Case: Upmann Sanchez Turf and Landscape dba US Turf v US Turf, LLC, Case No. 2:21-CV-1749 JCM (DJA)
Defendant US Turf, LLC successfully convinced a Nevada federal court to cancel Plaintiff’s registered US TURF trademark. Both parties operate artificial turf-laying businesses using the terms “US Turf” though Plaintiff is based in San Diego, CA, and Defendant in Las Vegas, NV.
Plaintiff registered the US TURF word mark after overcoming an initial rejection for being deemed primarily geographically descriptive, arguing that “US” was an abbreviation for “Upmann Sanchez.” Shortly after, Plaintiff sued for trademark infringement, claiming that Defendant infringed upon its registered US TURF trademark.
Defendant counterclaimed for declaratory relief and cancellation of Plaintiff’s registered word mark. Defendant’s motion for summary judgment asked the court to enter judgment in its favor on its counterclaims.
Applied Marketing Science, Inc. (AMS) Principal and Testifying Survey Expert Brian M. Sowers conducted a survey on behalf of Defendant to test whether Plaintiff’s US TURF word mark had acquired secondary meaning. After controlling for guessing and other forms of survey noise, net secondary meaning level was 21.3% overall, and 25.5% among California consumers, with no consumers (0.0%) understanding “US” to stand for “Upmann Sanchez.”
In granting Defendant’s motion for summary judgement, the court held that the Sowers Survey provided overwhelming evidence that “US Turf” lacked secondary meaning and conveys to customers a primarily geographical connotation.
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, and ordered that the registration for Plaintiff’s mark be cancelled.
US Turf, LLC was represented by Gile Law Group.