Updated Dec. 8: The U.S. Supreme Court has rejected an Australian footwear maker’s petition to appeal a case involving Deckers Outdoor Corp. and its Ugg brand.
Australian Leather owner Eddie Oygur was previously sued by Deckers for trademark infringement. In 2019, Oygur was ordered to pay $450,000 after a ruling from the District Court for the Northern District of Illinois that determined that he infringed on Deckers’ trademark of the word “Ugg.”
The district court found that, while “ugg” was a generic term in Australia, it did not hold the same meaning in the U.S. It added that the word was not subject to the “doctrine of foreign equivalents” — a general guideline that requires courts and the Trademark Trial and Appeal Board to see whether translated foreign words are registrable as trademarks or confusingly similar with existing trademarks.
In May, the United States Court of Appeals for the Federal Circuit affirmed the decision made in 2019. Oygur told media outlets that he planned to take the case to the Supreme Court after that May ruling.
In September, Oygur tapped former US Solicitor General Seth Waxman to argue its case to the Supreme Court, The New York Post reported. Waxman, previously an administration official for Bill Clinton when he was president, planned to argue on behalf of Australian Leather owner Eddie Oygur against Deckers’ ability to trademark the word “Ugg.”
Now, this petition to appeal has been been denied. FN has reached out to Waxman for a comment.
“Deckers Brands is pleased that the United States Supreme Court declined to review this case, that the findings of the District Court and the Court of Appeals were upheld and that our famous Ugg trademark remains valid,” said Tom Garcia, Deckers Brands’ chief administrative officer in a statement. “This case represents our commitment to protecting our brands and consumers.”
The word “ugg” is commonly used in Australia as a catchall term for sheepskin boots lined with fleece. However, in the U.S., Australian entrepreneur Brian Smith registered the name as a brand in the 1980s, with court documents revealing that Deckers had bought the name from Smith and trademarked “Ugg Australia” in 1995. (It currently holds the trademark in more than 130 countries.) The case could also have wide-ranging ramifications for sheepskin boot makers in Australia that are looking to sell and distribute their products around the world.
“While the case is particularly critical to Australian manufacturers, the legal questions have broad implications for commerce and the use of generic terms across borders,” Waxman told FN in a statement before the appeal was denied.
A number of Australian media outlets referred to the legal conflict as a “David vs. Goliath” battle. The case dates back to 2016, when the California-based retail group sued Oygur and Australian Leather for selling more than a dozen pairs of Ugg boots in the U.S. through his website.
Ugg recorded a 8% jump in sales to $448.4 million in Deckers’ most recent earnings report. Ugg continues to yield a strong base of revenue for Deckers, as its appeal as a year-round brand increases.
This story has been updated.