It is widely accepted in the United States that generic and descriptive terms cannot be trademarked. So what happens when a descriptive word from a foreign country makes its way to the U.S. and is trademarked by a U.S. company? Are the people from that country then barred from using that term to advertise their products in the U.S., even if they deem the term descriptive?
This is the predicament Australian sheepskin boots manufacturers find themselves in, as they attempt to infiltrate the U.S. market with their “ugg” boots. Here in the U.S., when we think of UGGs, we generally evoke the same image of sheepskin boots made by the specific brand. While “ugg” (or ug or ugh, among other variations) is often used to describe the type of footwear in Australian English, the brand “UGG” is trademarked in the United States.
Should this dispute over the term “ugg” make its way to litigation in the U.S., courts will likely focus on how the intended audience would perceive the word. The trademarking of “UGG” indicates that it has undergone the examination of the United States Patent and Trademark Office. Whether or not a mark may be trademarked follows from whether the mark is likely to restrict usage of commonly used words from or to cause confusion for the public. And so generally, whether a mark may be trademarked depends upon whether it and its use are distinctive enough.
According to the spectrum of distinctiveness set forth in the Second Circuit case, Abercrombie & Fitch v. Hunting World, 537 F.2d 4 (2d Cir. 1976), generic words may never be trademarked, whereas descriptive words may be trademarked only if and when they have acquired distinctiveness (also known as secondary meaning). Suggestive, arbitrary, or fanciful marks may be trademarked without acquiring distinctiveness, for they are inherently distinctive enough to eliminate any confusion as to the source referred to by the mark.
The crux of the Australian argument would lie, then, in whether the term “ugg” has acquired distinctiveness. Indeed, Australian ugg boots manufacturers contend that “uggs” are purely descriptive. But if the enduring popularity of UGG boots is anything to go by, they have certainly acquired distinctiveness in the U.S. UGGs are not used to describe Australian sheepskin boots generally; they evoke the specific type of sheepskin boots worn by many in the dead of winter. Therefore, it is more than likely that courts adjudicating this case will find that UGGs have a secondary meaning that surpasses the descriptiveness of the word.
If Australian boots manufacturers seek to use the term “uggs” as a description, however, and not as a mark used to identify their specific goods, all hope is not lost. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 US 111 (2004) held that while the plaintiff in a trademark infringement suit has the burden of proving consumer confusion, descriptive fair use is an affirmative defense. Indeed, where a term is not used as a mark and it used to describe defendant’s products in good faith, descriptive fair use is permissible. Australian sheepskin boots manufacturers could therefore claim fair use, and their right to use the word “ugg” as a strictly descriptive term will not be inhibited.
This result undoubtedly seems unfair to Australians, who are now restricted from using a word they consider a common, descriptive word in commerce without having to defend themselves from infringement suits by claiming fair use. Because fair use is an affirmative defense to actual infringement, it nonetheless embroils these Australian manufacturers in infringement suits, imposing litigation costs.
Moreover, the identification of “uggs” and their association with the specific brand extends beyond the U.S., as the brand’s reach and popularity endure worldwide. Trademark protection of UGG protects the brand’s economic interests and boosts sales by encouraging customers to associate the mark with the specific brand of footwear. In the present age of globalization and the Internet, this booming business creates a customer base that extends beyond U.S. borders, creating an international market that Australian manufacturers will find difficult to penetrate. This phenomenon is detrimental to Australian manufacturers who look to the international market, having found a relatively inactive market for ugg boots in Australia.
And yet, I think that the inconveniences imposed on the Australian boots manufacturers are outweighed by the benefits of allowing such a protection. Because trademark protection is granted only once secondary meaning has been established in the case of descriptive words, it ensures that there is a strong public association between the UGG boots and the UGG brand before restricting its use by others. This use of the brand as a source marker for the specific boots benefits consumers by saving resources, eliminating the time and effort needed to check thoroughly whether the boots they are buying are UGG brand shoes or simply Australian uggs.
The restriction is, furthermore, strictly only limited to prohibition from use as a source marker. When used in good faith to describe their own goods, fair use remains a defense, and their use of the term “ugg” is protected by the law. And as for use of the term that is good faith, it is ultimately difficult to muster sympathy for those who have consumer confusion as their business objective.
The costs of potential litigation and of difficulties in penetrating the international market for Australian manufacturers are thus balanced against the interest of protecting the public from confusion. I believe that rather than imposing the burden on unsuspecting customers, the burden should be subsumed by the business costs of those seeking to participate in the market, for they are on notice and thus better positioned to respond to this issue through business strategy.
Jongmin Char is a J.D. candidate, 2019, at NYU School of Law.