A federal appeals court rejected an argument Friday that could have spelled the end of Deckers Brands’ U.S. trademark on the word “Ugg.”
The footwear conglomerate originally sued Australian Leather in 2016 for using the terms “Ugg” and “Cardy” to sell products online visually similar to its own and for which it possessed U.S. trademarks. The defendant, however, argued the terms had a generic meaning in Australia, where it was based and from where it sold the products that were in dispute.
The defendant’s lawyer has said Australian Leather sold about $2,000 worth of ugg boots in the U.S. over five years, according to The New York Times.
Australian Leather argued Deckers’ Ugg mark should be invalid under the doctrine of foreign equivalents, a rule in U.S. trademark law that blocks trademarks for foreign generic words that “would prevent competitors from designating a product as what it is in the foreign language their customers know best.”
The U.S. District Court for the Northern District of Illinois rejected this argument in September 2018. In May 2019, a jury found the company willfully infringed on Deckers’ trademarks and, in February 2020, a court approved the damages sum of $450,000 and issued a permanent injunction preventing Australian Leather from using the “Ugg” trademark or designation in the United States.
A federal appeals court upheld the previous court’s decision Friday. It did not provide any further explanation. After the ruling, Eddie Oygur, the owner of company at the center of this five-year legal fight, said he would bring his case to the Supreme Court.
“This is not just about me, it is about Australia taking back ‘ugg,’” Oygur said. “The trademark should never have been given in the first place to the U.S.”
Related Stories
The popularization of the term “ugg boot” is generally tied to Australia’s 1960s surf culture. The fleece-lined sheepskin boots eventually made their way to California, where they began showing up in surf shops in the 1970s. Australian entrepreneur Brian Smith registered “Ugg” as a brand in the U.S. in the 1980s. Smith sold Ugg Holdings to Deckers in the mid-90s.
Deckers holds the trademark for “Ugg” in more than 130 countries today. In Australia, it only holds the trademark for its distinctive “Ugg” logo, but not for the term itself.
Ugg has grown to become Deckers’ largest brand. Celebrities from Oprah Winfrey and Tom Brady to Serena Williams and Jennifer Lopez have donned its iconic boots. While others have struggled to weather the coronavirus pandemic, Ugg has thrived. For the nine months ended Dec. 31, net sales grew 6.9 percent to $1.42 billion.