US Footwear Giant, Deckers, Risks Losing Its Trademark Rights to the Word “Ugg”

Category: Trademark Information

Currently, Deckers – a US footwear giant – owns the trademark rights to the word “Ugg” in the US and approximately 130 other countries worldwide. However, this may be set to change.

Australian entrepreneur Brian Smith, registered the term “Ugg” as a brand in the US in 1985, later selling the trademark rights to Deckers. Since then, Deckers have been vigilant in ensuring that no other company, especially Australian bootmakers, uses the brand.

As Eddie Oygur, owner of Australian Leather, highlights, “They have got it registered in about 130 countries around the world.

“No one can sell Ugg boots into the US or anywhere else.”

However, the recent move in a trademark battle between Deckers and Australian Leather may have opened the path for other boot-makers to sell boots in the US using the term UGG.

Deckers accused Australian Leather of selling boots marked with the brand UGG in the US, infringing upon their trademark rights.

In a new turn, Australian Leather has counter-sued the footwear giant grounded on claims that their trademark is invalid, based on Mr Smith’s 2014 autobiography, The Birth of a Brand.

When Mr Smith applied to the US Patent and Trademark Office to register the trademark in 1985, he claimed that there was “no significance of the term Ugg in the relevant trade or industry.”

According to Mr Terceiro, Mr Smith has contradicted this claim when “He talks about the fact that he knew quite well that the word Ugg was big in Australia at the time. That everybody in Australia owned these sheepskin boots.”

“There were a number of companies selling in America at the time that Mr Smith applied for his trademark.

To provide evidence for this allegation, “What we’ve been trying to do is [use] Mr Smith’s book to identify particular places and times that Ugg boots were advertised in a generic sense and getting copies of those things, those advertisements.”

This court case will take place next year in Chicago.

If you want to expand your business overseas, it is important that you register these trademarks in each country that you wish to enter. We understand that it can be difficult navigating through the different rules and legislations according to each country, which is why Pinnacle TMS is there to help. Pinnacle TMS have years of experience in overseas trademark registration so that you can be confident your unique trademark application is accepted and your business or product name is protected.

Please contact Pinnacle TMS on info@pinnacletms.com.au or call +61 4 9520 4366 to learn more about how we can help you.