The UGG Controversy: Trademarking Common Terms

trademark1Did you know those UGG boots you clamor for yearly have been, and in some places still are, the subject of a huge controversy regarding – you guess it – trademarks? Believe it or not, they are – and here’s why.

The Origin of UGG Boots

UGG boots were originally created in the early 1920’s. They were invented by Australian sheep herders and farmers to keep them warm in the cool morning hours. They were then worn by pilots during WWII, to keep warm in their uninsulated cockpits.

As far as the term goes in Australia and New Zealand, where the boots originated, the term “ugg” is a very broad descriptive term used to describe shoes made out of a particular type of sheepskin.

The Controversy

UGG boots weren’t really known far outside of Australia and New Zealand until the 1970’s. At this point, an Australian surfer attempted to trademark and sell them. Later in the year, another surfer introduced the boots to the United States surfing population. He bought the original trademark from the first surfer and registered his own corporation, which he later sold to the Decker Outdoor Corporation.

Decker went on to trademark the term UGG and several related words in more than two dozen different countries, including Australia. They then started telling Australian manufacturers, by sending cease and desist letters, that they could no longer use the term to describe their boots.

Manufacturers in Australia adamantly fought the trademark. They were able to successfully overturn the trademark ruling, but only in Australia. In every other country, the Decker Outdoor Corporation holds the trademark on UGG and all related terms. This is why you see so many companies with knockoff boots – similar in design and style but not called by the same name.

The Problem

In many cases, trademarks applications go unnoticed until it is too late. A group may see a common term or symbol used frequently and may find it is not trademarked. They will file for the trademark, wait until the dispute period is over while hoping no one will find out what they’ve done, and then start sending cease and desist letters. The only way around a trademark, after the dispute period is over, is to prove you’ve been using the words or symbols locally for a reasonable amount of time before the trademark was filed. Even still, your competitor may make your life difficult by spreading rumors about your use of the terminology or symbols, damaging your credibility. In this case, you’ll have to weigh the pros and cons of rebranding or standing your ground.

Talk to a lawyer if you’re not sure about your use of what you think are common terms and symbols. You may want to do some extra research to protect yourself in the long run.

 

 

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