by Dennis Crouch
In Australia, the term “ugg boots” refers to a general style of sheepskin shoe with the fleece turned in for warmth. It is a generic term, and not a trademark – in Australia. And, there are dozens of companies that make and sell ugg boots in that country, including Australian Leather Pty. Ltd.. The original name “ugh” came from 1970s surfer Shane Stedman who has been quoted as saying “We called them Ughs because they were ugly.”
UGG is a registered trademark in the USA, now owned by Deckers Outdoor Corp. Back in 2016, Deckers learned that Australian Leather had imported 12 pairs boots labelled “ugg boots” into the USA and sued for trademark infringement. The defendant argued that it should be able to import its boots to the US since the term is generic in Australia, but the district court sided with the plaintiff in rejecting that defense. On appeal, the Federal Circuit affirmed in a R.36 Judgment without any opinion (the original complaint included some design patents as well).
Australian Leather has now petitioned to the U.S. Supreme Court, asking two questions:
1. Whether a term that is generic in the English-speaking foreign country from which it originated is ineligible for trademark protection in the United States.
2. Whether and, if so, how the “primary significance to the relevant public” standard in 15 U.S.C. § 1064(3) for determining whether a registered trademark has “become” generic applies where a term originated as generic before registration.
[Petition]. This is an interesting new trademark petition that suggests some nuance from the Court’s 2020 decision in BOOKING.COM.