AN ILLUSTRATIVE CASE OF RE-BRANDING 

Almost everyone has seen someone wearing the ubiquitous “UGG boots,” which are made of Australian sheepskin and recognizable by their quirky and unique design. But the uggs history is much more complex than consumers simply loving or hating the iconic footwear. 

Origin of The Ugg 

The distinctive shape and design of the shoes and boots originated in Australia, when sheep shearers and workers would strap sheepskin to their legs and feet for warmth.  This practice led to the Aussie “invention” of the “ugg boots” that we see today.  

In the Land Down Under, the word “ugg” is used to describe the distinctive sheepskin boots and shoes much as words like “sandals” or “tennis shoes” are used to describe those specific types of footwear.   

Australian legend has it that the term “ugg” came into being as a descriptor of these native constructs because they were “ugly.” Either way, the surfers of the country grew to love the shoes and boots for their warmth and durability, raising their profile above the boots’ former farm and (reported) military uses. Love them or hate them, today, the “uggs” original Aussie designs have built a die-hard fan base worldwide. 

The UGG Brand  

UGG-branded shoes and boots were first widely introduced to the United States by an Australian businessman in the 1970’s. After obtaining trademark protection for the word UGG with regard to footwear, the businessman went on to sell the U.S. trademark registration and it ultimately ended up belonging to Deckers Outdoor Corporation (“Deckers”), along with a number of other UGG trademarks for items such as chemical cleaners for the sheepskin boots and shoes, wallets and purses and household décor. 

Today, Deckers maintains its UGG marks in the United States and elsewhere, including the European Union and many countries in Africa, Asia and South America, as well as its original (and acquired) North American marks and brand names. 

Meanwhile, In Australia 

In its home country of Australia, the term “ugg” is treated a bit differently. A few companies, including Deckers, maintain various design marks for different stylized presentations of the word UGG in Australia, but the word mark itself is un-registerable in its country of origin because it has been deemed to be generic.   

IP Australia, the country’s equivalent of the United States Patent and Trademark Office that oversees patent and trademark registrations, ruled in 1995 and again in 2016 that the term was indeed generic in Australia. Based on its ruling, IP Australia cancelled a number of then-existing Australian trademark registrations for the term due to the fact that “ugg” was merely describing the general style of shoes and boots that is recognized by the public in Australia. These marks included “UGH-BOOTS,” “UGG BOOTS” and “UG BOOTS,” which are considered to be phonetic equivalents (as in, legally the same mark) in the United States. As such, these marks would already be un-registerable in the U.S. due to Decker’s existing UGG trademarks. 

So Where Does That Leave UGG? 

The upshot of recent rulings against “ugg” sellers in the United States means that the “original” version of the boots sold in the U.S. will now go by the brand name of “SINCE 74.” Previously, the company had used the full brand name of “UGG SINCE 74,” to denote the year that the company was established. 

There are still many other makers and sellers of the ugg-style of boots and shoes in Australia that use the word “ugg” in their brand name. This is allowed for all of them, in the same way that many companies in the United States can and do use words like “shoes,” “computers,” or “foods” in their business name, as these words are also generic. 

In the United States and the other countries where the term “ugg” is not deemed to be generic and where Deckers has obtained trademark protection for its UGG brand, Deckers is the only company that is now selling true “UGG brand” footwear. 

The lesson here is that trademark protection is vital to your brand. Early and widespread registration of your mark will help ensure that your business does not find itself saying “ugh” (or “ugg”) and having to undergo an entire re-brand after more than fifty years. 

Need trademark advice, help trademarking a business or a business name? Contact us at Sand, Sebolt & Wernow Co., LPA. We’re an IP law firm, handling patents, trademarks, copyrights, IP (intellectual property) litigation licensing, foreign filings and trade secrets.