IP Law Daily, TRADEMARK—N.D. Ill.: Dismissal denied in the UGG footwear trade dress dispute, (Jun 25, 2026)

By Carolin Dennis, B.Sc., LL.B., LL.M.

Dismissal of trade dress infringement claims denied as the maker of UGG footwear adequately alleged likelihood of confusion between an online retailer’s slipper and the UGG Tasman slipper.

The federal district court in Chicago denied a motion to dismiss filed by an online retailer Comfystep in a lawsuit involving infringement of the trade dress, or design, embodied by the UGG Tasman slipper. The district court concluded that the maker of UGG adequately pleaded nonfunctionality, secondary meaning, and that consumers could plausibly confuse Comfystep’s slipper with the UGG Tasman (Deckers Outdoor Corp. v. AKEANH6X696JN, No. 1:25-cv-15281 (N.D. Ill. Jun. 22, 2026)).

Background. Deckers Outdoor Corporation (Deckers) manufactured shoes under the UGG brand, best known for its suede boots. Deckers also makes and sells the UGG Tasman, which resembles a platform-soled slipper version of the more-famous boot. Deckers identified 64 defendants as the proprietors of e-commerce stores operated out of the People’s Republic of China “or other foreign jurisdictions with lax intellectual property enforcement systems” and filed a complaint alleging that these 64 defendants are marketing knock-off versions of its Tasman slipper. Deckers has registered “Tasman” as a trademark, but the defendants have avoided embossing or otherwise applying that mark to their shoes. As such, Deckers alleged an infringement of the trade dress, or design, embodied by the Tasman slipper. Deckers has framed that infringement as violations of the Lanham Act (Count I), and the Illinois Consumer Fraud and Deceptive Business Practices Act (Count II). Most of the defendants Deckers named in its prototypical “Schedule A case” have failed to appear, resulting in, for them, an entry of default. However, one of the defendants’ Comfystep moved to dismiss, arguing under Federal Rule of Civil Procedure 12(b)(6) that Deckers failed to make out the requirements for the protection of a trade dress.

Trade dress infringement. To state a claim for trade dress infringement, Deckers must sufficiently allege three elements: (1) that its trade dress is “nonfunctional;” (2) that it has acquired “secondary meaning;” and (3) that Comfystep’s use of the trade dress is likely to cause confusion among consumers. Comfystep argued in its motion to dismiss that Deckers failed to plead nonfunctionality and secondary meaning. Comfystep also asserted that Deckers failed to plausibly allege likelihood of confusion, a contention it only developed in its reply in support of its motion.

Comfystep’s specific assertion as to nonfunctionality is that every feature of the Tasman slipper is merely functional: suede offers durability; fur lining insulates; braid reinforces seams; and these are dictated by utility, not ornamentation. Deckers argued that it has at least plausibly asserted that some of the features of the Tasman’s trade dress are nonfunctional and that deciding a factual issue like nonfunctionality at the pleading stage is inappropriate. The district court agreed with Deckers that a fact-intensive question like nonfunctionality is usually best addressed further down the line. However, the district court also noted that while a true determination on the issue will depend on further factual development, on their face, certain elements of the Tasman do not seem to be the kind of thing so structurally essential to a slipper that protecting them would “put competitors at a significant non-reputation-related disadvantage.” For example, even a lay person understands that a slipper does not need as a matter of construction to have a raised seam running up the middle of the upper or to have a particular pattern of braid running around the upper’s opening. Which means that those features, even if they might serve some function, are not, on their face, necessarily functional in the trade dress sense.

As to secondary meaning, Comfystep asserted that Deckers’s pleading were purely conclusory and faulted Deckers for failing to append “consumer surveys, sales figures, advertising expenditures, or unsolicited media coverage.” Deckers contended that it sufficiently pled its product’s relationship with the public and that it need not prove that status with surveys or newspaper clippings or other evidence at this stage. The district court noted that because the resolution of the secondary meaning question is fact-intensive, it is best left for resolution after discovery.

Lastly, the district court noted that at the pleading stage, all Deckers needs to have plausibly made out is “that there is ‘a link in the minds of consumers between the product and its source.’” The district court also noted that while Comfystep is correct that Deckers could attach surveys and sales figures, it could also plead “length and manner of use, amount and manner of advertising, volume of sales, and place in the market” which Deckers did. These facts lead to the plausible inference that the average consumer, when they see a Tasman, probably thinks “UGG!”

Accordingly, Comfystep’s motion to dismiss was denied.

The Case is No. 1:25-cv-15281.

Judge: Bucklo, E.

Attorneys: Amy Crout Ziegler (Greer, Burns & Crain Ltd.) for Deckers Outdoor Corp.

Companies: Deckers Outdoor Corp.

Cases: Trademark IllinoisNews