UGGs get UGG-lier: A Trademark War

By Corey May, CEO The Communications Journal, ABA Certified Paralegal, M.S.

Ugglebo Clogs, LLC v. Deckers Outdoor Corp., 0:11-cv-00154 was filed on January 20, 2011 in a Minnesota District Court.  Can Ugs really get Ugg-lier (you are thinking can they get more popular)?

For those of you who are not way deep into trademarks, this is really going to open your eyes.  Ugglebo Clogs contends that they have been selling clogs under the the UGGLEBO brand mark since 1960 and under the Lanham Act for common law unfair competition and deceptive trade practices UGG (Deckers Outdoor Corp.)  is in violation of their mark.

Lanham Act – The trademark act of 1946 setting the rules and guielines for trademark practice in the United States.

Here is where the details become important.  Usually these types of suits claim that the infringement prevents, deters or confuses consumers to avoid commerce or at least create monetary damage.

In this case however, Ugglebo claims that consumers will feel that Ugglebo is trying to knock off or rip off the UGG brand.

Ugglebo argues that UGG is generic for sheepskin wraps that were used by Australian pilots to wrap their feet and legs in the winter from the cold of the unheated airplanes.

Another claim is that Decker (UGGs) has turned a generic term into a brand and that is deceptive trade practices under The Minnesota Deceptive Practices Act.

The $50m Question

What took so long?  If UGGS have been in the US since 1998 and Ugglebo has been making clogs and boots under the name, why didn’t Ugglebo file sooner, in the eyes of the law, “Why did they allow so much damage to occur?”

UGGS defense”  A lache…

Lache – A lache is an equitable defense invoking and asserting that the plaintiff “slept on thier rights” or “did not act on their rights” and therefore the defendant has the right granted because the party or plaintiff has not claimed their rights.

Trademark wars are usually about the damages…the money…the payola!  Let’s see how the judge rules on the lache defense and on the “generic” word turned trademark (and coinsidering t is an Austrailian generic term).  Stay tuned!