The Deckers Story
The UGG trademark has been the subject of dispute in several countries. As a result the term "ugg" has been removed from the trademark registry in Australia. Thus Australian and New Zealand manufacturers continue to market ugg-style sheepskin boots under their own brands using the word "ugg." Outside Australia and New Zealand, the UGG (written in capital letters) brand of ugg boots is a registered trademark of Deckers Outdoor Corporation.
In 1971, an Australian surfer, Shane Steadman, began selling ugg boots and registered the name UGH as a trademark. In 1979 Brian Smith, another Australian surfer, brought several pairs of Australian-made uggs to the United States and began selling them in New York and to surfers in California. He set up Ugg Holdings Inc., acquired the Australian mark from Steadman, and in 1985 registered a U.S. trademark on a rams head logo with the words "Original UGG Boot UGG Australia". In 1995 he sold his interest to Deckers. In 1996 Deckers registered a trademark for "UGG" in the United States.
In 1999, Deckers began asserting its new trademark and sent out cease and desist letters to Australian manufacturers, but did not press the issue beyond that. In the early 2000s, demand for ugg boots was soaring, partly as a result of US$8 million spent on marketing by Deckers, but also due to several celebrity endorsements. Australian manufacturers began selling uggs over the Internet, and Deckers' law firm Middletons of Melbourne began a serious effort to halt the Australian companies' sales. In 2004, Deckers sent cease and desist letters to a number of Australian manufacturers, including Mortels Sheepskin Factory, preventing them from selling uggs on eBay or from using the word in domain names. In response, the issue was discussed in the Australian House of Representatives where Robert Baldwin MP compared the controversy to an Australian company trying to buy the trademark "cowboy boot".
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 into the United States. One of these manufacturers, Perth's Uggs-N-Rugs, appealed to Australian trademark regulators, who in 2006 ruled that "ugg" is indeed a generic term and stated that it should be removed from the trademark register. 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 2006 ruling only applies in Australia and Deckers still owns the trademarks in all other jurisdictions, including the United States, 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 stated that the defendants had provided anecdotal evidence the term's generic usage, but Deckers countered through submitting declarations from four professionals in the footwear industry who stated that "UGG" is widely recognized in the industry as a brand name, not a generic term. The case applies only to U.S. usage.
During a trademark infringement case a generic term defense was rejected by a Dutch court. La Cheapa distributed sheepskin boots on an Internet site from the Netherlands, describing them on its website as "100% authentic Ugg Australian boots!!!" with "UGG logo on the heel" in boxes virtually identical to Deckers packaging. Ruling in favor of Deckers, the officer who heard the case stated it cannot establish as fact that this is considered a generic name in the Benelux based on the opinion of one or more companies in Australia.
Source: Wikipedia
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