UGG brand boots are a popular fixture on many holiday wish lists, but did you know that the UGG trademark has been the center of a dispute for the past decade? The comfortable sheepskin boots had a long history prior to their success in the U.S. Australian companies have allegedly been selling "Ug," "Ugh," or "Ugg" boots since at least the early 1970's, and have been using those terms interchangeably for flat, pull-on sheepskin boots. The boots were initially popular in Australia as post-surfing footwear—the sheepskin would help dry surfers’ feet, and warm them up after a day spent in cold water.
By most accounts, Ugg boots made their way to the United States by way of Brian Smith, an Australian entrepreneur who came to the United States to distribute the boots on behalf of Country Leather, an Australian manufacturer. In 1995, he purchased the Australian registrations for the UGH and UGG AUSTRALIA marks from Australian surfer Shane Steadman; one year later, he sold the trademarks to Deckers Outdoor Corporation. Deckers then grew the UGG brand into the billion-dollar industry is it today.
In 1995, ruling on a request to cancel the Australian registration for the mark UGH-BOOTS, IP Australia ruled that the terms UGH BOOT(S), UG BOOT(S), and UGG BOOT(S) were generic in Australia, and "thus lack any inherent capacity to distinguish the particular goods." Three years later, Deckers filed suit in California against Australian company Koolaburra, which was selling boots in the United States labeled "Australian Ug Boots." In its defense, Koolaburra argued that the UGG mark was generic and not entitled to protection under U.S. law, using the earlier IP Australia ruling as support. The U.S. court ruled for Deckers, finding that a U.S. consumer would be confused by use of the "Ug" term by Koolaburra.
Now, Deckers is in court again in the N.D. Illinois in Chicago, asserting that Australian company Australian Leather is selling "ugg boots" in the United States in violation of Deckers' U.S. trademark rights. Eddie Oygur, the owner of Australian Leather, countersued Deckers, arguing that the term “ugg” is generic, and that the mark was fraudulently registered in the U.S. when it was, in fact, already a generic term. In support of the Australian company, former Australian senator Nick Xenophon said, "If the French can protect 'Champagne', the Portuguese 'Port', and Spanish 'Sherry' and the Greeks 'Feta', then surely Australia can protect the word 'Ugg'."
It appears that Xenophon was (prior to his resignation last month) in the process of petitioning the Australian Prime Minister to take action that would make the term "Ugg" a certification mark, which would allow Australian boot manufacturers to use the term "Ugg" to denote that the Ugg boots are made in Australia to certain standards.
The case between Deckers and Australian Leather is still pending. If Australian Leather is able to successfully argue that a foreign company should be able to use a term that is generic in its home country to label goods sold in the U.S., regardless of U.S. trademark rights, it could change the way that many imported goods are labeled. We will be watching this case, but rest assured that the UGG brand appears to be in full force and effect in the U.S., at least through this holiday season.
This article appeared in the November 2017 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.