Deckers Outdoor Corporation - UGG Australia - Trademark Dispute

Trademark Dispute

UGG Australia is a registered trademark in the US, Europe and many other countries. There have been various disputes within Australia, the United States and Europe about the validity of Ugh/ugg trademark. Deckers trades as Ugg Holdings Inc in Australia, where it is known for a trademark dispute over the use of the term Ugg boot.

In 1971, Australian surfer Shane Steadman, began selling ugg boots and registered the name Ugh-boots as a trademark in Australia. In 1979 Brian Smith, another Australian surfer, brought several pairs of Australian-made sheepskin boots to the US and began selling them in New York and California. He set up Ugg Holdings Inc. and in 1985 registered a US trademark on a rams head logo with the words "Original UGG Boot UGG Australia. He later acquired the Australian mark from Steadman. In 1995, he sold his interest to Deckers Outdoor Corporation. In 1996 Deckers registered a trademark for "UGG" in the US. In 1999, Deckers began asserting its new trademark and sent cease and desist letters to Australian manufacturers, but did not press the issue beyond that. It was only in the early 2000s when demand for ugg boots was soaring, partly as a result of several celebrity endorsements, and Australian manufacturers began selling uggs over the Internet, that Deckers' law firm Middletons of Melbourne began a serious effort to halt their sales. In 2004, Deckers sent cease and desist letters to 20 Australian manufacturers and Mortels Sheepskin Factory was prevented from selling uggs on eBay or from using the word in domain names.

In response to these actions by Deckers, Australian manufacturers formed the Ugg Boot Footwear Association to fight the corporation's claim, arguing that "ugg" is a generic term referring to flat-heeled, pull-on sheepskin boots. They further argued that Australian manufacturers had been making and trading this style of boot for decades, including in the US. In 2003 Bruce and Bronwyn McDougall, owners of Uggs-N-Rugs, a Western Australia-based manufacturer, started legal action alleging that Deckers had not actively used the UGH-BOOT registration in Australian commerce for the past three years. Their action was successful in 2006, and the UGH-BOOT registration was removed from the Australian Trademark Registry. The officer who heard the case stated that the "evidence overwhelmingly supports the proposition that the terms (ugg, ugh and ug boots) are interchangeably used to describe a specific style of sheepskin boot and are the first and most natural way in which to describe these goods."

The ruling only applies in Australia with Deckers still owning the trademarks in all other jurisdictions, including the US, China, Japan and the European Union. In 2005, the validity of the UGG trademark was challenged in Federal Court in California; the court ruled for Deckers, stating that consumers in the United States consider Ugg to be a brand name. In his final order, the judge hearing the case stated that, although the defendants had provided anecdotal evidence of the term being used generically, Deckers had countered this by "submitted ... declarations from four footwear industry professionals, each of whom states that 'UGG' is widely recognized in the industry as a brand-name and not a generic term" and that the defendants' evidence "fails to demonstrate that the term 'UGG' is generic." In his finding the judge did not consider whether or not "ugg" was a generic term in Australia or New Zealand, as the doctrine of foreign equivalents only relates to non-English speaking countries. A similar challenge was also rejected by a Dutch court.