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 and any ugg boots
UGG Knit Bootsmay be marketed there using the term “ugg.” Outside Australia and New Zealand, UGG (written in capital letters) is a registered trademark of Deckers Outdoor Corporation.
In 1971, an Australian surfer, Shane Steadman, began selling ugg boots and registered the name Ugh-boots as a trademark in Australia. In 1979, Brian Smith, another Australian surfer, brought several pairs of Australian-made uggs to the US and began
Herve Leger Saleselling them in New York and to surfers in California. He set up Ugg Holdings Inc., acquired the Australian mark from Steadman, and in 1985 registered a U.S. trademark on a rams head logo with the words “Original UGG Boot UGG Australia”. In 1995 he sold his interest to Deckers. In 1996 Deckers registered a trademark for “UGG” in the US.
In 1999, Deckers began asserting its new trademark and sent out cease and desist letters to Australian manufacturers, but did not press the issue beyond that. 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. Australian and USA based manufacturers began selling uggs over the Internet, and Deckers’ law firm Middletons of Melbourne began a serious effort to halt the Australian companies’ sales. In 2004, Deckers sent cease and desist letters to a number of Australian and USA based manufacturers, including Mortels Sheepskin Factory, preventing
Herve Leger Black them from selling uggs on eBay or from using the word in domain names.
In 2005, the validity of the UGG trademark was challenged in federal court in California; the court ruled for Deckers, stating that consumers in the US consider UGG to be a brand name. In his final order, the judge stated that the defendants had provided anecdotal evidence of the term’s generic usage, but Deckers countered through submitting declarations from four professionals in the footwear industry who stated that “UGG” is widely recognized in the industry as a brand name, not a generic term.
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