Uggs are generic in Australia, can I import them without a UGG® license?
by Dennis Crouch
In Australia, the term “ugg boots” refers to a general style of sheepskin footwear with the fleece turned over for warmth. This is a generic term, not a trademark – in Australia. And, there are dozens of companies that manufacture and sell UGG boots in this country, including Australian Leather Pty. Ltd.. The original name “ugh” comes from 1970s surfer Shane Stedman who was quoted as saying “We called them Ughs because they were ugly”.
UGG is a U.S. registered trademark now owned by Deckers Outdoor Corp. In 2016, Deckers learned that Australian Leather imported 12 pairs of boots labeled “ugg boots” into the United States and sued for trademark infringement. The defendant argued that he should be able to import his boots into the United States since the term is generic in Australia, but the district court sided with the plaintiff in rejecting this defense. On appeal, the Federal Circuit upheld in an R.36 judgment without any notice (the original complaint also included some design patents).
Australian Leather has now filed a petition with the United States Supreme Court, asking two questions:
1. Whether a generic term in the English-speaking foreign country from which it originates is not eligible for trademark protection in the United States.
2. If and, if so, how does the “paramount importance to the relevant public” standard of 15 USC § 1064 (3) for determining whether a registered mark has “become” generic apply when a term originates as generic before registration.
[Petition]. This is an interesting new trademark petition that suggests a few nuances to the 2020 court ruling in BOOKING.COM.