copyright licensing trademark corporate-law
Company name abbreviation matches UGG
<p>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.</p>

<p>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.</p>

<p>Would using "UGG" in this way be a trademark violation?</p>

<p>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. </p>

<p>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. </p>

<p>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). </p>

<p>Of course you shouldn't trust Google but go to an official source.</p>

<p>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. </p>

<p>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. </p>

<p>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?</p>

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