By James Tuck
Deckers Outdoor Corp. (Deckers), the owners of the well-known, federally registered trademark for sheepskin boots, “UGG,” recently scored a major victory over its competitor, Australian Leather Ltd. (Australian Leather). A jury in Illinois awarded it $450,000 in damages for the willful infringement of two of its trademarks.
It was not in dispute whether Australian Leather used the “ugg” term to market and sell its own line of sheepskin boots to Americans. The issue was whether the UGG trademark was generic concerning sheepskin boots.
What Is a Generic Mark?
The United States Patent and Trademark Office (USPTO) considers a term to be generic when the relevant purchasing public understands or considers the term to primarily function as the common name for particular goods or services. This is important because a generic term cannot serve as a trademark.
In addition, it cannot be registered on either the Principal Register or the Supplemental Register. For example, aspirin, dry ice, thermos and escalator were once trademarks. Now, they are considered generic for particular goods.
Is “UGG” a Generic Trademark?
Australian Leather argued that the UGG trademark was generic. To undermine this, Deckers provided evidence that the relevant United States consuming public perceived the UGG trademark as identifying the particular source of Deckers sheepskin boots, not as a generic term.
However, there was a wrinkle in Deckers’ defense because the term “ugg boot” is a generic term for sheepskin boots in Australia. Australian Leather argued that the doctrine of foreign equivalents dictated that UGG be treated as generic in the United States as well.
What Is the Doctrine of Foreign Equivalents?
To summarize, the doctrine of foreign equivalents states that the foreign equivalent of an English word that is merely descriptive cannot be registered if the “ordinary American purchaser,” given the context that the purchaser encounters the word, would translate the foreign equivalent into English. When conducting the relevant analysis, the ordinary American purchaser includes individuals that are proficient in the language that the foreign equivalent comes from.
Thus, an Examiner who is evaluating a Spanish word to be used as a trademark by an applicant would consider whether the ordinary American purchaser, including individuals proficient in Spanish, would translate the mark into its merely descriptive English equivalent.
On September 12, 2018, the judge in the UGG case, in response to cross-motions for summary judgment, issued a memorandum opinion and order. This memorandum opinion and order addressed, among other issues, whether, in accordance with the doctrine of foreign equivalents, the term “ugg boot” should be construed as generic for a sheepskin boot for purposes of trademark protect in the United States. While the court acknowledged that ugg was generic for sheepskin boots in Australia and relevant to consumer perceptions in the United States, that fact in and of itself was not enough to infer that the term was generic in the United States.
In its analysis, the court first stated that the doctrine is not a perfect fit for English to English. Then the court informed that the doctrine is “simply an expression of the prohibition on allowing a trademark to monopolize a generic term.” The court then looked to see if the ordinary consumer in America that was familiar with the term’s usage in Australian would perceive that there was only one supplier of ugg-style boots in America because of the UGG trademark.
Finding that Australian Leather had not provided any evidence to support the argument that ordinary American consumers familiar with the Australian context surrounding the use of ugg would perceive only one supplier of that particular good, the court determined that no reasonable jury could conclude that the ugg term was generic in the United States. Following a trial considering other issues, the jury came back in Deckers’ favor.
Questions About Your Trademark? Contact Our Dallas Trademark Lawyers
The dispute between Deckers and Australian Leather demonstrates that the doctrine of foreign equivalents can be tricky if attempting to have it applied to a preexisting trademark. If you have questions about using a foreign term as part of your trademark, or are wondering if your mark may be considered generic, please contact the Dallas trademark attorneys at Carstens & Cahoon, LLP. Call us at 972-528-9039 or contact us online.