A longstanding Australian brand, UGG Since 1974, is fighting for the right to use its UGG trademark for footwear in the United States. Deckers Outdoor Corporation, a US-based shoe company, filed a lawsuit against the Australian brand’s holding company in the US District Court for the Northern District of Illinois, alleging that it has prior rights to UGG in the United States.  The case, Deckers Outdoor Corp. v. Wolverine Group Pty Ltd., Case No. 1:24-cv-03164, has had profound implications on the Australian brand’s ability to market its products internationally.  It illuminates the need for brand owners to establish and implement a strategy for protecting trademarks internationally to account for future expansion. 

UGG Since 1974 has been making Australian boots for over five decades, spanning three generations.  Its holding company, Wolverine Group Pty Ltd (“Wolverine”), owns trademark registrations for UGG marks in Australia and New Zealand, where sheepskin boots (i.e., “boots with the fur”) originated.  Meanwhile, Deckers owns registrations for UGG for footwear in the United States. It argues that confusion among US consumers is likely because the Australian company recently started selling its products to Americans online.

In Australia, “ugg” is a generic term for any sheepskin boots.  So, UGG Since 1974 would unlikely be able to establish exclusive rights to the term for sheepskin boots in Australia.  But Wolverine was able to successfully register marks containing UGG along with additional distinctive matter, e.g., UGG REPUBLIC.  However, Deckers counters, US consumers do not recognize UGG as a generic term but instead as a trademark. 

Todd Springthorpe, third generation owner of UGG Since 1974, emphasized its long-standing heritage and commitment to quality in a recent social media video, which has garnered significant attention. 

In the video, Springthorpe states that “it’s extremely hard to fight a lawsuit against a multi-billion-dollar company” and because of the lawsuit, UGG Since 1974 will “transition [it’s] brand to SINCE 74.”

What could UGG Since 1974 have done to prevent this?

Register UGG Internationally 

As its name suggests, UGG Since 1974 began selling sheepskin boots in 1974.  Deckers’ predecessor in interest did not use its mark in the United States until 1979, and Deckers did not apply to register its UGG mark in the United States until the 2000s. 

It’s critical that companies consider current and future plans for sales in conjunction with trademark protection.  If UGG Since 1974 intended to enter the US market, it could have applied to register its mark and prevented Deckers from obtaining a US registration.

Although UGG Since 1974 may not have been using its mark in the United States initially, it could have applied to register its mark based on a bona fide intent to use or by seeking to extend a foreign or International Registration into the United States.  Eventually, UGG Since 1974 would have to demonstrate use of its mark in US commerce in order to maintain its registration, but an early filing would at least provide a foot in the door and the option for future expansion.

Staking a claim to a mark through filings where a company may use its mark could prevent third parties from obtaining a conflicting registration.  Companies should consider these “defensive filings” in certain jurisdictions—in particular, in jurisdictions where bad faith filings are prevalent.  

Conduct Routine Audits

Set aside time on a regular basis to review your existing registered and unregistered trademarks. 

Has your marketing strategy for a certain brand changed in the last year?  Are you selling more of a certain line of goods in particular jurisdictions?  Will you commence sales of an existing good in a new jurisdiction in the near future?

These are just a few examples or considerations that will inform an effective trademark strategy.  Routinely auditing your trademark portfolio may ensure adequate protection is afforded in key jurisdictions.  It could also help cut out brands that have sunset or will shortly and reduce costs.   

Consider the Meaning of Your Mark in Several Jurisdictions

Wolverine did not apply to register any UGG mark in Australia until 2010. 

Because “ugg” is a generic term for sheepskin boots in Australia, this may have dissuaded Wolverine from applying to register an UGG mark in Australia. 

But “ugg” is not a generic term in the United States, and likely not in many other jurisdictions, either. 

When determining the distinctiveness of a mark, a trademark office or court will consider the perceived meaning of the mark by the consumers in which it is located.  Because trademark law is jurisdictional, the views of Australian consumers are irrelevant to determining whether “ugg” is generic in the United States. 

Your mark, or a portion of it, may face registration challenges in one jurisdiction on distinctiveness grounds because of a meaning in that locality.  But that does not mean the same issue will arise in other jurisdictions. 

Therefore, it’s important to understand how consumers in different jurisdictions will perceive your mark.  This is a significant consideration for any business owner considering adopting a new trademark. 

The above are just a few items to consider when developing an international trademark strategy.  It’s critical to give these, and other topics, adequate attention.  Otherwise, you could find yourself sighing “uggh” when you are forced to change your beloved brand name.