8 December 2021TrademarksMuireann Bolger

SCOTUS refuses to rehear ‘Ugg’ trademark dispute

The US Supreme Court has rejected a bid by a small Australian shoewear company for a review of a ruling favouring US retailer Deckers in a trademark dispute over the ‘Ugg’ mark.

SCOTUS turned down the request on Monday, December 6, despite the petition receiving the backing of the Australian government.

Deckers owns the mark for ‘Ugg’ in the US and sued Australian Leather and its owner, Eddie Oygur, for selling a dozen Ugg boots in the US.

Deckers alleged that Australian Leather’s internet sales to US consumers infringed Deckers registered “Ugg” trademark, while Australian Leather countered that the term was generic and ineligible for trademark protection in the US.

According to Australian Leather, the term "Ugg" has been considered as a generic Australian term for sheepskin boots for the past five decades.

But in 2019, US District Court for the Northern District of Illinois found that the brand willfully infringed the disputed trademark, and ordered Australian Leather to pay US$450,000.

Applying the test for cancelling a trademark that has “become” generic, the court ruled that Australian Leather had not shown that the “primary significance” of the term to the general shoe-buying public was generic.

The court also questioned whether the doctrine of foreign equivalents, which acts to prevent the trademarking of terms that are generic in a foreign language, applies to generic terms in other English-speaking countries.

The court held that generic use in these communities and in the product’s country of origin did not preclude trademark protection because “anyone can purchase and wear boots” and the broader shoe-buying public in the US was not necessarily aware of that generic use.

On appeal, the US Court of Appeals for the Federal Circuit affirmed the lower court’s decision in May.

Oygur then sought leave to appeal the decision in the US Supreme Court and received support from the Australian government.

“Uggs originated in Australia, where surfers wore them to keep their feet warm after riding cold waves. Australians regard Uggs as a type of boot, much the way loafers are a type of shoe, and early importers shared that understanding,” said Australian Leather in its petition.

The petition also held that the Federal Circuit’s decision also conflicts with decisions from at least two circuits regarding the standard for evaluating whether a term originated as generic, an issue left open in USPTO v (2020).

In its amicus curie, the Australian government opined that it was “concerned with the apparent discriminatory treatment that Australian goods would receive from a rule that prevents the trademarking of the generic terms of only non-English speaking countries.

“While the Government respects each country’s right to develop its trademark law as it sees fit, the Government submits that it should do so in a non-discriminatory manner,” it said.

But on Monday, SCOTUS rejected these arguments, closing the door on further appeals by Australian Leather.

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23 July 2019   The creator of UGG boots, Deckers, has filed a complaint against US retailer Target and brand management company Iconix.
10 December 2018   Footwear brand Deckers, which owns UGG, has filed a trademark lawsuit against online counterfeiters in China.