On the heels of the most recent presidential debate, during which Republican hopeful Donald Trump called his opponent, Hillary Clinton, "a nasty woman,” Mike Lin, a Los Angeles-based entrepreneur, slapped “Nasty Woman” on t-shirts and began selling them on his e-commerce site. Additionally, on the evening of the debate, Lin filed an application for registration on behalf of his company, 47 / 72, for the “Nasty Woman” mark with the U.S. Patent and Trademark Office (“USPTO”) for use in connection with “On-line retail store services featuring clothing, posters, pillows, mugs, bags, and mobile electronics cases and covers.”
Not surprisingly, Lin is hardly the only one who has taken to monetizing the much-publicized excerpt from the debate. In noting his intention to vigilantly police all unauthorized uses of his mark, which is firmly within the role of the trademark holder, Lin told TMZ that Etsy sellers, among others, have been using the trademark without his authorization. Another potential target for Lin: Nasty Gal. The Los Angeles-based brand has introduced a “Nasty Woman” collection of t-shirts and tote bags, which have been selling out pretty quickly on the notorious copycat’s site. The same goes for New Orleans-based Google Ghost, a “one-woman grassroots operation that went viral overnight” a week ago when Katy Perry and Will Ferrell wore the brand’s “Nasty Woman” tees.
Note: Nasty Gal might actually be in the clear here. As the USPTO notes in its “Basic Facts” trademark primer, “marks [that] convey a similar general meaning and produce the same mental reaction” – such as “City Woman” versus “City Girl,” an example the USPTO lists – will be deemed similar and thus, the secondary mark may not be eligible for registration with the USPTO. Since Nasty Gal already has an array of registrations for its “Nasty Gal” mark that long pre-date Lin’s usage of the “Nasty Woman” mark, including one for online retail services, it might be impossible for Lin to successfully sue the brand for infringement and also to register its “Nasty Woman” mark altogether.
The latter point is especially relevant, as just because Lin has filed a trademark application does not mean he will necessarily be awarded a federal registration. Having said that, simply lacking a federal registration does not mean that one does not have trademark rights. He very well could enjoy common law trademark rights on a state-by-state basis already without a federal registration.
As of now, it does not appear that Lin has filed any common law trademark infringement lawsuits. As for how he intends to utilize the Digital Millennium Copyright Act (“DMCA”)’s takedown proceedings to aid his fight against alleged infringers, as he noted he intends to do in the TMZ video, is up for debate. For the uninitiated, the DMCA is a copyright law that went into effect in 2000. Among other things, it addresses the rights and obligations of owners of copyrighted material, who believe their rights under U.S. copyright law have been infringed, particularly, on the Internet. Its “notice and takedown” procedures give copyright holders a quick and easy way to disable access to allegedly infringing content.
If Lin had copyright protected designs that online retailers were replicating, the DMCA takedown procedure may be a viable option for him. However, since what he is claiming is trademark infringement, he seems to be a bit off in terms of the recourse offered in light of such alleged infringement.
Not surprisingly, since the DMCA governs copyright law, its takedown notices may not be used interchangeably for copyright infringement and trademark infringement matters. As we saw in 2014 in connection with a trademark infringement case over the term “CrossFit,” the U.S. District Court for the Northern District of California held that a party’s use of a DMCA takedown notice to resolve a trademark matter may violate § 512(f) of the DMCA, which bars DMCA-relying parties from making “material misrepresentations” in the DMCA takedown notice. According to the court, utilizing a DCMA for non-copyright infringement purposes, including as a remedy for trademark infringement, is the equivalent of making a material misrepresentation.
The lesson from CrossFit, Inc. v. Alvies, No. 13–3771, 2014 WL 251760 (N.D. Cal. Jan. 22, 2014) case is that a DMCA takedown notice should be used only to address copyright violations. With this in mind, Lin should stick with a plain old cease and desist letter if he decides to pursue legal action.