Ugg boots trademark dispute

[3][4] By contrast, UGG is a registered trademark of the California-based company Deckers Outdoor Corporation in over 130 countries worldwide, including the U.S., the European Union, and China.

[7] The boots are made of twin-faced sheepskin with fleece on the inside and with a tanned outer surface, often with a synthetic sole.

— Otokoyama Co. Ltd. Vs Wine of Japan Import Inc.[10][11]The second rationale, "the doctrine serves the interests of international comity":[10]"Because United States companies would be hamstrung in international trade if foreign countries granted trademark protection to generic English words, the United States reciprocates and refuses trademark protection to generic foreign words."

The genericity argument was invoked for Ugg boots and was rejected by a U.S. district court which cited the following cases in support.

[4][23][24] Deckers began asserting its new trademark and sent out cease and desist letters to Australian manufacturers who were using the name ugg for their boots but otherwise took little action.

[2] 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.

Deckers' law firm, Middletons of Melbourne, sent cease and desist letters to a number of Australian and American manufacturers who were selling uggs over the Internet, preventing them from selling uggs on eBay or from using the word in their domain names or registered business names.

[33] Following the publication of a Wall Street Journal article which referred to the oversight, Deckers paid the costs in September 2010.

[34] The ruling only applies in Australia and Deckers still owns the trademarks in other jurisdictions such as the US, China, Japan and the European Union.

As the UGG mark was registered, Deckers was entitled to the assumption that it was not generic, thus the burden of proof rested with Koolaburra.

[14] In support, Koolaburra provided the testimony of America's National Surfing Team coach Peter Townend and Nordstrom's footwear buyer Heather Kolkey.

Additionally, Koolaburra provided three instances of the generic usage of Ugg in American magazines; however, the court pointed out that the most recent was dated 1980.

This was rejected by the court as fraud requires an applicant to "knowingly" make the false representations, ruling that such belief was subjective, and finding that even if Smith knew the term was generic in Australia, he may have "honestly held [a] good faith belief" that it was not generic in the United States.

[14] 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 and provided the court with survey evidence supporting that consumers in the US consider UGG to be a brand name; among women aged 18 to 45 who had purchased footwear valued over $100 in the last 12 months, 58% believed UGG was a brand name while only 11% thought it generic.

[14] The Australian Sheepskin Association is attempting to change the name UGG into a regional mark similar to that achieved for Champagne which would negate its trademark status in many jurisdictions.