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As reported by my colleague and long-time blogger, Marty Schwimmer, a Minnesota company named UGGLEBO Clogs, LLC, filed suit last Thursday against Deckers Outdoor Corp. The suit alleges unfair competition and deceptive trade practices based on Deckers’ use of the UGG trademark for clogs and footwear.
The UGGLEBO Complaint asserts:[framed_box]Ugglebo brand clogs have been made and sold by the same family in Sweden for close to 50 years. The brand was created by the Carlsson family in1965 and many family members in Sweden and the United States have worked in the business since its inception. During the late 1960’s, Christer Carlsson joined and began managing the family business, and he remains an integral part of the hand-crafted clog making process, spending most of his day teaching and crafting clogs directly. He remains responsible for the manufacture of the clogs to this day.[/framed_box]
The suit continues . . .[framed_box]Through aggressive litigation, coincidence, and advertising, Defendant has successfully converted “ugg” from a generic term for sheepskin boots in Australia into a trademark for boots in the United States. Furthermore, Defendant has now extended the trademark to many non-boot footwear products such as, for example clogs, slippers and moccasins, as well as non-sheepskin[/framed_box]
The suit then alleges that Deckers has known about the prior use of the Ugglebo brand since at least 1999, when the Carlsson family launched its Ugglebo website. The complaint does not state whether the brand owners had any interaction prior to this suit, though I presume that they have.
Although not expressly stated, this suit pursues a theory of progressive encroachment, which occurs when a trademark use expands over time to result in infringement. In this case, Ugglebo claims that UGGs expansion from sheepskin boots to other footwear, especially clogs, is likely to cause consumer confusion. The suit also asserts reverse confusion, which happens when the senior/prior user’s mark becomes dwarfed by the junior user’s mark, causing consumers to presume the senior user to be the infringer.
It will be interesting to see how this case goes. I anticipate that Deckers will file an answer asserting laches and acquiescence, which essentially mean that the plaintiff waited too long to assert its rights. In this case, Ugglebo alleged that Deckers knew about Ugglebo’s prior rights since 1999. It’s hard to imagine what legitimate reason Ugglebo had to wait eleven years to file suit. We, however, we will have to wait to learn Ugglebo’s reasoning in this regard, and more importantly, whether the court buys it.
BrandGeek BrandBite: When selecting trademarks, brand owners must consider short and long term plans for their brands to ensure that all anticipated uses will not be problematic.