Launched by Sara Blakely in 2000, Spanx is a well-established women’s shapewear brand with worldwide brand recognition.  Since Spanx’s launch, numerous competitors have flooded the market.  Among them is Yummie Tummie, which was founded by reality TV personality Heather Thomson in 2008.  Yummie Tummie and Spanx are now embroiled in a design patent dispute in the U.S. relating to their slimming tank tops.  This appears to reflect a recent trend of design patent disputes gaining prominence in the fashion world.  One example that hit the headlines last year was Calvin Klein’s alleged infringement  of Lululemon’s signature waistband and design on its yoga pants, which was ultimately settled out of court.

Given the popularity of the Spanx brand, it is perhaps surprising that it is Thomson of Yummie Tummie who has declared war on Spanx — and not the other way round — alleging that three of Spanx’s slimming tank tops are Yummie Tummie knock-offs. 
In January of this year, Thomson wrote a letter to Blakely asking Spanx to cease and desist production.  The following month, Spanx responded with a list of differences between their tank tops and Yummie Tummie’s designs.  Since then, the matter has escalated.  Spanx has asked a judge in Georgia to declare that Spanx has not infringed on any of Yummie Tummie’s patents.  In March of this year, an open letter from Thomson accused Spanx of being a “bully” and dragging the issue into court.  In April, Thomson filed her own complaint for patent infringement.

The crux of the dispute is alleged infringement of design patents.  Put simply, a design patent deals with how a product looks and feels, its shape and visual appeal, rather than how it works (the arena of utility patents).  But, from a practical perspective, it is often simply not worth the time and expense of pursuing perceived infringements given that the fashion industry has a seasonal rotation, and a court ruling may take more time to obtain than the shelf life of the product in question.

However, for clothes and accessories that remain current season after season (such as Spanx’s and Yummie Tummie’s designs), it may make sense, from both a financial and brand protection perspective, to pursue claims for alleged infringement of design patents.  Certainly, by drawing the battle lines against a brand with worldwide recognition, Thomson has increased her own brand recognition.

But, while high-profile litigation can build a brand’s own name recognition and protect its valuable intellectual property, there are downsides, too.  Notably, in patent litigation, offence is often viewed as the best form of defence, so that defendants frequently claim that their opponent’s patents are invalid and should have never been granted in the first place.  If this argument is upheld, the losing party not only suffers an immediate legal loss, it becomes vulnerable to third parties freely copying its designs in the future.  Interestingly, neither Spanx nor Yummie Tummie has used this line of argument — instead their arguments to date have centered on the differences (or lack thereof) between the tank tops, and whether there is infringement of the relevant patents.

Overall, litigants must be confident of their legal claims, for otherwise litigation may result in a costly advertisement, which ultimately does a brand more harm than good.