Deckers Outdoor Corp., owner of the popular UGG brand, succeeded in a legal quest to prevent an Australian company from calling the sheepskin boots it sells in the U.S. “ugg boots,” as the judge said that term cannot be considered generic for those kinds of boots.
Deckers filed a federal lawsuit against Australian Leather Pty. Ltd., which sells footwear in a similar style to UGG’s signature boot. In its defense, Australian Leather claimed that “ugg boots” is a generic term used in Australia and in the surfer community since at least the 1970s to refer to the sheepskin boots first popularized by Australian surfers.
In his decision, Judge Manish S. Shah found the UGG brand had been trademarked in the U.S. and noted several consumer studies in which consumers recognized UGG as a brand name. The Australian public may or may not use the term generically, Shah said; the question at hand is how it is regarded by the American public.
“Even assuming Australian Leather established that ugg was generic in Australia … it has not linked that finding in any way to consumer perceptions in the U.S. and so considering this evidence would not change the result here,” Shah wrote. “Australian Leather has not shown that ugg is or ever has been generic among footwear customers in the U.S. – the relevant public.”
Though Australian Leather itself was founded in the 1990s and didn’t enter the U.S. market until 2014, the company’s case relied largely on the history of the iconic footwear, which traces its origins to Australian surfers in the 1960s and 1970s. Some companies, including the founder of the UGG brand, sold the boots in the U.S. as well, though their early appeal was limited to surf and ski shops. In the surfer community, according to court documents, the boots were commonly referred to as “ugg” or “ugh” boots.
Four Australian boot suppliers testified about their experiences selling sheepskin boots to U.S. customers from the 1960s to 1980s. The boot style, the witnesses said, was generally known in Australia as an ugg boot. While the boots enjoyed modest popularity among surfers, typical American consumers were not interested.
Deckers acquired the UGG company and its trademark in 1995. It took the boots out of their surf shop niche and positioned UGG as a luxury brand, popular among well-to-do young women. For good measure, it also purchased the Australian trademark for UGH-BOOTS, established in 1971 by a different Australian company selling sheepskin footwear.
Deckers based its defense on the current American lexicon. It commissioned national surveys of its target market in 2004, 2011 and 2017, finding that more than half of women ages 16 to 54 understood UGG to be a brand name. In the 2017 survey, 98 percent of respondents viewed UGG as a brand, not as a style. Linguistics professors scoured dictionaries and databases and failed to find the word “ugg” used generically in reference to footwear. A footwear historian likewise concluded the word ugg was not used “as a generic term by the general consuming public,” though he conceded it may have been used as such by “a tiny little group of surfers in Southern California.”
Australian Leather may argue that the word ugg was generic among American surfers in the 1970s, Shah wrote, but “there is no reason to construe the relevant public so narrowly.”
“Sheepskin boots are not a specialized technology that appeals only to some limited consumer base,” he wrote. “Though many early customers were surfers, anyone can purchase and wear boots. …Even assuming the term is generic in Australia, no reasonable jury could conclude that it is generic in the United States.”
Australian Leather attempted to invoke the foreign equivalents doctrine, which prohibits trademarking a term in the U.S. that is a generic word for the product in another language, but Shah said that doctrine also does not apply. In the first place, he said, it is intended to apply to languages other than English. In the second, he said, Australian Leather presented no evidence that Americans or Australians familiar with the term would be misled into thinking UGG boots is the only brand of sheepskin-style boots in the country.
Shah was also not convinced by Australian Leather’s argument that it is harmed by statements on UGG’s website. On its website, Deckers maintains an anti-counterfeiting education page and a search function that allows users to look up online retailers and learn if they are authorized dealers of UGG products. Because a search for “Australian Leather” returns the message, “Australian Leather isn’t known to our database and cannot be verified as an authorized retailer. This may be a site that deals in counterfeit products,” Australian Leather argued that Deckers is harming its reputation by claiming it deals in counterfeits. Shah replied that none of the statements on the website are false and Australian Leather is not referenced by name in any counterfeit references, so the company cannot claim damages.
Australian Leather has been represented in the action by attorney Mark R. Bagley, of the firm of Tolpin & Partners PC, of Chicago.
Deckers has been represented by attorneys Paul G. Juettner, Justin R. Gaudio, RiKaleigh C. Johnson and Patrick J. Smith, of the firm of Greer, Burns & Crain Ltd., of Chicago.