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I am currently developing a website for a company called Used Guitar Gear and are looking to use UGG throughout their site. They trade in music equipment and only in the UK just now, however, are looking to establish a brand throughout Europe.

Initial research has shown UGG to be a registered trademark of the California-based company Deckers Outdoor Corporation in over 130 countries worldwide, including the U.S., the European Union, and China.

Would using "UGG" in this way be a trademark violation?

  • As a general rule, almost all three letter abbreviations are trademarked by somebody in what could potentially be a global market. Avoid them. – ohwilleke Aug 8 '17 at 20:03
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Trademarks are not global, but for individual markets. For example, a company I worked for employed an "Apple Security" company to provide security guards - nothing that Apple Inc. could do about it because they are in totally different markets.

You would need to check in which markets UGG is a registered trademark. Unless Deckers Outdoor Corporation sells or repairs musical instruments, you should be able to get a registered trademark in that market. The "130 countries" is only relevant if you want to trade in these countries yourself.

PS. When you look at the trademarks that this "Deckers Outdoor Corporation" owns, in the countries that you are interested in, you should find that each trademark is assigned to a market. For example Google tells me that one of their "UGG" trademarks is registered for "Leather And Imitations Of Leather, And Goods Made Of These Materials And Not Included In Other Classes; Animal Skins, Hides; Trunks And Traveling Bags; Umbrellas, Parasols And Walking Sticks; Whips, Harness And Saddlery". If you make any of those, you lose. Used Guitars don't seem to fall into any of those categories (but they have more than one UGG trademark, and I'd avoid making leather or imitation leather cases for your guitars).

Of course you shouldn't trust Google but go to an official source.

PS. I hadn't realised that this company has a highly successful product that is much more famous than the company, and that gets copied a lot, and therefore they are likely willing to litigate quickly and have experience doing it. Being sued is trouble and costs time and money even if you are legally in the right.

  • Am I right to assume then that so long as no other company is using the abb UGG in the music industry or retail then they are free to use it? – Steven Shields Aug 5 '17 at 13:24
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    @StevenShields individualized legal advice is off topic. – phoog Aug 5 '17 at 14:19
  • @phoog I'm not looking for individual legal advice at all I'm trying to gain clarity to what I believe is a murky area and an understanding about something I am limited on. I don't understand how asking if a company is to abbreviate its name and is the same as a registered trademark and a worldwide product would they then be allowed to use it? I would have thought this raised a very valid point for users who have less knowledge than yourself and I would believe I am not the only one to have thought of or even came across this problem before and here is me thinking this was an advice website. – Steven Shields Aug 5 '17 at 15:59
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    @StevenShields discussions of the meaning of trademark protection are on topic. Answering "if ... then they are free to use it" is legal advice. In general, a trademark applies to a particular product or service (for example, Dove soap and Dove chocolate coexist), but famous trademarks can get protection against "dilution," which might prevent one from marketing Toyota watches even if the auto maker hasn't already started doing so. – phoog Aug 5 '17 at 22:08
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The analysis of whether a brand is infringing upon another, in the USA, is based upon one or more factors from a list of 10 or 12 that include similarity of the brands, distinctiveness of the brands, how related are the goods or services, overlap of the market channels, and sophistication of the consumers. When comparing competing uses of an "identical brand" for consumer products, the examiners and courts have less leeway. For comparison: the legally identical (yet distinctive) brands LEXUS and LEXIS were deemed "not likely to create confusion" where BOTH sets of consumers were deemed sophisticated enough "to know the difference" between the products.

Imagine the new brand catches on and they want to start printing it on clothing, which is preempted by the registered brand. Why go down that road?

Also, as noted, "famous" brands may enjoy protection of a broader penumbra than simply "infringement".

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