Ugg boots trademark disputes are the disputes between some footwear manufacturers, as to whether "ugg" is a protected trademark, or a generic term and thus ineligible for trademark protection. In Australia and New Zealand, where "Ugg" is a generic term for the style of footwear,Trade Marks Hearings 16 January 2006. Decision of a delegate of the registrar of trade marks with reasons. Pg 10 702 registered trademarks include the term "Ugg" in various logos and designs.The battle of the UGG BOOT continues Hynes Lawyers February 11, 2011 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.Website of Walker Morris UK solicitors firm, Leeds. "Bootiful - UGG recognised as a well known mark in Turkey" Legal Briefing from the Trade Marks and Designs Group, 3 October 2011.
Ugg boots (sometimes called uggs) in Australia and New Zealand are a unisex style of sheepskin boot. In many other countries, however, UGG boots are a brand of footwear owned by Deckers. The boots are made of twin-faced sheepskin with fleece on the inside and with a tanned outer surface, often with a synthetic sole. The boots originated in Australia and New Zealand, initially as utilitarian footwear worn for warmth and comfort. UGG boots emerged as a fashion trend in the United States in the late 1990s and as a world-wide trend in the late 2000s.
Trademark law in the United States
The Lanham Act is the primary statute governing federal trademark law in the United States; however, as it only applies to "commerce which may lawfully be regulated by Congress",Quoting Lanham Act, 15 v.s.c. § 1114 (2000) it does not address terms that are used in foreign countries.For a court to assert extraterritorial jurisdiction for the Lanham Act, (1) the conduct of the defendant must have a "substantial" effect on U.S. commerce; (2) the defendant must be a U.S. citizen; and (3) there can be no conflict with foreign law. Failing to satisfy one of the factors "might well be determinative", and "the absence of [two] is certainly fatal". — Vanity Fair Mills, Inc. v. T. Eaton Co., 234 F.2d 633 (2d Cir. 1956). The doctrine of foreign equivalents guideline serves this purpose.
Under the doctrine of "foreign equivalents", a foreign language term used in a foreign country that is considered generic in that country cannot be imported into the United States and used as a trademark. In applying the doctrine, the courts consistently refer to two policy rationales.Sujata Chaudhri Trademark Doctrine of Foreign Equivalents Cowan, Liebowitz & Latman pg 1 The first rationale, "the doctrine serves the interests of domestic competition":"Because of the diversity of the population of the United States, coupled with temporary visitors, all of whom are part of the United States marketplace, commerce in the United States utilizes innumerable foreign languages. No merchant may obtain the exclusive right over a trademark registration if that exclusivity would prevent competitors from designating a product as what it is in the language their customers know best." — Otokoyama Co. Ltd. Vs Wine of Japan Import Inc.Otokoyama Co. Ltd. Vs Wine of Japan Import Inc. 175 F. 3D. 266,271 (2nd Circuit 1999)The second rationale, "the doctrine serves the interests of international comity":"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." — Enrique Bernat F., S.A. v. Guadalajara, Inc.However, the Trademark Manual of Examining Procedure ("TMEP") states that the test for applying the doctrine of foreign equivalents is "whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent".Guidance on when to apply the doctrine of foreign equivalents. Examination Guide 1-08 United States Patent and Trademark Office April 23, 2008The Trademark Trial and Appeal Board has, for the purposes of the guide, ruled that an "ordinary American purchaser" refers to the "significant portion of consumers" who speak both English and the relevant foreign language. In the case In re Joint Stock Co. "Baik ," 80 USPQ2d 1305, 1310, 0.22% was accepted as a significant portion of consumers in the United States.TMEP 1207.01(b)(vi) Thus the doctrine is generally interpreted by courts as not applying if the generic word is not a word from a foreign language, but one from an English-speaking foreign country.For foreign countries in which English is the primary language, the U.S. Court of Appeals ruled that the generic status of an English-language term in that country was "irrelevant to the question [of] whether it should be accorded the same status in America" and carried no weight. Similarly, a California court has held that the "genericness" of an English-language term in an English-speaking foreign country "was not determinative of the alleged genericness of that term in the United States." — Rest Elizabeth J. (2006), Lost in Translation: pg. 1244 + 1246Trademark Manual of Examining Procedure § 1207.01: 1207.01(b)(vi) Doctrine of Foreign Equivalents"The doctrine should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent."
Court cases have noted that the generic status accorded to English-language words in foreign countries has no bearing on the registration of marks in the United States. The genericity argument was invoked for Ugg boots and was rejected by a U.S. district court which cited the following cases in support. In Anheuser-Busch, Inc. v. Stroh Brewery Co., the court rejected as irrelevant the generic usage of the phrase "L.A. beer" in Australia for low-alcohol beer. The court ruled that "a term may be generic in one country and suggestive in another" and that genericity in Australia was irrelevant.Anheuser-Busch, Inc. v. Stroh Brewery Co. B92 In Carcione v. The Greengrocer, Inc., the court rejected as irrelevant the generic use of the term "Greengrocer" in most English speaking countries for a retailer of fruit. The court rejected the argument on the grounds that it is irrelevant how a term is used outside the United States:Anheuser-Busch, Inc. v. Stroh Brewery Co. C42 "The parties agree that the term is generic in Britain. Since we deal here with American trademark law, and thus American consumers, neither British usage nor the dictionary definition indicating such usage are determinative."Carcione v. The Greengrocer, Inc., 205 U.S.P.Q. (BNA) 1075 (E.D. Cal. 1979). In another case, the court stated that while a term may be generic in another country, if "it is not so recognized in this country [the U.S.]... the mark must still be regarded as arbitrary and fanciful in the United States." and thus remains eligible for registration as a trademark in the United States.Seiko Sporting Goods USA, Inc. v. Kabushiki Kaisha Hattori Tokeiten, 545 F. Supp. 221, 226 (S.D.N.Y. 1982)
As the doctrine is a guideline rather than a rule, it has been criticized with commentators noting that United States courts are often contradictory and inconsistent in their application of the doctrine, and that it provides little guidance to owners when choosing their marks or to courts when assessing protectability or likelihood of mark confusion. It has been suggested by the International Trademark Association that the doctrine be abolished and replaced with one that applies equally to all foreign words, regardless of whether they are from a foreign language or an English language, and that they take into account that country's trademark laws. Under the proposed changes, "Terms that are generic are never protectible as trademarks and are never registerable".Rest Elizabeth J. (2006), Lost in Translation: pg. 1221Serge Krimnus, The Doctrine of Foreign Equivalents at Death's Door, 12 N.C. J.L. & Tech. 159 (2010)
Trademark disputes
The UGG trademark has been the subject of dispute in several countries. The trademark for "Ugh-Boots" has been removed from the trademark registry in Australia for non-use. Outside Australia and New Zealand, "UGG", in capital letters, is a registered trademark of Deckers Outdoor Corporation.
In 1971, an Australian surfer, Shane Steadman, registered the name "UGH-BOOTS" as a trademark in Australia and began selling sheepskin boots under that name. In 1982 he registered the name "UGH" and a logo containing a stylised Sun with the words "UGG AUSTRALIA". In 1979, Brian Smith, another Australian surfer, applied to be the United States distributor for Country Leather, a Western Australian manufacturer of ugg boots, and began selling their Australian-made boots in New York and to surfers in California. In 1987 he set up Ugg Holdings Inc. and in 1995 purchased the trademarks from Steadman. In 1996 he sold his interest to Deckers and in 1999 Deckers registered the trademarks for "UGG" in the US and 25 foreign countries.Fink, Karl V.; Johnson, Carolyn M.; Miranda, David P. (February 5, 2004), "UGG Holdings, Inc. and Deckers Outdoor Corporation v. Paul Barclay d/b/a Australian Made Goods", National Arbitration Forum, retrieved August 25, 2010UGG is a brand. Fact and Fiction. Deckers Outdoor Corporation 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. 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.
For the nine months to September 2004, UGG boots sales totaled $39.2 million, an increase of 180% over the previous year. Plans were also in place to expand the UGG brand to cover hats, scarves and gloves.Press Release Deckers October 24, 2004 With the continuing rise in popularity, Deckers now began a serious effort to halt the use of the name "ugg" by other manufacturers. 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.
The manufacture of ugg boots in Australia was primarily a cottage industry. Individually lacking the resources to fight Deckers, 20 Australian manufacturers formed the Australian Sheepskin Association to fight the corporation's claim, arguing that "ugg" is a generic term referring to flat-heeled, pull-on sheepskin boots.Arnold, James Aussie boot battle takes an Uggly turn BBC News February 19, 2004Taking On The Big Guys Is Never an Easy Task Australian Institute of Management April 2005 They further argued that Australian manufacturers had been making and trading this style of boot for decades, including exporting them to the US. One of these manufacturers, Perth's Uggs-N-Rugs, who had been manufacturing uggs since 1978 and selling them online since 1996, appealed to Australian trademark regulators, IP Australia. 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." In 2006 Uggs-N-Rugs won the right to use the term UGG BOOT/S and variations such as UGH BOOT/S. The case was the subject of a 2006 television documentary, The Good, The Bad and The Ugg Boot. Counsel for Uggs-N-Rugs was David Stewart instructed by Wrays: Counsel for Deckers was Christian Dimitriadis instructed by Ashurst.