In response to a trademark infringement lawsuit from American footwear company Deckers Outdoor Corp. (Deckers), Australian family-owned business Wolverine Group Pty Ltd (Wolverine) of “UGG SINCE 1974” dropped “UGG” from their brand name in the United States. Deckers, which owns the UGG brand in the United States, sued Wolverine for alleged trademark infringement and consumer confusion, dilution, and tarnishment of their registered trademarks, among other allegations. Though Wolverine has made and sold their products for 50 years, it recently began selling “ugg” boots in the United States, prompting legal action from Deckers.
Deckers and Wolverine both sell “ugg” boots, a sheepskin boot native to Australia. “Ugg” is considered a generic term in Australia because the Australian public understands “ugg” to be a common term for sheepskin boots, thus preventing Wolverine or Deckers from obtaining trademark protection in Australia for the word “UGG” for sheepskin boots. However, Deckers owns seven registered trademarks for the word mark “UGG” in the United States, two of which are for footwear. Deckers alleged that “UGG” is not considered a generic term in the United States and thus does not prevent it from such trademark protection in the United States.
In a video dated January 15, 2025, Todd Watts, the owner of UGG SINCE 1974, announced that their “ugg” boots would be rebranded as “SINCE 1974” in the United States. Watts stated that this change was in response to ongoing litigation with Deckers and in response to the removal of their social media accounts for several months, following months of pressure from Deckers on TikTok, Facebook, and Instagram.
As of January 26, 2025, the website for UGG SINCE 1974 now states: We are very proud to have absolutely no affiliation with UGG® at all and spend a great deal of our time educating consumers on our standalone, exclusive Australian brand. We do not have, nor have we ever had, a relationship or connection to Deckers Outdoor Corporation.
This outcome is a good reminder for companies to consider an international trademark protection strategy for any countries with current or anticipated sales. An international strategy may include filing trademarks internationally based on jurisdictional marketing strategies, routinely auditing registered and unregistered trademarks internationally, and determining whether the meaning of a trademark differs depending on the jurisdiction.