As predicted, the other shoe (a Jimmy Choo pump perhaps?) dropped this week in the shapewear patent battle between women’s tank top makers Yummie Tummie and Spanx. On Tuesday, Yummie Tummie filed a lawsuit in the Southern District of New York against Spanx formally accusing their competitor of infringing seven of Yummie Tummie’s design patents.
For those of you following the story to date, Yummie Tummie fired the first shot by sending a cease and desist letter to Spanx on January 18th (a copy of this letter can be downloaded here). In the letter, Yummie Tummie lists seven of their design patents and claim that, “The designs, consisting of three panels, of the Tanks/Cami are so similar to the designs claimed in the Patents that any ordinary consumer would be deceived into believing that the Tanks/Cami are, in fact, Yummie’s patented designs and, thus, infringe the Patents.” Spanx responded to the letter by asking for some time to explore the allegations. Spanx then asked for another extension to finish their investigation before responding and instead filed a lawsuit seeking Declaratory Relief in their home court, the Northern District of Georgia, Atlanta Division.
When word got out that Spanx filed a lawsuit it created a media frenzy which started with the Atlanta Business Chronicle (which posted a story a few days after my initial posting) and then quickly spread to Women’s Wear Daily and The Huffington Post. From there the story was picked up by almost all of the major news outlets and caused Yummie Tummie Founder Heather Thomson to suggest that Spanx had better be ready for “war”. Thomson also went so far as to call Spanx a “bully” and to initiate a Twitter hashtag campaign entitled #shameonyouspanx.
All of this made Thomson and Yummie Tummie out to be the victim when in reality they initiated the issue with the Cease and Desist Letter and have a history of litigious behavior having previously filed design infringement lawsuits against Maidenform and LF USA.
The Twitter campaign must not have had much of an effect since on Tuesday Yummie Tummie responded to the Spanx DJ by formally filing a design patent infringement lawsuit in the Southern District of New York. In the suit, Yummie Tummie has dropped three of the design patents (USD632,051, USD632,052 & USD632,053) used in the letter and replaced them with two recently granted US design patents (USD665,558 & USD666,384) that are not covered in the Declaratory Relief lawsuit filed by Spanx. In Round Two of this battle, the gloves are officially off since Yummie Tummie has gone from insinuating patent infringement in a letter, to actually filing a lawsuit of their own.
The complaint is fairly standard legal fair but Yummie Tummie does go to the trouble to share with the court that Ms. Thomson has designed clothing for the likes of Sean Combs, Jennifer Lopez and Beyonce Knowles and that her products can be found on the shelves at Saks Fifth Avenue, Nordstrom, Bloomingdale’s and Lord and Taylor. The complaint also suggests that Spanx “intends to continue its willful and intentional infringement of Yummie Tummie’s design patents” since Yummie Tummie agreed to the requests for multiple extensions of time to respond to the initial letter in good faith believing that Spanx intended to resolve the matter. Instead Spanx filed the DJ without notice to Yummie Tummie.
As mentioned previously, Yummie Tummie has a history of asserting their patents so you can’t really blame Spanx for filing the first lawsuit. It might have been a bit sneaky to file a DJ while carrying on discussions but hey, that’s life in the big city and you can’t blame Spanx for trying to secure a “home field” advantage. Now that Yummie Tummie has filed their own lawsuit they really can’t cry victim any longer and since they added additional patents which are not covered by the DJ they may see some of this case decided in their home court in New York.