Friday, 21 May 2021 14:43

From Ugg to Ugg-ly: Kicking the Contentious Trademark Infringement Suit up a Notch

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In 2016, Deckers Outdoor Corporation (“Deckers”), owner of the registered “UGG AUSTRALIA” mark since 1995 and holder of said mark in over 130 countries, brought a trademark infringement suit against a boot-making company based in Australia, Australian Leather Pty. Ltd. (“Australian Leather”), for selling thirteen pairs of so-called “ugg boots” through its website.

In responding to the infringement suit, Australian Leather decided to base its defense on arguing for the genericism of the term “ugg.” This argument stemmed from Australian culture, which has broadly used “ugg” to describe sheepskin-lined boots since the 1930s and whose surfers popularized the clothing item in the 1960s—nearly twenty years prior to Australian entrepreneur Brian Smith using the term as part of his American-based brand in the 1980s. Although unpersuasive to the court, Australian Leather further argued both that the term “ugg” deserved similar protection to the French term “champagne” and that prior to the registration of the “UGG AUSTRALIA” mark, the term “ugg” was used in a generic manner in the United States. As a result, the district court ruled in favor of Deckers—ordering Australian Leather to pay $450,000 in damages—finding that the doctrine of foreign equivalents did not apply and that the genericism of “ugg” in Australia did not support the notion that the term would have the same meaning in the United States. After the ruling was handed down, Australian Leather decided to appeal.

On May 7, 2021, the United States Court of Appeals for the Federal Circuit affirmed the district court’s decision. In doing so, the court declined to give any reasons for affirming the decision and instead implicitly chose to rely on the analysis provided by the lower court. In a conversation shortly after the May 7decision, Australian Leather’s owner Eddie Oygur announced that he has plans to appeal the decision to the U.S. Supreme Court.

The decision is Deckers Outdoor Corp. v. Australian Leather Pty Ltd. (Case No. 2020-2166) in the United States Court of Appeals for the Federal Circuit. The opinion can be found at the following link:  http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-2166.RULE_36_JUDGMENT.5-7-2021_1774612.pdf. The lower court decision is Deckers Outdoor Corp. v. Australian Leather Pty Ltd. (340 F. Supp. 3d 706) in the United States District Court for the Northern District of Illinois, Eastern Division. The opinion can be found at the following link:  https://www.govinfo.gov/content/pkg/USCOURTS-ilnd-1_16-cv-03676/pdf/USCOURTS-ilnd-1_16-cv-03676-1.pdf.

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