UGG trade dress ruling fuels debate over 'dupe' culture and brand protection 

As "dupe culture" reshapes consumer shopping habits and social media accelerates the spread of copycat fashion trends, a federal court ruling stripping key UGG boot designs of trade dress protection is fueling debate over how far trademark law should go in protecting iconic styles from lower-cost competitors.

The dispute, set for trial in June in the Northern District of California, pits Deckers Outdoor Corp., the company behind UGG boots, against Quince, a retailer known for offering lower-priced alternatives to premium brands.

But legal experts say the case reaches far beyond footwear, touching on a growing tension between brand exclusivity, consumer demand for affordable alternatives and courts increasingly skeptical of expansive intellectual property claims.

"At the heart of this case is a question courts are confronting more and more often," Kal Raustiala, a professor at UCLA School of Law, explained in an email. "When does a popular design stop functioning as a brand identifier and become a product category in consumers' minds?"

In an October ruling denying summary judgment for Deckers, U.S. District Judge Araceli Martínez-Olguín found that elements of two UGG boot designs had become too common and functional within the footwear market to qualify for trade dress protection. The ruling marked a significant setback for Deckers, which argued that consumers strongly associate the silhouettes with the UGG brand. Deckers Outdoor Corporation v. Last Brand, Inc., 4:23-cv-04850 (N.D. Cal., filed Sept. 21, 2023).

"Because a trade dress with either utilitarian or aesthetic functionality cannot be protected by trademark law, Deckers's motion fails for the independent reason that it has not carried its burden of showing aesthetic nonfunctionality," Martínez-Olguín wrote.

The decision has drawn attention from trademark lawyers because courts historically have been reluctant to strip well-known fashion products of trade dress protection at the summary judgment stage. Kelly W. Cunningham, chair of the Intellectual Property and Technology Department at Ervin Cohen & Jessup LLP, said he was surprised by the ruling, comparing it to litigation he handled involving Vans skate shoes.

Vans "wanted to corner the skate shoe market; they sued Walmart, and my client was supplying the skate shoe to Walmart," Cunningham said in a phone interview.

He said a summary judgment ruling like the one handed down by Martinez-Olguín was "something we could not get" in the Vans case before U.S. Judge David O. Carter in the Central District.

"Does the judge really think that no reasonable jury could conclude that UGG's shoe is a trade dress of UGGs?" Cunningham said, adding that the ruling could face scrutiny on appeal.

Others, however, see the decision as part of a broader judicial recalibration in response to changing consumer behavior and increasingly crowded fashion markets.

"With the rise of TikTok shopping, Instagram, social media and the like, there are so many companies out there competing and trying to offer what we call 'styles for less,'" said Scott P. Shaw, a partner at Merchant & Gould P.C.

Shaw and his law partner, Morgan E. Pietz, said younger consumers have become especially comfortable purchasing lower-cost alternatives to luxury or premium products.

"Gen Z loves dupes," Pietz said. "Disputes like this are going to continue."

That cultural shift may complicate efforts by fashion companies to argue that certain designs uniquely identify a single source. Shaw pointed to brands such as UGG, Birkenstock and Polo as examples of products whose names increasingly function as shorthand for broader product categories rather than specific manufacturers.

"An UGG is not just a brand name," Shaw said. "It's something that is a product category."

Raustiala said the timing of competitor products matters less than whether consumers today perceive a design as generic.

"What matters is whether today the trade dress is too common to serve as a brand identifier," he said.

Deckers nevertheless presented survey evidence that 73% of consumers associated the designs exclusively with the UGG brand, a figure some trademark attorneys say ordinarily would weigh heavily against a finding of genericness.

Erica J. Van Loon, a partner at Armond Wilson LLP, said the survey results suggest strong consumer recognition, though she noted the court focused heavily on whether the designs were aesthetically functional -- a doctrine that can bar trade dress protection even where consumers recognize a brand.

Erica J. Van Loon of Armond Wilson LLP

"Here, the court noted that Deckers failed to adequately address some of Quince's arguments on summary judgment, namely whether the trade dress was 'aesthetically functional,'" Van Loon said in an email.

Angela L. Dunning, an intellectual property partner at Cleary Gottlieb Steen & Hamilton LLP, said the ruling ultimately reflects a longstanding principle of trademark law: protecting consumers from confusion, not granting companies indefinite control over product categories.

"The burden is on the plaintiff to prove that the trade dress is non-functional, that it has acquired secondary meaning as a source identifier," Dunning said in a Zoom interview on Tuesday. "If the plaintiff doesn't come forward to establish those points, then summary judgment is appropriate."

Angela L. Dunning of Cleary Gottlieb Steen & Hamilton LLP

The case also highlights the growing economic pressures shaping consumer purchasing habits. As luxury and premium brands continue raising prices, demand for lower-cost alternatives has surged across social media platforms, where "dupe" recommendations routinely attract millions of views.

"The very highest-end luxury brands are intentionally getting a lot more expensive," Pietz said. "As a result, I think that drives the demand for things that still look nice but are cheaper."

Pietz said those arguments have surfaced before in litigation his firm handled involving Deckers. In prior trade dress litigation, Merchant & Gould argued on behalf of alleged infringers that similar shearling boot designs long predated the UGG brand itself, tracing comparable footwear back to Australian World War I-era pilot gear as well as surf culture.

As the June 10 trial approaches in Deckers' lawsuit against Quince's parent company, Last Brand, legal observers say the outcome could help define how courts balance brand protection against increasingly normalized imitation in the social media era.

For fashion companies, the stakes extend beyond a single boot silhouette. The case may help determine whether iconic designs remain protectable brand assets -- or whether, in the age of "dupes," some of fashion's most recognizable looks have simply become too culturally ubiquitous to own.