The UGG Boots Story: How Recording Your Registered Trademark Can Lead to a Jail Sentence

At the end of September 2017, Shi Wei Zheng, 42, plead guilty to one count of trafficking in counterfeit goods. During a five-month period, Zheng trafficked over 15,000 pairs of counterfeit UGG boots, with a total estimated retail value of over $2.5 million.

Zheng created an elaborate scheme in order to receive and sell counterfeit UGG boots. From September 2016 through February 2017, Zheng received several shipping containers from an individual overseas, of which at least three containers were filled with counterfeit UGG boots. After the containers reached the Port of Entry, in this instance, Port of Newark, Zheng had individuals working at the port, remove the containers from the port before U.S. Customs and Border Patrol (CBP) could examine them. Once removed, the containers were delivered to other individuals, paid by Zheng to distribute the counterfeit boots in New Jersey and other places.

Lucky for the owners of the UGG brand, Deckers Outdoor Corporation (Deckers), CBP halted Zheng’s operation, in part as a result of Decker recording its registered trademark with CBP on June 7, 2016. After the recordation was processed, CBP began a more intense “guard dog watch” of the UGG brand merchandise at all Ports of Entry throughout the U.S. This meant that Deckers exercised its right to protect its word mark “UGG” at all U.S. borders. The recordation of the protected mark ultimately lead CBP to identifying counterfeit UGG merchandise and holding the culprit, Zheng, accountable for violating 18 U.S.C. § 2320, trafficking in counterfeit goods, […]