Judge Boots Foreign Trademark Genericide Defense

Deckers Outdoor Corp. v. Australian Leather Pty Ltd. (N.D. Ill. Sept. 13, 2018)

Last Thursday, a court in the Northern District of Illinois upheld the trademark “UGG” for wool-lined boots against charges of genericide. The plaintiff’s survey evidence showed that U.S. shoe consumers mostly understand “UGG” to refer to a brand rather than a type of boot. The defendant, however, submitted evidence showing that sheep-skin boots were popular with Australian surfers as far back as the 1970s, many of whom referred to them generically as “ugg boots.” The defendant also presented evidence that some American surfers use the term “ugg boots” generically as well, likely due to overlap in the surfing communities.

None of the defendant’s evidence persuaded the Court. Whether “ugg” was a generic term in Australia was irrelevant, the Court explained, because the defendant did not show “that ugg is, or ever has been, generic among footwear customers in the U.S.—the relevant public.” And the Court likewise dismissed the fact that some American surfers use the term generically because the relevant population of American shoe consumers includes substantially more people than just surfers.

Trademark litigants on both sides of the “v” can learn from this example by ensuring that their trademark evidence targets the correct consumer population, both in scope and geography. As the defendant here learned the hard way, defining the population too narrowly or too remotely might be tempting when it generates more helpful conclusions, but it can backfire and render evidence irrelevant.