The owner of the UGG footwear brand has sued Wal-Mart, JC Penney, and Sears for allegedly selling knockoffs of UGG boots.
Plaintiff Deckers Outdoor Co.’s suits include causes of actions for:
- federal trademark infringement,
- trade dress infringement
- false designation of origin and false description,
- federal trademark dilution,
- patent infringement, and
- common law trademark infringement and unfair competition.
The complaint noted that it has been 14 years since UGG boots were first featured on Oprah’s Favorite Things® and Oprah Winfrey declared that she “LOOOOOOOVES her UGG boots.” The popularity of the fuzzy boots has since grown, according to the complaint, as they have been embraced by celebrities including Kate Hudson and Sarah Jessica Parker.
The “Bailey Button” style of UGG boots, introduced in 2009, is characterized by:
- suede boot styling,
- overlapping front and rear panels on the side of the boot shaft,
- exposed fleece-type lining edging the overlapping panels and top of the boot shaft, and
- one or more buttons on the side of the boot shaft near the overlapping panels.
The one-button and three-button versions of the boots are covered by US design patents, according to the complaints.
Deckers claims that the defendants knowingly and willfully copied the styles of its Bailey Button boots “in an effort to exploit Deckers’ reputation in the market.”
The complaint alleges that when consumers type “Ugg” into the Wal-Mart website search engine they are directed to boots that are confusingly similar or nearly identical to UGG boots.
According to the complaint,
Wal-Mart’s offering of products in connection with the UGG mark improperly trades off the goodwill Deckers has established in the UGG mark in order to improperly attract customers to Wal-Mart’s competitive products.
Deckers is seeking injunctions against sales of the allegedly infringing boots, along with treble damages based on the defendants’ profits.
Deckers has been active in pursuing UGG counterfeiters. In 2010, its anti-counterfeiting efforts led to the seizure of more than 420,000 pairs of fake boots and the takedown of over 30,000 auction sites selling counterfeit UGG products.
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