A trademark functions like an identification badge to distinguish one’s goods and/or services from those of others. When the public regards a trademark as a generic term, the trademark is converted into the name of the goods or services in ordinary parlance so that the mark is no longer uniquely associated with a particular brand and therefore cannot distinguish one’s goods or services from another. This is often referred to as “genericide”. Some examples of genericide include escalator, Yo-Yo and murphy bed, all of which were once exclusive trademarks.
Last year, the United States District Court of the Northern District of Illinois ruled that the UGG mark is not a generic term for sheepskin boots in the US and that the owner of this mark, Deckers Outdoor Corporation (Deckers Outdoor), could enforce its trademark registrations against Australian Leather Pty Ltd (Australian Leather). Interestingly, UGG is a generic word in Australia and New Zealand.
Recently, a federal jury found that Australian Leather willfully infringed Deckers Outdoor’s trademark registrations and willfully used a counterfeit of the UGG mark. The jury awarded $450,000 in damages to Deckers Outdoor on those claims.
To avoid genericide, brand owners should take steps to ensure appropriate trademark use, avoid use in a ubiquitous and generic manner, and enforce trademark rights when necessary.