Australian Leather Pty. Ltd. v. Deckers Outdoor Corp.

 
DOCKET NO.
OP. BELOW
SUBJECT
Trademark

Question(s) Presented

“For decades, Australians have referred to a style of sheepskin boots using the generic term ‘ugg.’ This generic term came to the United States in the 1960s and 1970s and was used by early adopters, especially in surfer communities, as a generic descriptor. Notwithstanding this generic use in Australia and the United States, the district court held on summary judgment that ‘ugg’ could subsequently be trademarked in the United States. Applying the test for cancelling a trademark that has ‘become’ generic, the court ruled that Petitioner Australian Leather had not shown that the ‘primary significance’ of the term to the general shoe-buying public was generic. The court also questioned whether the doctrine of foreign equivalents, which acts to prevent the trademarking of terms that are generic in a foreign language, applies to generic terms in other English-speaking countries.”

“The questions presented are:”

  1. “Whether a term that is generic in the English-speaking foreign country from which it originated is ineligible for trademark protection in the United States.”
  2. “Whether and, if so, how the ‘primary significance to the relevant public’ standard in 15 U.S.C. ยง 1064(3) for determining whether a registered trademark has ‘become’ generic applies where a term originated as generic before registration.”

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