Trademark: Uggs are generic in Australia, Can I import them without a license from UGG®?

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.

 

23 thoughts on “Trademark: Uggs are generic in Australia, Can I import them without a license from UGG®?

  1. 11

    The petitioner should lose. Whether a word is generic is a matter of public perception. And, trademarks are territorial. If the consumer market in the U.S. does not view the word UGG as generic, but rather a brand name, then there is no reason the company cannot have trademark rights in the U.S. The fact that in another country the word is generic should have no impact on U.S. trademark rights.

    1. 11.1

      BL,

      Did you dive into the brief to see if the arguments impinge on that “territorial” position?

      1. 11.1.1

        No, they don’t. Their main argument is a bizarre take on the doctrine of foreign equivalents, which it appears they completely misunderstand. And then they want to differentiate the standard between terms that were originally generic and those that became generic later. Which has no basis in the statute, and besides avoids the issue.

        As far as I can tell, UGG is generic in Australia and not generic in the U.S. That means that a company should be able to obtain TM rights in the U.S. in that terms.

        As for any term, the public may use it as generic or vice versa. The most famous example is ASPRIN. Another, less well known one, is SINGER, which at one point was a brand name, then became generic for sewing machines, then went back to being a brand name.

        1. 11.1.1.1

          FWIW, the doctrine of foreign equivalents means that you translate a term from a foreign language, if it is in one, to English and then evaluate whether it is generic, descriptive, suggestive or arbitrary.

          If I want to register a mark for shoes, and I chose ZAPATOS as my mark, then you first translate ZAPATOS to English, which is ‘shoes’ in Spanish. Shoes is generic for shoes, hence, you cannot register or protect it.

          OTOH, if your mark is PALOMA, which is DOVE, in English, then that term is arbitrary for shoes, so you could get the mark (assuming no one else already has it.)

          The petitioner here argues that you take an English word from a foreign country (Australia), and if it is generic there, it is generic here. Which is NOT what the doctrine is at all.

          1. 11.1.1.1.1

            Excellent – and thanks

    2. 11.2

      So why deckers can’t get a trademark for UGG in Australia and New Zealand
      They know it’s a generic term for sheepskin boots and they have stoped a lot of Australian manufacturers selling UGG boots and now in the industry no one left to speak out because they hit them with huge law suits if they talk

      1. 11.2.1

        Obtaining trademarks in either Australia or New Zealand is a complete non sequitur to the US legal case.

        To your attempted point then, the appropriate response could be a simple, “So what?”

      2. 11.2.2

        If a term is generic, NO ONE can get trademark rights in it, that’s why.

  2. 10

    Uggs have always been the home to Australians since the 1970’s. Being generic in Australia not sure how Deckers managed to have UGGS trademarked in the US & 130 countries. This should not of happened in the first place, I hope Australian Leather win & take Ugg Boots back home where it belongs!

  3. 9

    Oh, if only this were as simple as it has been presented by the petitioner!

    UGG did not start out as a generic term in Australia. The fact that it may have been coined by a surfer (I suggest that etymology would be disputed) does not, of course, prevent it from serving as a trade mark. Particularly when there was originally only one manufacturer/supplier.

    There have been many legal disputes over the UGG “trade mark” in Australia, mostly since the brand was acquired by Deckers. Effectively, the word has become generic here. The Australian Register of Trade Marks is littered with entries that include the term UGG, including registrations for the bare word still owned by Deckers. In practice, however, Deckers’ registrations are largely unenforceable. It is a defence to infringement in Australia if you own a registration for the allegedly infringing mark. And many applicants have been able to gain registration over prior UGG marks as a result of extensive periods of unchallenged concurrent use.

    It is a classic case of a failure to protect a mark against genericism. Deckers bought a lemon in Australia, but has been able to defend the UGG brand against other traders in the US, where the word had not established non-trademark significance prior to the Deckers acquisition . Australian Leather has an uphill battle on its hands here, and rightly so.

    1. 9.2

      I totally disagree with you Mark, we have proof that the first surf shop in South Australia who registered UG UGG BOOTS have deregistered it because it was generic and it was called UGG or UGGBOOTS.
      Deckers knew very well what it was but at that time no 0ne thought it could be trademarked as the term for sheepskin boots were called UGGs.
      As for an uphill battle to bring UGG back home yes it is it has been very hard for the last 6 years.
      i could have walked away if they gave me a notice, without giving me any notice they came at me with everything they have , they wanted to take over my bank accounts, they wanted my URLs for my website and all the stock or destruction, and to say the least they wanted to totally destroy me and my business which i have given my life to, for selling 13 pairs of ugg boots from my web site to the US in 6 years, i have got fined millions of dollars for selling 13 pairs of boots, now you tell me the justice if i got from the district court in USA.
      I gave them a chance to walk away but they insisted not to, yes they have deep pockets to take the case as long as it could, thinking i will give up.

  4. 8

    Yes monopoly on A generic term in Australia UGG should not have been granted as a trademark or a patent.

  5. 7

    Only if you’re vaxxed.

  6. 6

    I thought ugg was short for ugly, and ugly boots shortened to uggs was merely descriptive

  7. 5

    BOOKING.COM favors the TM holder and so the petitioner here downplays the case.

  8. 4

    You don’t want to use your own trademark as a noun, because that generizes it. But you cannot do anything but ask nicelr (a la velcro) if competitors and purchasers use it as a noun. If Australian Leather loses this case, I wonder if they can put an few words on their website and labeling like “In Australia, we all call these boot ‘uggs'” or “Our uggs are better than their uggs.” or “Ugg, we can believe we lost that lawsuit.” That way internet searches will lead to Australian Leather.

  9. 3

    that suggests some nuance from the Court’s 2020 decision in BOOKING.COM.

    Meh, a quick read shows no actual intersection with the Bookings case (and in fact distinguishes as attempting to address issues NOT addressed in that case).

  10. 2

    Is there a definitive case that says don’t use a trademark as a noun? I often see that advice but am not familiar with the case.

    1. 2.1

      You won’t find a case. You would find cases that hold marks generic, and cite the trademark owners own usage. I don’t remember a particular case, but in law school my professor called it genericide.

  11. 1

    It seems a pretty interesting issue. I don’t understand why the Federal Circuit R.36’d it.

    1. 1.1

      +1

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