Battle of Federal Circuit Trademarks UGG Australia
A few months ago, a decision of the Federal Court of Appeal concerning the UGG AUSTRALIA brand left some people perplexed. The US Trademark Office will generally not register a trademark (that is, recognize exclusive rights by issuing a trademark registration) for a category of goods. Think LINOLEUM for floors, THERMOS for insulated containers and ELEVATOR for elevators. All of these words were once registered trademarks, but have gone on to become product category names through common usage, which is why the owner of VELCRO for hook-and-loop fasteners is fighting to keep his brand as a brand. Conversely, some have been able to appropriate exclusive rights over common words which have become associated exclusively with a single source of goods. Examples include SCHOLASTIC for books or CHAPSTICK for lip balm.
A trademark registered under another name
But what if a brand was born under a common name in a country outside of the United States, but someone claims it is a brand name here in the United States? ? This is exactly what happened in the UGG AUSTRALIA litigation. After a five-year battle, the Federal Circuit Court of Appeals concluded that UGG AUSTRALIA was a valid brand, not a generic one. The challenge to the registration of the UGG trademark in the United States was brought by Eddie Oygur, a seller of “ugg” boots in Australia. In Australia, “ugg” is the common name for fleece-lined sheepskin boots, manufactured since the 1930s.
After Mr Oygur sold 13 pairs of his ‘ugg’ boots on his company Australian Leather website to US customers, UGG AUSTRALIA brand owner Deckers Outdoor sued Australian Leather for trademark infringement. Deckers based his action on the trademark rights he acquired from Brian Smith, an Australian entrepreneur who registered UGG as a trademark in the 1980s, and Deckers’ UGG AUSTRALIA trademark, which he registered for the first time in the US in 1995. Deckers also owns the brand in addition to 130 other countries, which means Australians cannot sell ‘ugg’ boots internationally.
Why the UGG brand let some Australians say “Ugh”
The arguments of the parties centered on whether “ugg” is a “generic” name – that is, the name of a product category (a type of boot lined with sheepskin) – or if it is a brand name that US customers recognize as coming from a single source (Deckers). Australian Leather noted that prior to its registration, “ugg” was used generically to refer to a category of products, even in the United States. be a brand name, not a category name. Which no doubt left Mr. Ogyur, as well as possibly many other Australian sellers, saying “Ugh!”
© 2021 Norris McLaughlin PA, All rights reservedRevue nationale de droit, volume XI, number 260