The argument may be tough to make in the United States, legal experts say. While uggs may be generic in Australia, Uggs are not in the United States.
“Trademark law tends to be very parochial when it comes to this sort of thing,” said Barton Beebe, a professor of intellectual property law at New York University, in an email. “It only cares about the perception of the relevant consumer population, and in the U.S., the relevant population was not likely and probably still isn’t likely influenced by Australian English.”
Uggs — the generic kind — might seem like an odd place for Australia to plant its cultural flag. But it comes as some in Australia fume about people outside the country appropriating Australian names and ideas. Ms. Winfrey, Kate Moss and Sarah Jessica Parker may have helped make the footwear famous around the world, but many Australians want to call Uggs their own.
“If the French can protect ‘Champagne’, the Portuguese ‘Port’, the Spanish ‘Sherry’ and the Greeks ‘Feta’,” said Nick Xenophon, an Australian senator, in a recent statement, alluding to the brand protections that some famous names enjoy, “then surely Australia can protect the word ‘Ugg.’” (Mr. Xenophon on Friday said he would resign as a senator.)
Uggs came and went from public view in the United States since they were trademarked there, but they won a big boost from Ms. Winfrey, the talk show host, who came out as a fan in the early 2000s. Their roots are more humble. According to Australian trademark officials, they appeared as early as the 1970s in phone directory ads as ug, ugg, ugh boots, among many other variations.
“In Australian slang, ‘ughs’ are sheepskin booties, designed by surfers in the 1960s to coddle feet weary after ‘shooting the curl.’” The New York Times said in 1994.
The brand’s owner in the United States, the Deckers Outdoor Corporation, argues that in the 1990s it bought the American registered name from an Australian entrepreneur, Brian Smith, fair and square. Australians violate the company’s intellectual property rights, it said, when they sell Ugg-like footwear in the United States.
Last year it sued an Australian shoemaker owned by Eddie Oygur in a Chicago federal court, saying he sold ersatz Uggs in the United States. Mr. Oygur sold about $2,000 worth of lowercase ugg boots in the United States over a five-year period, his lawyer said, and believed he had every right to.
“I want to let the American people know what corporate bullies they are and what they’re trying to do – deplete my resources, ruin my business and the whole ugg boot industry,” Mr. Oygur said in his factory in Lidcombe, a Sydney suburb.
Mr. Oygur, 56 years old, plans to take his argument to the court of American public opinion. On Sunday, he said, he plans to join Mr. Xenophon to drive a herd of sheep to Deckers’s headquarters, in Goleta, Calif.
Uggs is not the only Australian name to spur protective feelings — and, potentially, limit the international expansion of Australian companies.
Bondi Wash, a Sydney company that makes natural baby lotions, soaps and dog rinses, groused that it was denied a trademark in the United States because of a similar name held by Abercrombie & Fitch. Bondi, a long crescent of white sand in Sydney, is one of Australia’s most famous beaches.
“They didn’t really care that Bondi was actually quite a well known place in Australia and they’d awarded it to a big U.S. company,” said Belinda Everingham, founder of Bondi Wash, referring to the United States Patent and Trademark Office.
Uluru, the name of an immense rock formation in central Australia, is trademarked in the United States by a California carpet company. Kakadu, the name of a national park, is claimed by a number of companies in the United States.
“Certain words really belong in the public domain,” said Matthew Rimmer, an intellectual property and innovation professor at Queensland University of Technology’s law school. “There’s a certain Australian pride in the ugg boot, and a belief that it is a common article of clothing in Australia and resentment over it being claimed by a United States trademark holder.”
Mr. Oygur’s company, Australian Leather, hopes to undercut Deckers’s argument by saying Uggs were once uggs in the United States too before they were improperly registered as a trademark. To bolster its argument it tapped Mr. Carroll and another famous surfer, John Arnold, who said he exported large volumes of ugg boots to the United States beginning in the late 1960s.
“My honest opinion is that the term ‘Ugg boot’ is not something that should be owned as it is a description,” said Mr. Carroll, who said he believed the name first came from Australian surfers who thought they were ugly.
“A boot that was ugly,” he said. “That is different from a brand name.”
Continue reading the main story