When UGG Business Turns Ugly

June 3, 2019

Deckers Outdoor Corporation, the maker of the popular UGG boots, has filed lawsuits against Wal-Mart, Kmart, and Aeropostale (Defendants) alleging they copied the design of its popular fleece-lined boots. Deckers is a recognized brand around the world and has several popular brands such as UGG, Koolaburra, Teva, Sanuk, and Hoka One One.

Deckers argues that the Defendants have infringed design patents for the UGG boots, in particular the “Bailey Button Triplet” boots. The “Bailey Button Triplet” boots are boots that have a “suede exterior, fleece-type lining and overlapping panels with large buttons at the side.” This specific design is Deckers’ “most well-recognized and commercially successful” boots. These styled boots have been featured on various Deckers’ advertising and promotional campaigns, have been featured with various celebrities, and have been featured on popular magazines in the United States and around the world.

Deckers notes that it has spent “substantial time, effort, and money in designing, developing, advertising, promoting, and marketing the UGG brand and its line of footwear embodying the Bailey Button Boot Trade Dress.” In addition, the company has spent millions of dollars in annual advertising, and have sold hundreds of millions of dollars’ worth of products.

Plaintiff argues that the Defendants have made boots that are similar in design and are causing confusion among consumers, which is effecting the company in a substantial way. In particular, Plaintiff asserts five claims against the Defendants: trade dress infringement under 15 U.S.C. § 1125(a); (2) trade dress infringement under California Common Law; (3) unfair competition under California Unfair Business Practices Act; (4) unfair competition under California Common Law; and (5) Patent Infringement.

Deckers ask the court to find that the Defendants did indeed infringe upon Deckers’ boot designs, request an injunctive relief, and to recover damages that they have sustained, and will sustain, including “all gains, profits, and advantages obtained by Defendants as a result of their infringing acts.” The Plaintiffs do not specify a specific amount in their complaint.

Deckers has been on the offensive in trying to reign in several other major retailers for copying its design in an effort to protect its prized footwear line. Back in 2015, Deckers reached a settlement for an undisclosed sum with JCPenny. In addition, they won a $5.2 million jury verdict against Romeo & Juliette in California. Deckers also won a $450,000 jury verdict against Australian Leather Pty Ltd, an Australian footwear company. Australian Leather was unsuccessful in making the argument that the term “UGG” was not a trademark violation because it is a common term for sheepskin boot in Australia.

The Defendants have yet to file an answer.

You can access the dockets, to follow what happens in both lawsuits, below:

Deckers Outdoor Corporation v. Wal-Mart Stores, Inc., et al, 2:19CV04414

Deckers Outdoor Corporation v. Aeropostale, Inc. et al, 2:19CV04411

Image Source: REUTERS/David Gray