Fiction Fact
The Australian Trade Mark Office removed UGG from the Australian trademark registry after determining that it was a generic term. Deckers' Australian trade mark registration for UGG AUSTRALIA (Australian Registration No. 785,466) is valid and subsisting. The validity of registration No. 785,466 was challenged, but the Australian Trade Mark Office upheld the registration in the case, Luda Productions Pty Ltd. v. Deckers Outdoor Corp., IP Australia (11 August 2006). In a separate action, the Australian Trade Mark Office removed Deckers' Australian registration for UGH-BOOTS (Reg. No. 245,662) on the grounds that the UGH-BOOTS mark had not been used in Australia, not because the mark was generic. See, UGH-BOOT Non-Use Decision, January 2006, Pars. 29 and 46.
The validity of the UGG mark is in question outside of Australia.
    Deckers holds more than 500 registrations for its UGG trademark in more than 150 countries. These registrations confirm that trademark authorities around the world recognize UGG as a valid trademark. The validity of the UGG mark has also been widely tested and upheld by Courts and other Tribunals on several continents:
  • United States: In federal litigation, an American company selling Australian made "Ug boots" alleged that the UGG trademark was generic. The court disagreed and upheld the validity of the UGG trademark. The judge was particularly impressed with surveys showing that U.S. consumers overwhelmingly recognize UGG as a brand name: "Defendants' evidence fails to demonstrate the term 'UGG' is generic. Moreover, Defendants have ignored the survey evidence . . . clearly demonstrating that the term is not generic . . . 84% (of survey respondents) thought that UGG was a brand name . . . ." UGG Holdings v. Clifford Severn, et al., US District Court, Central District of California, CV-04-1137-JFW (2005), Page 6.
  • Europe: In 2008, a Netherlands dealer of the Australian JUMBO UGG BOOTS brand alleged that Deckers' UGG mark was generic. The Netherlands court considering the issue disagreed: "As for the UGG brand, the objection [to validity] will be stricken down. [Defendants'] motivation for this objection is, stately simply, that Australian companies, such as Jumbo Ugg believe that the word UGG is a generic name. One cannot establish the fact that this is considered a generic name in the Benelux based on the opinion of one or more companies in Australia. . . . The court has no reason to doubt that [UGG] is a well-known brand in the Benelux [Belgium, the Netherlands, and Luxemburg]." Deckers v. La Cheapa et al., Court Dordrecht, 74950 / HA ZA 08-2234 (2008), Pars. 4.6-4.8.
  • Turkey: In 2010, Deckers took action against a company that was infringing the UGG trademark in Turkey. The infringer filed litigation in Ankara asserting that Deckers' trademark was invalid because "UGG" is a generic phrase that describes a type of boot. The Court disagreed and discussed at length the "worldwide recognition of the UGG phrase." The Court further recognized that the UGG trademark is "a well-known trademark" upheld validity. Nesim Faraci Mahdumu Rafael Faraci v. Deckers Outdoor Corp., Decision No. 2011/257, Republic of Turkey, 4th Civil Court of Intellectual Property and Industrial Property Rights of Ankara (2011).
  • China: In 2010, Qingdao Customs seized 5,900 sheepskin boots bearing a label with the term "UGG" in large letters above the term "Grand Australia." The boots were made in China for export to Australia. The exporter argued that UGG was a generic term in Australia and should be ruled generic in China. After receiving evidence and arguments from both parties, the Qingdao Intermediate Court ruled in Deckers' favor and upheld the validity of the UGG trademark. The exporter appealed. The Shandong High Court affirmed noting that the trademark "UGG" in dispute, owned by Deckers was legally approved and registered in the People's Republic of China and is still in force, and that its exclusive right shall be protected under the law within the territory of the People's Republic of China. (Decision at p. 21). In its supporting analysis, the Court recognized the established rule that "a trademark right is territorial and its scope shall be subject to country-level jurisdiction" and that the exporter "failed to provide any evidence certifying that UGG is a generic name of a kind of sheepskin boots in China." (Decision at p. 22). Mengzhou City Guangyu Fur Co., Ltd. v. Deckers Outdoor Corp., The People’s Republic of China, Shandong Higher Peoples Court, Civil Judgment (2011) LMSZZ156.
  • China: In 2010, Yi Di Leather Technology (Shanghai) Co., Ltd. filed an application with China's Trademark Review and Adjudication Board ("TRAB"), seeking to cancel Deckers' Chinese Trademark Reg. No. 880518 for UGG on the basis that the trademark is a generic term for sheepskin boots. The TRAB found that "UGG" is a meaningless combination of letters, and no evidence shows that the industries of shoes, clothing, visors, jackets, T-shirts, etc. on which the disputed mark designates have used that combination as a product name or a model." Id. at 2. Further, TRAB held that the disputed mark possesses the inherent distinctiveness as a trademark, and thus it shall be maintained. Yi Di Leather Technology (Shanghai) Co., Ltd. v. Deckers Outdoor Corp., Trademark Review and Adjudication Board under the State Administration of Industry and Commerce, No. 30872 (2011).
  • Other Countries: Courts and Trademark Offices in many other countries around the world have regularly upheld the validity of the UGG mark and otherwise recognized Deckers rights in the mark. Deckers has prevailed in several such matters in countries including the Benelux countries, Brazil, Chile, China, France, Hungary, Japan, Kazakhstan, Korea, Sweden, Switzerland, Turkey, and the United Kingdom.
  • Famous Mark: The China and Turkey Trademark Authorities have determined that the UGG mark has achieved "well-known" mark status.
  • Internet: Deckers' rights in its UGG trademark are further confirmed by numerous arbitration actions against domain name infringers that Deckers has won against the holders of more than 200 domains that include UGG, including:
Deckers has mounted a campaign against small Australian sheepskin boot dealers. From time to time, some Australia-based websites have attempted to to deceive and confuse consumers outside of Australia, passing off their boots as UGG brand boots. Consumers outside of Australia widely recognize UGG as a brand name. Deckers regularly receives complaints from consumers that have mistakenly purchased Australian "Ugg" boots over the internet believing them to be the genuine UGG® brand. Some Australian dealers also sell knock-offs of popular UGG styles, including the knit Cardy™ and the Bailey Button™ boots. In appropriate circumstances, Deckers takes action against dealers in Australia and elsewhere that are engaged in such deceptive trade practices. Deckers welcomes fair competition and has entered into agreements with some Australian sheepskin boot dealers that facilitate lawful competition.
UGG has been a generic term for sheepskin boots in Australia and New Zealand dating to the mid-1900’s There is no doubt that sheepskin boots have been manufactured in Australia and New Zealand for a very long time. However, use of the "UGG" term is more recent. Australian Trade Mark Office granted Shane Stedman registration No. 245,662 for UGH-BOOT in 1971, and registration No. 373,173 for UGH in 1982, and the New Zealand Trademark Office granted registration No. 99,794 for UGG FOOTWEAR in 1972. The Australian Trade Mark Office has stated, “Prior to registration, the Registrar of Trade Marks considers whether a trade mark has any descriptive or generic meaning that may make it unsuitable for registration. In the event that a mark passes this test, there is an opportunity for a concerned third party to oppose registration on a range of grounds including a belief that the mark is generic. Based on information available at the time, the UGH marks were found to be suitable for registration and in the absence of any successful opposition actions were subsequently registered.”

The “Ugg” term first appeared in the Macquarie dictionary in the early 1980’s, and shortly thereafter Macquarie corrected its entry to show the proprietary trade mark status of UGG.

There is no credible evidence that the “UGG” term was in general use (either a brand, trade name or generic term) prior to Shane Stedman’s adoption and use of the UGH trademark in the late 1960s. Indeed, Shane says he invented it.
Blue Mountains Ugg Boots have been manufacturing “uggs” since 1933. No evidence supports the 1933 claim. The New South Wales business name "BLUE MOUNTAINS UGG BOOTS" No. U9915006 was first registered on 2 September 1998. This company applied to register the Australian trade mark No. 998335 for "BLUE MOUNTAINS UGG BOOTS" on 16 April 2004.
Frank Mortel of Mortels Sheepskin Factory has stated that he began manufacturing “ugg” boots in the late 1950s. No evidence supports the 1950s claim. A search of the Australia company registry reveals that “Mortels Sheepskins” was first registered in 1985 and that “Mortels Sheepskin Factory Pty Ltd” was first registered to do business in 2002.
Some Australian manufacturers were using "Ugg" to describe sheepskin boots in the 1950’s or earlier, with the earliest use traced to World War I Aviators that allegedly wore "flying ugg" boots, and Australian dictionaries have long had entries for UGG. Other than unsupported folklore, no credible evidence of such use is known. The basis for the World War I aviator stories appears to relate to an alleged exhibit at the Canadian War Museum uses the term "fug" to describe sheepskin lined footwear or socks of World War I aviators. Any connection between the term "fug" and "flying ugg," however, is pure speculation. UGG first appeared in the Macquarie dictionary in the early 1980’s, and shortly thereafter Macquarie corrected its entry to show the proprietary trade mark status of UGG. The assertions that UGH or UGG was a generic prior to 1971 is not supported by any dictionaries or other credible sources, and consists mainly of unsubstantiated rumor.
Australian aviators wore "fug" boots in World War I, which is a shortened version of "flying ugg." British WWI pilots are reported to have worn "fug" boots, but there is no evidence of any connection to Australia or to "fug" being a shortened version of "flying ugg." Instead, the invention of "fug" boots is widely attributed to British WWI flying ace Lanoe Hawker. Aerodome Forum explains, ““Fug,” by the way, is a slang term meaning close and fusty, as in the warm stuffiness of an RFC mess (in which, we are told, the windows were never opened, even in summer, because pilots treasured being warm).” “They were basically a kind of hip-wader, but lined with fur or fleece (and sometimes covered that way as well).” See, http://www.theaerodrome.com/forum/other-wwi-aviation/17155-wwi-aviators-clothing-uniforms-2.html. See also, http://www.iwm.org.uk/collections/item/object/30016195, and https://www.storeslider.com/rare-original-wwi-british-royal-flying-corps-fug-221919981102e.html.
If UGG is generic in Australia, it is permissible for Australian companies to promote and sell footwear with an UGG label around the world over the internet. Trademark laws are national. A term might be generic in one country and a valid trademark in others, e.g. HOOVER. The simple fact is that UGG is an established, recognized and protected trademark in the U.S., Canada, the U.K., Europe, China, Japan and Korea, and scores of other countries. Australian dealers that use “UGG” to sell boots on the internet deceive and confuse international consumers and infringe Deckers’ rights. It is unlawful. IP Australia, the Australian Trademark Office, confirmed this in their UGG Boot Fact Sheet which states:

"The Internet provides easy access to global markets and takes no account of national borders. If you are trading on the Internet you need to understand the laws of the country into which you are selling goods or services. If you place an offer for sale on the Internet in Australia that invites purchase from overseas, this can amount to trading overseas and could leave you vulnerable to legal action and expensive litigation."