trademark and you want to assert a claim,” Keyes recently told the Pennsylvania Record.

The suit that Parks brought had two claims: that Tyson had engaged in false advertising and that it was infringing upon Parks’ trademark. In order to prove false advertising, Parks would have needed to prove that Tyson was misrepresenting their own products or falsely offering information about Parks’ product, Keyes said.

“With the defendant's use of Park's Finest, the court essentially said, 'Look, they're not misrepresenting the nature, quality or characteristics of their goods by calling their frankfurters Park's Finest,'” he said. “That's just not a false advertising claim. It's just simply the brand name Tyson Foods used to advertise its products.”

Parks’ trademark arguments were complicated by the fact that the company had allowed its trademark to expire before bringing the suit.

“When you don't have a registration, you have some more burdens you have to bear,” Keyes said. “If you don't have [a registration], then it's your burden as the plaintiff to show that your mark is protectable. The court said that since Parks itself is not an inherently distinctive mark, they had to show secondary meaning -- that a substantial part of the relevant consuming public would understand their mark to be associated with them.”

The company also had to show consumers were likely to confuse Tyson’s products with their own. While Parks did offer a survey that claimed about a third of those asked were confused, the court rejected the survey’s findings for several reasons, including its scope and methodology.

“There is pretty robust case law as to what the proper survey methodology should be,” Keyes said. “It's best to stick pretty close to what's been accepted by the courts.”

If Parks had offered surveys that followed the guidelines from prior case law, he said, things might have gone differently.

“If you had a survey that could show we've got significant name recognition in the market, and had another

survey that could show likelihood of confusion, that consumers were actually confused when they saw Tyson Foods trademark, that may have gotten them quite a bit further,” Keyes said.

Case No. 5:15-cv-00946

More News