The Fashion Law Exclusive – Nasty Gal, our favorite design pirate, has filed suit against fellow online retailer, New Nasty. Apparently Nasty Gal is claiming ownership over the word Nasty in Class 35, which extends to online and retail store services in the field of clothing, footwear, headwear, and accessories. The complaint, which was filed in the U.S. District Court for the Central Division of California on Monday, alleges that Charamon Hunter, the creator of New Nasty, is guilty of trademark infringement, cyberpiracy, and deception and unfair trade practices, among other claims, stemming from the unauthorized use of New Nasty. Nasty Gal alleges that Hunter’s use of the word ‘nasty’ on her site “connotes sponsorship or affiliation with Nasty Gal by suggesting the defendant’s business is a ‘new’ version of the plaintiff’s business.”
According to the complaint, “Nasty Gal has received significant and positive press regarding its fashion offerings in major news outlets and widely read blogs,” and Ms. Hunter’s “unauthorized use of the NEW NASTY trade name and trademark … deprives Nasty Gal of the ability to control the consumer perception of the quality of the services marketed under the NASTY GAL mark, and places Nasty Gal’s valuable reputation and goodwill in the hands of others.” In addition to an injunction (which would force Hunter to permanently cease use of the name New Nasty) and ownership of the New Nasty domain name, Nasty Gal seeks actual damages, and requests that the Court grant it “up to three times the amount of its actual damages.”
While it may seem problematic for Nasty Gal that the two parties merely share a common word and that “Nasty” is largely a descriptive term, one that is arguably a perfect term for describing the nature of Nasty Gal’s racy clothing, the burgeoning retailer may actually have a solid claim. We turned to Ron Coleman, partner and commercial litigator at Goetz Fitzpatrick LLP, who said that while the case largely depends on the strength of the NASTY GAL trademark, the Nasty Gal brand may actually have a solid shot here, assuming that the brand has real consumer association and that it has acquired distinctiveness, as it is certainly not inherently distinctive. Coleman stated that he has argued in the past that the likelihood of confusion (the essential question in a trademark infringement lawsuit) is not high in instances where two marks “merely” share a common word, but that may not be the case here.
We also spoke to Charamon Hunter, the defendant, about the pending lawsuit. She said that when Nasty Gal contacted her, she offered to put a disclaimer on her site, stating that NEW NASTY has no affiliation with Nasty Gal. However, Hunter says, “That must not have been enough for them. By now I get the point that they obviously just want me and my company to die and disappear, instead.” Hunter told us she is “trying to wrap her head around the complaint” but said: “By no means am I for corporate bullying, especially from multimillion dollar companies vs. small business owners for their own selfish reasons.” As for the difference in the companies’ sizes, let’s use Twitter presence as a measure: Nasty Gal has nearly 139,000 followers. New Nasty has 180. More to come …