Upmann Sanchez Turf and Landscape dba US Turf v US Turf, LLC, Case No. 2:21-CV-1749 JCM (DJA)
Defendant US Turf, LLC has convinced a Nevada federal court to cancel plaintiff’s registered US TURF trademark. The trademark infringement action arose because both plaintiff and defendant use the terms “US Turf” to advertise their artificial turf-laying businesses. However, plaintiff is primarily based in San Diego, California whereas defendant is based in Las Vegas, Nevada.
Plaintiff registered the word mark US TURF in 2021. Although registration of the mark was originally denied due to it being deemed primarily geographically descriptive, the examining attorney approved the mark after plaintiff represented that “US” was an abbreviation for “Upmann Sanchez.” Soon after, plaintiff filed a lawsuit claiming that defendant infringed upon its registered US TURF trademark.
Defendant counterclaimed for (1) declaratory relief for non-infringement based on innocent local use; (2) cancellation of plaintiff’s registered word mark based on priority of use; (3) declaratory relief for non-infringement based on merely descriptive word mark; and (4) cancellation of plaintiff’s registered word mark based on being merely descriptive. Defendant’s motion for summary judgment asked the court to enter judgment in its favor on its counterclaims.
Applied Marketing Science, Inc. (AMS) Survey Expert Brian Sowers conducted a survey on behalf of defendant US Turf, LLC. The survey tested whether plaintiff’s US TURF word mark had acquired secondary meaning for artificial turf sales and installation services. Additionally, the survey tested whether and to what extent relevant consumers who associated plaintiff’s US TURF word mark with a single source understood “US” to stand for “Upmann Sanchez.”
The survey showed that, after controlling for guessing and other forms of survey noise, the net secondary meaning level was 21.3%. Similarly, the net level of secondary meaning among a sub-quota of California consumers was 25.5%. The survey also showed that no consumers (0.0%) who associated the name US TURF with a single source understood “US” to stand for “Upmann Sanchez.”
In granting defendant’s motion for summary judgement, the court wrote that:
Defendant’s expert Sowers reports that none of the consumers surveyed understood “US Turf” to stand for “Upmann Sanchez” Turf. Of the relevant consumer group surveyed, 68.3% of the total group—and 76.8% of the California subgroup—believed that “US Turf” stood for “United States” Turf. This is overwhelming evidence that the term “US Turf” conveys to customers a primarily geographical connotation.
Additionally, the court wrote that:
Defendant meets its burden on summary judgment by providing survey evidence that “US Turf” has not acquired secondary meaning. Only a net 21.3% of total consumers surveyed by its expert, Sowers, associated “US Turf” with a single source (the “association rate”). Of the California consumer subgroup, only 25.5% associated “US Turf” with a single source. These results were obtained after accounting for an error rate via a control test and are clearly below the threshold for finding secondary meaning.
Since there was no longer any genuine dispute of fact regarding whether plaintiff’s word mark for the term US TURF was protectable, the court granted summary judgment in favor of defendant.
To learn more about AMS, Survey Expert Brian Sowers, or secondary meaning surveys, please contact us.