UGG Australia

UGG Australia

Founded	1978
Founder(s)	Brian Smith
Headquarters	Flagstaff, Arizona, U.S.
Area served	Worldwide
Products	Footwear, accessories
Website	www.uggaustralia.com

UGG Australia is an American footwear company and is a division of the Deckers Outdoor Corporation, Goleta, California.

A pair of UGG Australia boots

UGG Australia footwear is manufactured in China. UGG is a registered trademark in the United States and over 100 other countries for their brand of sheepskin boots and other footwear, as well as bags, clothing, outerwear and other goods. Deckers also owns registrations for their UGG AUSTRALIA brand in various countries around the world.

The UGG Australia brand is best known for its "Classic" sheepskin boots in the Australian ugg boot style, worn by both men and women. Sheepskin boots have been identified as a fashion trend for men and women since the early 2000s. The range has expanded to include not only footwear, but UGG brand bags, clothing, outerwear, hats, gloves and other goods. Deckers has reported sales of US$689 million under the UGG brand in 2008, an increase from US$14.5 million in 1995.

History

By the mid-1970s, several surf shops in Santa Cruz, California and the San Fernando Valley were selling Ugg boots purchased by the shops owners while visiting surfing events in Australia. Seeing the success of the boots in the U.S., in 1978, Australian surfer Brian Smith, then living in Santa Monica, California, and Doug Jensen applied to be the United States distributors for the Western Australian Ugg boot manufacturer, Country Leather. Family friends invested $20,000 into the new venture and the group set up Ugg Imports. In their first season in business, Ugg Imports sold 28 pairs of boots. Due to other business committments, in 1979 Jenson handed over his share of the company to Smith. Sales steadily grew with Smith trademarking the name "Ugg" in the U.S. and registering as Ugg Holdings Inc. In 1995 Deckers Outdoor acquired the business and continued to expand it. Sheepskin boots are now very popular worldwide.

Trademark controversy

In Australia and the United States, Deckers' rights in the UGG mark have been challenged, with differing outcomes. In 1971, Shane Steadman registered the trademark UGH-BOOT on the Australian Trade Mark Registry, and obtained an Australian registration for UGH in 1982. These registrations remained valid in Australia until removed for non-use in 2006. Steadman sold his UGH brand boots widely in Australia throughout the 1970s and 1980s.^{[citation needed]} This registration was subsequently sold to Deckers Outdoor Corporation, which also registered other trademarks including the UGG AUSTRALIA label (with sun-like device) in Australia.

Bruce and Bronwyn McDougall, owners of Uggs-N-Rugs, a Western Australia-based manufacturer, started legal action against the UGH-BOOTS registration in 2005. Specifically, they brought a non-use action against Deckers alleging that Deckers had not actively used the UGH-BOOT trademark in Australian commerce for the past three years. Their action was successful, and the UGH-BOOT registration was removed from the Australian Trademark Registry. In their reasons, the officer states:

The opponent has not demonstrated any use of the trade mark as registered, whether before, during, or after the period in question. In fact, read closely, Mr Kalinich’s sworn statement, above, appears to affirm that the opponent has not used the trade mark as registered.

In a second non-use action between Deckers and Luda Production Pty, IP Australia confirmed that Deckers owned the trademark of their UGG AUSTRALIA label (with sun-like device), however the scope of the trademark was narrowed, restricted to just footwear. In their decision, the officer states:

I am satisfied that there has been genuine commercial use of the trade mark in relation to the following goods: footwear, including boots, shoes and clogs. Subject to any appeal from this decision, I direct that after 28 days from this decision, the trade mark registration be restricted to these goods.

Finally, in 2010, IP Australian ruled on a dispute dating back to 2004. The decision rejected Deckers Outdoor Corporation Inc's objections, and granted Luda Production Pty Ltd the right to move to the registration phase of their UGG AUSTRALIA and MADE BY UGG AUSTRALIA labels and the phrase MADE BY UGG AUSTRALIA, subject to appeal. In their decision, the officer specifically refers to the phrase UGG AUSTRALIA:

The applicant [Luda Productions Pty Ltd] has attested to use of the words ‘UGG Australia’ in various forms over the years. None of the versions are particularly embellished, though some are accompanied by various descriptive additions. All the various versions provided as examples in the evidence of use fall into the category of substantially identical trade marks. All are clearly identified via the words ‘UGG Australia’. There is no other significant identifying feature in any of the applicant’s trade marks when in use. I am satisfied that the applicant has substantiated appropriate use for the provisions of subsection 44(4), and that it is thus appropriate to apply that subsection in the applicant’s favour.

Deckers Outdoor Corporation holds registrations for the UGG trademark in the United States, China and the European Union and 100+^{[citation needed]} other countries. The validity of the UGG trademark outside of Australia has also been challenged, but courts have consistently upheld its validity. 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 United States consider UGG to be a brand name. A similar challenge was also rejected in the Netherlands, where the court ruled that UGG is a well-known brand in the Benelux economic zone. In that case the court stated: "... the objection (to validity) will be stricken down. [Defendant's argument is] 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 Benelux based on the opinion of one or more companies in Australia. ... therefore, the legitimacy of the brand is upheld. The court has no reason to doubt that [UGG] is a well-known brand in Benelux."

Likewise, the National Arbitration Forum, which has been appointed by ICANN to resolve most Internet domain name disputes, has used Deckers Outdoor Corporation ownership of the UGG trademark in the United States as part of its decision to direct Internet domains containing UGG to be transferred to Deckers.

Pending USA cases

On December 25, 2010, Deckers Outdoor Corporation filed a trademark infringement suit in a bid to stop Emu Australia from using the UGG name on its sales website (.com). On December 30, Emu Australia counter-sued for the cancellation of Decker's UGG trademark in the U.S. Emu's suit alleges that Decker's trademark was obtained after a false statement to the U.S. Trademark Office and was therefore invalid.

On February 10, 2011, Ugglebo Clogs filed suit against Deckers Outdoor Corp with allegations of unfair competition and deceptive trade practices based on Deckers’ use of the UGG trademark for clogs and footwear. In the suit Ugglebo alleges that through "aggressive litigation, coincidence, and advertising, Defendant has successfully converted "ugg" from a generic term for sheepskin boots in Australia into a trademark for boots in the United States. Furthermore, Defendant has now extended the trademark to many non-boot footwear products such as, for example clogs, slippers and moccasins, as well as non-sheepskin." The suit also alleges reverse confusion, a situation where the senior user’s mark (Ugglebo) becomes dwarfed by the junior user’s mark (Decker), causing consumers to presume the senior user to be the infringer. Ugglebo brand clogs have been manufactured since 1965.

Counterfeiting

During a trademark infringement and trade dress case, a generic term defense was rejected by a Dutch court. La Cheapa distributed sheepskin boots on an Internet site from the Netherlands, describing them on its website as "100% authentic Ugg Australian boots!!!" with "UGG logo on the heel" in boxes virtually identical to Deckers packaging. Ruling in favor of Deckers with costs awarded against La Cheapa, the officer who heard the case stated it cannot establish as fact that "ugg" is considered a generic name in the Benelux, based on the opinion of one or more companies in Australia. The case is binding law throughout much of Western Europe under the Madrid Protocol.^{[citation needed]}

Law enforcement officials in Great Britain, the U.S. and China have reported seizures of counterfeit 'UGG Australia' boots. Deckers continually monitors usage of the UGG trademark on the World Wide Web, taking action against auctions and websites that infringe its trademark. The Australian Trade Marks Office, IP Australia cautions:

"A trade mark registered under Australia's trade mark laws only provides rights for trade within Australia's borders. Trade mark laws are national laws and each country registers and protects trade marks within their own jurisdiction."

"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. Likewise an overseas proprietor selling goods in Australia via the Internet may infringe an Australian trade mark."

In response to counterfeits being sold on the Internet, people of various ages and nationalities have generated websites, blogs and videos on how to spot fake 'UGG Australia' boots.

Concern for animals

Being one of many clothing products made from animal skin, the production of ugg boots has been the subject of criticism by the animal liberation movement. In the decade beginning in 2000, the group called for the boycott of ugg boots and their replacement with alternatives not made from animal skin.

In 2007, Pamela Anderson, realising that ugg boots were made of skin, wrote on her website: "I thought they were shaved kindly? People like to tell me all the time that I started that trend — yikes! Well let's start a new one — do NOT buy Uggs! Buy Stella McCartney or juicy boots." In February 2008, the Princeton Animal Welfare Society staged a campus protest against the fur industry, particularly attacking the ugg boot industry. "Students lay in the newly fallen snow on the Frist Campus Center's North Front Lawn on Friday afternoon, feigning death, wearing coats covered with fake blood and sporting signs that read, 'What if you were killed for your coat?' "

See also

• Bearpaw (footwear)
• EMU Australia
• Pacific Sheepskins

External links

• Official website
• The Good, The Bad and the Ugg Boot Study
• The Good, The Bad and the Ugg Boot 2006 documentary film on the trademark dispute (see also Australian Film Commission database)
• "Putting the Boot In", Sydney Morning Herald, 13 March 2004
• Direction to remove 245662 (UGH-BOOTS) from the Register of Trade Marks. Trademarks Act 1995: Decision of a Delegate of the Registrar of Trademarks with Reasons: Findings of Australian Trademark Hearing. 16 January 2006. (PDF file)