April 23, 2014

East Coast Spotlight on Design Patents: Spanx v. Yummie Tummie

Certainly the recent design patent litigation between Apple and Samsung in the Northern District of California garnered significant media attention.  Design patents now reside in the media spotlight once again, but this time through East Coast litigants.  The president of a New York-based maker of women’s control tops that is a named owner of several design patents openly declared that she hopes her Georgia-based competitor “is ready for war because [she] will not lie down.”  The accused infringer actually started the litigation following its receipt of a cease-and-desist letter from the New York company’s legal counsel.

On March 5, 2013, Spanx, Inc. (“Spanx”) filed a declaratory judgment complaint in the Northern District of Georgia against Times Three Clothier, LLC d/b/a Yummie Tummie (“Yummie Tummie”), requesting the court to declare that three Spanx products do not infringe seven design patents claimed to be owned by Yummie Tummie.  The lawsuit has already generated a considerable amount of media coverage, including sources cited below and NBC’s Today Show.

The lawsuit pits two prominent entrepreneurs against one another.  Heather Thomson, the president of Yummie Tummie, is not only the sole inventor named in each of the patents-in-suit (as Heather Thomson Schindler), but was also one of the “Real Housewives of New York.”[1]  Sara Blakely, according to ABC News, “founded Spanx in 2000, introducing what Spanx calls a shaping camisole in 2005,” and is “the youngest woman on Forbes’ billionaires list.”

Referring to an interview Thomson gave to the publication WWD (Women’s Wear Daily), reports:

Thomson told WWD that she first learned of the product this past November when she received an anonymous package containing the Spanx Total Taming Tank and a note saying it was on sale at QVC.  “I immediately recognized it as my original Yummie Tummie tank,” Thomson told WWD.  The unsigned note said Spanx was selling it at QVC.  A spokeswoman for Thomson declined to comment further.

“The Patents-in-Suit are related to one another,” states Spanx’s complaint, “in that [six of the patents] all claim priority to the [oldest] Patent.”  Excerpts from two of these patents appear in Figure 1, below, for purposes of illustration.

The complaint alleges that Yummie Tummie’s counsel sent Spanx a cease-and-desist letter on or around January 18, 2013, identifying the accused products as Spanx’s “Total Taming Tank,” the “Top This Tank Style 1847,” and the “Top This Cami Style 1846.”  (See Figure 2 below, depicting two of those products.)  Spanx responded to that letter on or around February 14, 2013, according to the complaint, “describing in detail significant differences between the Accused Products and the Patents-in-Suit and stating, among other things, that it does not believe the Accused Products infringe the Patents-in-Suit.”

Figure 1: Depictions of Fig. 1 from Yummie Tummie's U.S. Patents Nos. D606,285S (left) and D632,052S (right)

Figure 2: Two accused Spanx products as shown in its website: Styles Nos. 1846 (left) and 1847 (right)

Counsel for each party then communicated with one another several times but, states the complaint, Yummie Tummie “continued to maintain that the Accused Products infringe the Patents-in-Suit and expressed a willingness to enforce its patents against Spanx.”  Thus, Spanx alleges, it has grounds for seeking a declaratory judgment of noninfringement of the Patents-in-Suit.  The complaint requests such declaratory relief plus “costs, expenses, and reasonable attorneys’ fees as provided by law.”

As of the time of this writing, Yummie Tummie has not yet filed a formal answer to the complaint (its allotted time for doing so under procedural rules has not yet expired).  Yummie Tummie has, though, already  issued a public statement regarding the lawsuit.  In a March 14, 2013 letter addressed directly to Blakely and published on Yummie Tummie’s website, Thomson states, among other things: “We brought this to your attention expecting you to stop.  Instead you’ve chosen to sue us, no doubt thinking that your massive company could intimidate ours.  We have successfully enforced our design patents in the past and will continue to do so.”

The case is Spanx, Inc. v. Times Three Clothier, LLC d/b/a Yummie Tummie, No. 1:13-cv-0710-WSD, filed 03/05/13 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, assigned to U.S. District Judge William S. Duffey, Jr.

[1] Coincidentally, the Northern District of Georgia is also the site of a legal battle between two “Real Housewives of Atlanta,” filed just one week after the Spanx lawsuit.  See prior post.

Copyright © 2014 Womble Carlyle Sandridge & Rice, PLLC. All Rights Reserved.

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Established in Winston-Salem in 1876, the firm now comprises 550 lawyers in 14 offices, including Winston-Salem, Charlotte, Greensboro, Research Triangle Park, Raleigh, NC; Atlanta, GA; Charleston, Columbia, Greenville, SC; Tysons Corner, VA; Washington, DC; Baltimore, MD, Wilmington, DE and Silicon Valley, CA..  A full-service business law firm, Womble Carlyle serves a wide range of regional, national and international clients in industries that include health care, life sciences, financial services, commercial real estate, intellectual property/patent, and telecommunications,...


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