U.S. Supreme Court Won’t Review UGG Maker’s Trademark Win – Reuters

A Decker Brands UGG boot is shown in the photo illustration in Encinitas, California, U.S., May 17, 2017. REUTERS/Mike Blake

UGG boot maker Deckers Outdoor Corp has cemented its litigation victory over an Australian company’s trademark claims, after the U.S. Supreme Court on Monday denied a petition for review that had been supported by the Australian government.

The high court rejected Australian Leather Pty Ltd’s argument that “ugg” wasn’t entitled to trademark protection because it has been a generic term for sheepskin boots in Australia since the late 1960s.

A federal jury in Chicago found in 2019 that Australian Leather’s use of the name “ugg” for boots infringed Goleta, California-based Deckers’ trademarks, awarding Deckers $450,000. U.S. District Judge Manish Shah had ruled for Deckers in 2018 on Australian Leather’s claim that “ugg” was generic, finding the term’s status in Australia didn’t affect whether it was entitled to U.S. trademark protection.

Shah also said a U.S. trademark doctrine invoked by Australian Leather, the doctrine of foreign equivalents, is “not a perfect fit for English to English, and is generally used to analyze non-English terms used in the American marketplace.”

The U.S. Court of Appeals for the Federal Circuit rejected Australian Leather’s appeal in a two-sentence order earlier this year. Australian Leather, represented by Seth Waxman of Wilmer Cutler Pickering Hale and Dorr, told the high court that the appeals court had created a circuit split on when a term is ineligible for U.S. trademark protection because it’s generic in another country.

The Australian government said in a brief backing Australian Leather that it was “concerned with the apparent discriminatory treatment that Australian goods would receive from a rule that prevents the trademarking of the generic terms of only non-English speaking countries.”

Waxman didn’t immediately respond to a request for comment, nor did the Australian government or its attorney Donald Baker.

Deckers didn’t file a response to Australian Leather’s petition, and also didn’t immediately respond to a request for comment.

The case is Australian Leather Pty Ltd v. Deckers Outdoor Corp, U.S. Supreme Court, No. 21-513.

For Australian Leather: Seth Waxman of Wilmer Cutler Pickering Hale and Dorr; and Mark Bagley of Tolpin & Partners

For the Australian government: Donald Baker of Baker & Miller

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