spanx v yummie tummie - motion to transfer

-1- NY 74511497

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF GEORGIA

ATLANTA DIVISION

SPANX, INC., ) ) Plaintiff, ) Case No. 13-CV-00710-WSD ) v. ) ) TIMES THREE CLOTHIER, LLC ) d/b/a Yummie Tummie, ) ) Defendant. )

DEFENDANT TIMES THREE CLOTHIER, LLC’S MOTION TO TRANSFER, OR, IN THE ALTERNATIVE, STAY THIS ACTION

Defendant Times Three Clothier, LLC (“Yummie Tummie”) hereby moves

to transfer the Complaint in the instant action (“the Georgia Action”) filed by

Plaintiff Spanx, Inc. (“Spanx”) requesting declaratory relief of non-infringement

and invalidity to the Southern District of New York, where a virtually identical

action, entitled Times Three Clothier, LLC v. Spanx, Inc., Civil Action No. 13-cv-

2157 (“the New York Action”), is currently pending. In the alternative, Yummie

Tummie seeks to stay the instant action, so that the New York Action may

proceed.

Case 1:13-cv-00710-WSD Document 4 Filed 04/02/13 of 6

-2- NY 74511497

In support of the instant Motion, Yummie Tummie annexes its

Memorandum of Law in support hereof and the Declarations of Laura Goldbard

George and Richard Rothfeld.

The communications between the parties leading to Spanx’s filing of the

Georgia Action evidences the bad faith anticipatory nature of the Georgia Action.

After an initial exchange of correspondence outlining the parties’ respective

positions regarding Yummie Tummie’s claims of infringement against Spanx, the

parties engaged in pre-suit settlement negotiations. The very same day that

counsel for Spanx proposed a possible framework for an amicable resolution,

Spanx filed the instant Action against Yummie Tummie, without any indication

that settlement negotiations were being terminated.

Spanx’s actions clearly indicate that Spanx intended to mislead Yummie

Tummie and delay Yummie Tummie from filing suit, so that Spanx could choose

its own forum. This Court should not reward Spanx’s bad faith behavior, and thus

should transfer or, in the alternative, stay the Georgia Action.

Moreover, the Southern District of New York is the most convenient forum

to hear this dispute. As discussed in more detail in Yummie Tummie’s

Memorandum of Law, key witnesses and documents are located in the New York

metropolitan area, Spanx has significant contacts with New York and Spanx is the


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party best placed to absorb the costs of litigation. Accordingly, Spanx will not be

inconvenienced by litigating in New York, rather than in the Northern District of

Georgia.

CONCLUSION

For the forgoing reasons, and those set forth in Defendant Times Three

Clothier, LLC’s Memorandum of Law, Yummie Tummie requests that the Court

exercise its discretion and transfer the Georgia Action to the Southern District of

New York, or, in the alternative, stay these proceedings in favor of permitting the

New York Action to proceed.

DATED: April 2, 2013 Respectfully submitted,

OF COUNSEL: s/Theodore H. Davis Jr.

Steven B. Pokotilow Laura Goldbard George

Theodore H. Davis Jr. Ga. Bar. No. 212913

Irah Donner Binni N. Shah STROOCK & STROOCK & LAVAN LLP 180 Maiden Lane

KILPATRICK TOWNSEND & STOCKTON LLP 1100 Peachtree Street Suite 2800

New York, NY 10038-4982 (212) 806-5400

Atlanta, GA 30309-4528 [email protected]

Attorneys for Defendant Times Three

Clothier, LLC


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ATLANTA DIVISION


CERTIFICATE OF COMPLIANCE

Pursuant to Local Rule 7.1D, the attached pleading complies with the

font and point selections prescribed by Local Rule 5.1B and uses 14 point Times

New Roman Font.

s/ Theodore H. Davis Jr. Theodore H. Davis Jr.


-5- NY 74511497


ATLANTA DIVISION


CERTIFICATE OF SERVICE

I certify that on April 2, 2013, I electronically filed the foregoing document

using the CM/ECF system and have served the same document via Hand Delivery

as follows:

Natasha H. Moffitt Laura S. Huffman

King & Spalding LLP 1180 Peachtree Street, N.E. Atlanta, GA 30309-3521

and via First Class Mail:

Kathleen E. McCarthy King & Spalding LLP

1185 Avenue of the Americas New York, NY 10036


-6- NY 74511497



1 NY 74503821


ATLANTA DIVISION


DEFENDANT TIMES THREE CLOTHIER, LLC’S MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION TO TRANSFER, OR, IN THE

ALTERNATIVE, STAY THIS ACTION

Defendant Times Three Clothier, LLC (“Yummie Tummie”) hereby moves

to transfer the instant action to the United States District Court for the Southern

District of New York because it is an improper anticipatory filing. In the

alternative, Yummie Tummie moves to stay these proceedings so that a second-

filed action involving the same parties and virtually the same issues entitled Times

Three Clothier, LLC v. Spanx, Inc., Civil Action No. 13-cv-2157 may proceed.

Transfer and/or Stay is appropriate because the balance of justice and convenience

of the parties weighs in favor of transfer.

Case 1:13-cv-00710-WSD Document 4-1 Filed 04/02/13 Page 1 of 22

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For the reasons stated below, and the Declarations of Laura Goldbard

George and Richard Rothfeld submitted in support hereof, this motion should be

granted.

I. SUMMARY OF ARGUMENT

Spanx, Inc. (“Spanx”) filed the instant action (“the Georgia Action”) on

March 5, 2013 requesting declaratory relief against Yummie Tummie in the midst

of ongoing settlement negotiations, ensuring that Yummie Tummie, the natural

plaintiff, would be deprived of its choice of forum. By engaging in what Yummie

Tummie believed were sincere settlement negotiations between the parties,

Yummie Tummie delayed filing suit, despite being ready to do so. Spanx deceived

Yummie Tummie by indicating that the parties were working towards a mutually

agreeable resolution when in fact, Spanx was preparing its Complaint to be filed.

As the real plaintiff in interest, Yummie Tummie has filed a patent

infringement action against Spanx in the United States District Court for the

Southern District of New York (“the New York Action”), captioned Times Three

Clothier, LLC v. Spanx, Inc., Civil Action No.13-cv-2157, accusing Spanx of

infringing substantially similar patents as those identified by Spanx in the Georgia

Action.


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As discussed in greater detail below, the Georgia Action is not entitled to

deference as a the first-filed action because it is an anticipatory that should not get

the benefit of the first-to-file rule. In particular, after a series of correspondence

and teleconferences, Spanx proposed a framework for a partial resolution of the

dispute. Significantly, Spanx never gave any indication that settlement

negotiations were at an end during a teleconference with Spanx’s counsel on

March 5, 2013. Yet, the very same day that Spanx made its proposal and before

Yummie Tummie had a chance to respond to that proposal, Spanx proceeded to

file the Georgia Action. These actions clearly demonstrate that Spanx was

negotiating with Yummie Tummie in hopes to delay Yummie Tummie from filing

suit, so that Spanx could choose its preferred forum. The Court, in its discretion,

should transfer the Georgia Action which on the merits is virtually

indistinguishable from the New York Action to the Southern District of New York,

where the New York Action is pending.

Furthermore, the Southern District of New York is the most convenient

forum to adjudicate the present dispute between the parties, since several key

witnesses and the relevant documents concerning the development of the patents

are located in New York and Spanx is the party best suited to absorb the costs of

litigation. Additionally, Spanx has significant contacts with New York, including


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a showroom, distribution of its products to over 200 retailers in New York,

advertising its products in New York and selling its product out of New York at

various trade shows and at Fashion Week in New York City. Furthermore, this

Court should not reward Spanx’s bad-faith anticipatory filing in allowing Spanx to

choose the forum where this dispute should be heard.

Accordingly, this Court should exercise its discretion and deny Spanx the

benefit of having first filed this action and transfer this action to the Southern

District of New York, which is the most convenient forum, or in the alternative,

stay the present proceedings.

II. STATEMENT OF FACTS

A. Yummie Tummie’s Patents

Yummie Tummie owns several patents, such as U.S. Design Patent Nos.

D606,285; D616,627; D622,477; D623,377; D632,051; D632,052 and D632,053

(collectively the “Georgia Action Patents”). These patents cover a variety of

shapewear garments. Yummie Tummie markets, distributes, and sells its

innovative designs under the well-known brand names Yummie Tummie®,

Yummie by Heather Thomson®, Tummy Tank®, TummyliciousTM, RIPT Fusion®

and Core FormTM (collectively, “Yummie Tummie®”).


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B. Yummie Tummie’s Cease and Desist letter to Spanx

On January 18, 2013, counsel for Yummie Tummie sent Spanx a cease and

desist letter, charging Spanx with infringement of the Georgia Action Patents (“the

January 18 Letter”). (Goldbard Dec. Ex. 1). Yummie Tummie also stated that

Yummie Tummie “vigorously enforces its rights in its patents” and that it had

previously “settled a patent infringement action with Maidenform paying [Yummie

Tummie] 6.75 million.” (Id.) Yummie Tummie demanded that Spanx refrain from

selling the infringing garments and provide Yummie Tummie damages for all past

and ongoing infringement.” (Id.) Yummie Tummie set a deadline for January 31,

2013 by which date Spanx had to comply with Yummie Tummie’s requests. (Id.)

C. Spanx’s Response to Yummie Tummie’s Cease and Desist Letter

Spanx requested a number of extensions to formally respond to Yummie

Tummie’s charges of infringement, which Yummie Tummie readily granted.

(Goldbard Dec. Exs. 2, 3, 4). Finally, on February 14, 2013, Spanx provided a

written response. (Goldbard Dec. Ex. 5) Notably, Spanx indicated that it was

“interested in continuing [the] discussions and resolving any dispute amicably.”

(Id.) The particulars regarding what Spanx proposed is not set forth herein

pursuant to Fed. R. Evid. Rule 408. Upon receipt and consideration of Spanx’s


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response, counsel for Yummie Tummie requested a conference with Spanx to

discuss the response. (Goldbard Dec. Ex. 6, 7, 8).

D. Subsequent Negotiations between the Parties

On February 22, 2013, Ms. Laura Goldbard George and Mr. Steven B.

Pokotilow, counsel for Yummie Tummie, and Ms. Kathleen McCarthy, counsel for

Spanx, held a conference call to discuss the respective positions of each party.

(Goldbard Dec. ¶ 16). Ms. Goldbard and Mr. Pokotilow disagreed with the

positions set forth by Spanx and informed Ms. McCarthy that Yummie Tummie

was ready to file a complaint for patent infringement if they did not reach an

amicable resolution. (Id.) Ms. McCarthy agreed to speak to her client, after which

a second discussion would be had. (Id.)

After a series of delays attributable to Spanx, (see Goldbard Dec. Exs. 9, 10,

11), Ms. Goldbard and Mr. Pokotilow and Ms. McCarthy held a second telephone

conference on March 5, 2013. (Goldbard Dec. ¶17). Ms. McCarthy proposed

another framework for resolving the charge of infringement. (Id.) Ms. Goldbard

and Mr. Pokotilow stated that they would advise their client of Spanx’s proposal

and get back to Spanx after consulting Yummie Tummie. (Id.) At no time during

that conversation did counsel for Spanx advise that settlement negotiations were


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being terminated or that Spanx was preparing to file a lawsuit against Yummie

Tummie. (Id.)

On the very same day of the telephone conference, even before Mr.

Pokotilow or Ms. Goldbard could speak to their client and present Spanx’s

proposed framework, counsel for Spanx preemptively filed the instant declaratory

judgment action (“the Georgia Action”) seeking a declaration that Spanx does not

infringe on the Georgia Action Patents. Yummie Tummie had refrained from

filing suit against Spanx in the Southern District of New York based on Spanx’s

representations that the parties were working towards a mutually agreeable

resolution of the dispute. (Rothfeld Dec. ¶ 5).

E. Relationship between the New York Action and the Georgia Action

On April 2, 2013, Yummie Tummie filed the New York Action. (Goldbard

Dec. Ex. 12). The New York Action is an action for design patent infringement

arising under 35 U.S.C. § 101, et. seq., four weeks after Spanx filed the Georgia

Action. In the New York Action Complaint, Yummie Tummie alleges that Spanx

has used and continues to use the designs of US Design Patent Nos. 606,285;

616,627; 622,477; 623,377; 665,558; and 666,384 (collectively the “New York

Action Patents”) in the products that it makes, uses, sells, and offers to sell without

Yummie Tummie’s permission. The specific accused products are Spanx’s “The


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Total Taming Tank A226764,” also known as “The Spanx Total Taming Tank,”

“the Top This Tank Style 1847” and “The Top This Cami Style 1846.” Further,

Yummie Tummie alleges that Spanx has contributed to, or induced, and continues

to contribute or induce others, including third party retailers such as JC Penney,

Kohl’s, and QVC, and other garment purchasers to infringe the New York Action

Patents by using, selling, or offering to sell the infringing products.

The Georgia Action, rather, requests declaratory relief that the Georgia

Action Patents are invalid or not infringed. The products in question in the

Georgia Action and the New York Action, on the face of the respective complaints,

are identical, and the patents at issue in both actions are substantially the same and

cover similar art. Spanx filed the Georgia Action in anticipation of Yummie

Tummie’s suit against Spanx in the Southern District of New York for patent

infringement.

III. ARGUMENT

A. The Georgia Action is an Improper Anticipatory Filing

The Eleventh Circuit has ruled that although the first-to-file rule encourages

courts to defer to the first filing of a suit, the rule is not to be rigidly applied.

District courts have the discretion to “decline to entertain a [first-filed] declaratory

judgment action on the merits when a pending proceeding in another court will


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fully resolve the controversy between the parties.” Ven-Fuel, Inc. v. Dep't of the

Treasury, 673 F.2d 1194, 1195 (11th Cir. 1982) (dismissing the declaratory

judgment action where the declaratory judgment was filed in anticipation of

imminent legal proceedings). This Court should consider that “the declaratory

judgment action was filed in apparent anticipation of the other pending

proceeding” when considering declining jurisdiction. Id. “[A] suit is

‘anticipatory’ for the purposes of being an exception to the first-to-file rule if the

plaintiff in the first-filed action filed suit on receipt of specific, concrete indications

that a suit by the defendant was imminent.” Woodbolt Distrib., LLC v. Natural

Alternatives Intern., Inc., Civil Action No. 11–1266 GMS, 2013WL 247041

(D.Del. Jan. 23, 2013). Although a court may, in its discretion, dismiss an

anticipatory action, it may also, in its discretion transfer the action to another

district where a substantially similar case is pending. Soroka v. Lee Techs. Servs.,

Inc., CIV.A.1:06-CV-0710-TWT, 2006 WL 1734277 *4 (N.D. Ga. June 19, 2006)

(transferring the first-filed declaratory judgment action after finding that the

declaratory judgment action was anticipatory).

Courts have found that first-filed anticipatory actions, like the present

Georgia Action, should be dismissed or transferred where the declaratory judgment

plaintiff deceived the declaratory judgment defendant during pre-suit settlement


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negotiations. Denying a dismissal of a first-filed action in this circumstance would

lead to the perverse incentive to file a complaint prior to engaging in settlement

negotiations. Rather, “[p]otential plaintiffs should be encouraged to attempt

settlement discussions. . . prior to filing lawsuits without fear that the defendant

will be permitted to take advantage of the opportunity to institute litigation in a

district of its own choosing before the plaintiff files a complaint.” Z-Line Designs,

Inc. v. Bell'O Int'l, LLC, 218 F.R.D. 663, 666-67 (N.D. Cal. 2003) (dismissing a

first-filed suit where the declaratory judgment defendant had granted deadline

extensions with the expectation that settlement options were being explored and

the declaratory judgment plaintiff filed suit during the extension period.)

In Mission Ins. Co. v. Puritan Fashions Corp., the Fifth Circuit affirmed the

transfer of the declaratory judgment action to the second-filed court because the

declaratory judgment plaintiff misled the declaratory judgment defendant into

believing that it could have filed suit at a later time pending further discussion.

706 F.2d 599, 602 (5th Cir. 1983). Specifically, the declaratory judgment plaintiff

agreed to extend a contractual suit limitation period for 30 days, and soon

thereafter, prior to the expiration of the 30 days, the declaratory judgment plaintiff

rejected the claim and filed suit on the same day. Id. The Fifth Circuit stated

“these facts alone would be enough to support a finding of anticipatory filing.” Id.


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In Z-Line Designs, the court held that the anticipatory nature of the filing

precluded the application of the first to file rule. 218 F.R.D. at 666-67. The

declaratory judgment defendant sent letters to the declaratory judgment plaintiff

evidencing a specific and concrete indication of imminent judicial action. Id. The

letter identifies the allegedly infringing models, requests information regarding

damages resulting from the allegedly infringing activity, a request to cease selling

the products at issue and a statement that the declaratory judgment defendant will

take all steps to protect its intellectual property, including filing suit. Id. The

declaratory judgment defendant extended the deadlines to respond to this letter,

with the expectation that settlement options were being explored. Id. However,

within the extension period, the declaratory judgment plaintiff filed suit. Id. The

court found that the declaratory judgment defendant had misled the plaintiff by

accepting the extensions and leading the plaintiff to believe that it had an interest

in settlement. Id. Accordingly, the court dismissed the first-filed action. Id.

Moreover, courts have held that first-filed suits that engage in impermissible

forum shopping are also not given the benefit of the first-to-file rule. In Xoxide,

Inc. v. Ford Motors, Co., the court dismissed a declaratory judgment action

because the declaratory judgment plaintiff preemptively filed suit to “ensure its

choice of forum would prevail should litigation ensue” during discussions to effect


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a non-judicial resolution to the dispute. 448 F. Supp. 2d 1188, 1189 (C.D. Cal.

2006). The declaratory judgment defendant had sent numerous cease and desist

letters and engaged in settlement discussions. Id. Given that “where . . . a

declaratory judgment action has been triggered by a cease and desist letter that

both seeks settlement and notifies the party of the possibility of litigation upon the

collapse of negotiations, equity militates in favor of allowing the second-filed

action to proceed to judgment rather than the first.” Id. at 1193 (internal quotations

omitted). See Woodbolt Distrib., LLC v. Natural Alternatives Intern., Inc.,

Civil Action No. 11–1266 GMS, 2013 WL 247041 (D. Del. Jan. 23, 2013)

(dismissing a declaratory judgment action because the plaintiff had filed suit

during settlement negotiations as a “precautionary measure”).

Similarly, Spanx, like the plaintiffs in Mission Ins. Co., Xoxide, and Z-Line

Designs, misled Yummie Tummie by indicating that a non-judicial resolution was

possible, even going so far as suggesting a framework for a possible amicable

resolution for some of Yummie Tummie’s claims. Accordingly, Yummie Tummie

was lulled into a false sense of security based on such discussions, and in the hopes

of avoiding costly and disruptive litigation, did not immediately file suit.

Yummie Tummie gave Spanx clear, concrete indications that Yummie

Tummie was ready to file suit should negotiations fail to bear fruit. The January


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18 Letter, like the letter in Z-Line Designs, requesting that Spanx cease and desist

from infringing Yummie Tummie’s patents clearly identified the products that

were in issue, the patents that Yummie Tummie believed were infringed,

information relating to past and ongoing damages, and a statement that Yummie

Tummie “vigorously enforces the rights in its patents” referencing a prior legal

action taken against another defendant. (Goldbard Dec. Ex. 1 ). The letter itself

provided a deadline for a response from Spanx, after which it can be reasonably

inferred that Yummie Tummie would bring suit.

Assuming, arguendo, that the letter itself did not provide a specific, concrete

indication of imminent legal action, counsel for Yummie Tummie informed Spanx

on the February 22 conference call, twelve days before Spanx had filed the

Georgia Action, that Yummie Tummie was ready to file suit. (Goldbard Dec. ¶

16). Based on the timing of Spanx’s suit—filing suit the same day that Spanx

proposed a partial resolution—it is clear that the Georgia Action is an anticipatory

action filed in an effort to forum shop, and hence, should not be given the benefit

of the first-to-file rule.

Although a court may, in its discretion, dismiss an anticipatory action, it may

also, in its discretion transfer the action to another district where a substantially

similar case is pending. Soroka v. Lee Techs. Servs., Inc., CIV.A.1:06CV0710-


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TWT, 2006 WL 1734277 (N.D. Ga. June 19, 2006). Here, a substantially similar

action is pending in the Southern District of New York, and this Court should

exercise its discretion and transfer the Georgia Action to the Southern District of

New York or in the alternative, stay the Georgia Action. If this Court should deny

Yummie Tummie’s motion to transfer, or in the alternative stay, the Georgia

Action, the Court would unreasonably penalize Yummie Tummie for Yummie

Tummie’s attempt to resolve the dispute before filing suit. See Xoxide, 448 F.

Supp. 2d at 1194.

B. The Balance of Justice and Convenience of the Parties Weighs in Favor of Transfer to the Southern District of New York

The Southern District of New York is the most convenient forum to

adjudicate this dispute, and the balance of justice and convenience favors

transferring the Georgia Action to New York. In reaching this conclusion, courts

consider various factors, including: “(1) the convenience of the witnesses; (2) the

location of relevant documents and the relative ease of access to sources of proof;

(3) the convenience of the parties; (4) the locus of operative facts; (5) the

availability of process to compel the attendance of unwilling witnesses; (6) the

relative means of the parties; (7) a forum's familiarity with the governing law; (8)

the weight accorded a plaintiff's choice of forum; and (9) trial efficiency and the


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interests of justice, based on a totality of the circumstances.” Soroka, 2006 WL

1734277 at *4.

1. Convenience of the Witnesses

Several of Yummie Tummie’s key witnesses are located in New York, such

as Heather Thomson, the inventor of all of the patents, and Wendy Herman, head

of sales at Yummie Tummie. (Rothfeld Dec. ¶4). Moreover, Yummie Tummie’s

key witnesses do not have occasion to visit Georgia for work purposes whereas,

upon information and belief, some of Spanx’s expected witnesses travel to New

York for the purpose of carrying on Spanx’s business. Also, given that the fashion

industry is located in New York, industry experts would also be located in New

York.

Accordingly, this factor weighs in favor of transferring the Georgia Action

to the Southern District of New York.

2. Location of Relevant Documents and Relative Ease of Access to Sources of Proof

Yummie Tummie’s documents and records relating to the development of

the Georgia Action Patents, the documents that Yummie Tummie will likely be

called upon to verify the validity of these patents, are located at Yummie

Tummie’s offices in New York. (Rothfeld Dec. ¶ 3). While Spanx’s corporate

offices are located in Georgia, Yummie Tummie assumes that Spanx may have


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relevant documents relating to its sales that are accessible in New York.

Accordingly, this factor weighs in favor of transferring the Georgia Action to the

Southern District of New York.

3. Convenience of the Parties

Yummie Tummie is a limited liability company organized under the laws of

New York. (Rothfeld Dec. ¶2). Yummie Tummie’s principal place of business is

also located in New York. (Id.) Yummie Tummie has only limited contacts with

Georgia, primarily via retailers who sell Yummie Tummie’s product line.

Although Spanx is incorporated in Georgia, it has significant contacts with

New York. Specifically, Spanx has its own showroom in New York City, sells its

products in over 200 retailers in New York, advertises its products in New York,

has executives regularly travel to New York and shows its products for sale at

various trade shows located in New York and at Fashion Week hosted in New

York City. (Goldbard Dec. Exs. 13, 14, 15).

Whether the action proceeds in the Southern District of New York or this

Court, one of the parties will have to travel to the location. However, due to the

extensive contacts that Spanx has to New York, it would not be inconvenient for

Spanx to adjudicate this dispute in the Southern District of New York. In fact,

Spanx has already retained the counsel of Kathleen E. McCarthy, Esq., a New


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York-based attorney who was conducting the settlement negotiations on behalf of

Spanx at the time the Georgia Action was filed by Ms. McCarthy’s firm.

Furthermore, Yummie Tummie only has limited contacts with Georgia, and thus

litigating in the Northern District of Georgia would be inconvenient and impose an

undue financial burden on Yummie Tummie. Accordingly, this factor weighs in

favor of transferring the Georgia Action to the Southern District of New York.

4. Locus of Operative Facts

This factor is believed to be neutral for the parties, and thus should not be

considered in this analysis.

5. The Availability of Process to Compel the Attendance of Unwilling Witnesses



6. Weight Accorded to Plaintiff’s Choice of Forum

As discussed previously, Spanx’s choice of forum should be accorded little,

if any weight, as it is a bad-faith anticipatory action. Accordingly, this factor

weighs in favor of transferring the Georgia Action to the Southern District of New

York.


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7. Relative Means of the Parties

Spanx is a billion-dollar company according to Forbes Magazine. (Rothfeld

Dec. Ex. 1). Yummie Tummie, on the other hand, is a significantly smaller entity.

(Rothfeld Dec. ¶ 7). Accordingly, Spanx is in the best financial position to absorb

the cost of litigation. See Nam v. U.S. Xpress, Inc., 1:10-CV-3924-AT, 2011 WL

1598835 (N.D. Ga. Apr. 27, 2011) (finding that this factor weighs against transfer

because the financial burden would be placed on the smaller entity, rather than the

largest and most profitable company in that industry).

Accordingly, this factor weighs in favor of transfer to the Southern District

of New York.

8. The Forum’s Familiarity with the Governing Law



9. Trial Efficiency and the Interests of Justice

As discussed above, anticipatory actions, such as the Georgia Action, are

frowned upon as improper forum shopping. As also stated previously, to deny

Yummie Tummie’s instant motion in its entirety would reward Spanx for its bad

faith actions rather than incentivize the amicable resolution of disputes by

penalizing Yummie Tummie for attempting to resolve the dispute prior to resorting


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to judicial intervention. Accordingly, this factor weighs heavily in favor of

transferring the instant action to the Southern District of New York.

In view of the foregoing, the balance of conveniences weighs heavily in

favor of the Southern District of New York as the more convenient forum to hear

this dispute.

IV. CONCLUSION

For the foregoing reasons, Yummie Tummie respectfully requests that the

Court exercise its power of discretion to grant Yummie Tummie’s Motion to

Transfer to the Southern District of New York, or in the alternative, Stay the

Georgia Action.

DATED: April 2, 2013 Respectfully submitted,

OF COUNSEL: s/Theodore H. Davis Jr.

Steven B. Pokotilow Laura Goldbard George

Theodore H. Davis Jr. Ga. Bar. No. 212913

Irah Donner Binni N. Shah STROOCK & STROOCK & LAVAN LLP 180 Maiden Lane

KILPATRICK TOWNSEND & STOCKTON LLP 1100 Peachtree Street Suite 2800

New York, NY 10038-4982 (212) 806-5400

Atlanta, GA 30309-4528 [email protected]

Attorneys for Defendant Times Three

Clothier, LLC


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ATLANTA DIVISION


CERTIFICATE OF COMPLIANCE

Pursuant to Local Rule 7.1D, the attached pleading complies with the

font and point selections prescribed by Local Rule 5.1B and uses 14 point Times

New Roman Font.



-21- NY 74503821


ATLANTA DIVISION


CERTIFICATE OF SERVICE

I certify that on April 2, 2013, I electronically filed the foregoing document

using the CM/ECF system and have served the same document via Hand Delivery

as follows:

Natasha H. Moffitt Laura S. Huffman

King & Spalding LLP 1180 Peachtree Street, N.E. Atlanta, GA 30309-3521

And via First Class Mail:

Kathleen E. McCarthy King & Spalding LLP

1185 Avenue of the Americas New York, NY 10036


-22- NY 74503821



NY 74510530


ATLANTA DIVISION

SPANX, INC, ) ) Plaintiff, ) Case No. 13-CV-00710-WSD ) v. ) ) TIMES THREE CLOTHIER, LLC ) d/b/a Yummie Tummie, ) ) Defendant. )

DECLARATION OF LAURA GOLDBARD GEORGE IN SUPPORT OF DEFENDANT TIMES THREE CLOTHIER, LLC’S MOTION TO TRANSFER, OR IN THE ALTERNATIVE, STAY THE ACTION

I, Laura Goldbard George, a partner in the law firm of Stroock & Stroock &

Lavan LLP, having offices at 180 Maiden Lane, New York, New York, am

familiar with the proceedings and documents related to the above-captioned matter,

and declare that the following is true and accurate to the best of my knowledge.

1. Attached as Exhibit 1 is a true and correct copy of a letter sent to Leslie

Slavich, Esq. from myself, dated January 18, 2013.

2. Attached as Exhibit 2 is a true and correct copy of an e-mail from myself to

Kathleen McCarthy, dated January 31, 2013 6:05 PM.


2

NY 74510530

3. Attached as Exhibit 3 is a true and correct copy of an email from Kathleen

McCarthy to myself, dated February 1, 2013 5:46 PM.

4. Attached as Exhibit 4 is a true and correct copy of an email from myself to

Kathleen McCarthy, dated February 4, 2013 1:48 PM.

5. Attached as Exhibit 5 is a true and correct copy of a letter that has been

redacted from Kathleen McCarthy to Steven Pokotilow and myself, dated

February 14, 2013.


Kathleen McCarthy and Steven Pokotilow, dated February 20, 2013 2:09 PM.


McCarthy to Steven Pokotilow and myself, dated February 20, 2013 2:34 PM.


McCarthy to Steven Pokotilow and myself, dated February 21, 2013 10:50

AM.


McCarthy to Steven Pokotilow and myself, dated February 26, 2013 8:58 AM.


Kathleen McCarthy, dated February 26, 2013 11:35 AM.


3

NY 74510530


McCarthy to Steven Pokotilow and myself, dated February 26, 2013 11:58

AM.

12. Attached as Exhibit 12 is a true and correct copy of the Complaint filed by

Times Three Clothier, LLC in the United States District Court for the Southern

District of New York on April 2, 2013, captioned Times Three Clothier, LLC

v. Spanx, Inc., Civil Action No. 13-cv-2157.

13. Attached as Exhibit 13 is a true and correct copy of the Spanx, Inc. webpage

located at http://www.spanx.com/category/index.jsp?categoryId=11585907

(last accessed April 1, 2013).


located at http://www.spanx.com/corp/index.jsp?page=storeLocator&selected

IndexValue=&selectedStateIndexValue=&strLocator=&state=NY (last

accessed April 1, 2013).


located at http://press.spanx.com/events/fashion-week-sept-151402-61503 (last

accessed April 1, 2013).

16. On February 22, 2013, I, along with Steven B. Pokotilow, counsel for Times

Three Clothier, LLC (“Yummie Tummie”) had a teleconference with Ms.


4

NY 74510530

Kathleen McCarthy, counsel for Spanx, Inc. (“Spanx”). During this

teleconference, Mr. Pokotilow and I informed Ms. McCarthy that Yummie

Tummie disagreed with the positions taken by Spanx in its February 14 Letter

(Ex. 5). We also informed Ms. McCarthy that Yummie Tummie was ready to

file suit against Spanx should the parties be unable to reach a mutually

agreeable resolution. At the end of the teleconference, Ms. McCarthy stated

that she would speak to Spanx, and that we would continue negotiations

thereafter.

17. On March 5, 2013, I, along with Mr. Pokotilow, had a second conference call

with Ms. McCarthy (see Ex. 9 which evidences delaying the teleconference at

the request of Ms. McCarthy). During this call, Ms. McCarthy disputed

certain elements of Yummie Tummie’s claim but nonetheless did advise of a

settlement framework that might be acceptable to Spanx for resolving Yummie

Tummie’s claims against Spanx. Mr. Pokotilow and I advised that we would

discuss the proposed framework with Yummie Tummie and then get back to

Ms. McCarthy with Yummie Tummie’s response. At no time during this

conversation did Ms. McCarthy indicate that settlement discussions were being

terminated or that Spanx was filing suit against Yummie Tummie on that

same day.


5

NY 74510530

I declare under penalty of perjury of the laws of the United States of

America that the foregoing is true and correct.

Dated: April 2, 2013 s/Laura Goldbard George Laura Goldbard George, Esq.



Exhibit 1


January 18, 2013

Leslie Slavich, Esq. Spanx, Inc. 3344 Peachtree Road, NE Suite 1700 Atlanta, GA 30326

STROOCK

Re: Infringement ofU.S. Design Patents Our Client/Matter No.: 002870.0001

Dear Ms. Slavich:

BY UPS COURIER

Laura Goldbard George Direct Dial 212-806-6675 Direct Fax 212-806-7675 LGoldbard@stroock. com

We represent Times Three Clothier, LLC, doing business as Yummie Tummie ("Yununie"), in connection with patent matters. As you and your client, Spanx, Inc. ("Spanx"), are aware, Yummie is the owner of U.S. Design Patent Nos. D606,285, D616,627, D622,477, D623,377, D632,051, D632,052 and D632,053 (collectively "Patents"). Copies of the Patents are attached. In fact, such Patents have been brought to Spanx's attention. Notwithstanding Spanx's knowledge of the Patents, Spanx has chosen to copy the same. Yummie vigorously enforces the rights in its patents and, as you may know, settled a patent infringement litigation with Maidenform paying Yummie $6.75 million.

More specifically, it has come to our attention that Spanx is making, offering for sale and selling shapewear products, through at least QVC, Inc., J.C. Penney Company, Inc. and Spanx's own e-commerce website, in the United States that contain Yummie's patented designs. Such shapewear products include The Total Taming Tank A226764, also known as The Spanx Total Taming Tank, the Top This Tank Style 1847 and The Top This Cami Style 1846 (collectively "Tanks/Cami"). 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. Stated otherwise, the Tanks/Cami appear substantially the same as the patented designs from the point of view of an ordinary observer, thereby, constituting design patent infringement.

NY 74351312v1

STHOOCK & STHOOCK & LAVAN LLP • NEW YORK • LOS ANGELES ·MIAMI

180 MAIDEN LANE, NEW YOHK, NY 10038-4982 TEL 12.806.5400 FAX 212.806.6006 WWW.STHOOCI<.COM


Leslie Slavich, Esq. Januaty 18, 2013 Page 2

In view of the foregoing, Yummie demands the following in writing from Spanx:

1. that Spanx cease all manufacturing, offering for sale and selling of the Tanks/ Cami;

2. all orders of Tanks/Cami shipped to customers including to whom the Tanks/Cami were shipped, the purchase order number, units, style numbers and total dollar value;

3. open orders of the Tanks/Cami not yet shipped to customers, including the purchase order number, units, style numbers and total dollar value, as well as Tanks/Cami in your warehouse, in transit and on order from the manufacturer, including the number of units, style numbers and total dollar value;

4. account for profits arising from past and ongoing infringement, including increased damages for willfully violating our client's rights in the Patents; and

5. pay Yummie costs and attorney fees in connection with this matter.

We expect to receive, by January 31, 2013, written confirmation on behalf of Spanx in regard to the foregoing and Spanx's compliance with our requests.

LGG:lm

Enclosures

cc: Carrie L. Kiedrowski, Esq. Times Three Clothier, LLC

NY 74351312v1

STROOCK & STROOCK & LAVAN LLP • NEW YORK • LOS ANGELES • 1\!IAMI

180 MAIDEN LANE, NEW YORK, NY 10038-4982 TEL 212.806.5.~00 FAX 212.806.6oo6 \VWW.STROOCK.COM


Exhibit 2

1

Shah, Binni N.

From: Goldbard George, Laura

Sent: Thursday, January 31, 2013 6:05 PM

To: 'McCarthy, Kathleen'

Subject: RE: Yummie Tummie Design Patents / Spanx, Inc.

Dear Katie,

I have agreed to a one week extension, until February 7, 2013, to respond to my letter.

I am available for a call next week. How about Monday at 2:00 pm?

Laura

LAURA GOLDBARD GEORGE

STROOCK & STROOCK & LAVAN LLP180 MAIDEN LANE

NEW YORK, NY 10038-4982Tel: (212) 806-6675Fax: (212) [email protected]

THE INFORMATION CONTAINED IN THIS EMAIL IS PRIVILEGED AND CONFIDENTIAL AND IS INTENDED ONLY FOR THE USE OF THE

INDIVIDUAL NAMED ABOVE AND OTHERS WHO HAVE BEEN SPECIFICALLY AUTHORIZED TO RECEIVE SAME. IF THE RECIPIENT IS NOT THE

INTENDED RECIPIENT, YOU ARE HEREBY NOTIFIED THAT ANY DISSEMINATION, DISTRIBUTION OR COPYING OF THIS COMMUNICATION IS

STRICTLY PROHIBITED. IF YOU HAVE RECEIVED THIS COMMUNICATION IN ERROR, OR IF ANY PROBLEMS OCCUR WITH THIS

TRANSMISSION, PLEASE NOTIFY US BY TELEPHONE AT (212) 806-5400.

From: McCarthy, Kathleen [mailto:[email protected]]Sent: Thursday, January 31, 2013 5:49 PMTo: Goldbard George, LauraSubject: Yummie Tummie Design Patents / Spanx, Inc.

Dear Laura:

I am writing regarding your January 18, 2013 letter to Leslie Slavich of Spanx, Inc. regarding the above.

Your letter requested a response by today, January 31, 2013. King & Spalding has just been retained to represent Spanx, Inc. regarding the issues raised in your letter and I will need a little more time to review the facts with Spanx.

I would also like to discuss some initial questions I have with you. Are you available for a call next week?

Best regards, Katie

p.s. Please give my regards to Steve Pokotilow.


2

Kathleen E. McCarthyKing & Spalding LLP1185 Avenue of the AmericasNew York, NY 10036-4003Tel: (212) 556-2345Fax: (212) [email protected]

________________________________

King & Spalding Confidentiality Notice:

This message is being sent by or on behalf of a lawyer. It is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged or confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.



Exhibit 3


Goldbard George, laura

From: Sent: To: Cc: Subject:

Hi Laura:

McCarthy, Kathleen <[email protected]> Friday, February 01, 2013 5:46 PM Goldbard George, Laura Pokotilow, Steven RE: Yummie Tummie Design Patents I Spanx, Inc.

That works for me just as well, but I am not sure I will be able to have a formal response to the letter until after we speak and I can review our discussion with my client. Can we also get a short further extension on the formal response, to a few days after the call?

Best regards, Katie

Kathleen E. McCarthy King & Spalding LLP 1185 Avenue of the Americas New York, NY 1 0036-4003 Tel: (212) 556-2345 Fax: (212) 556-2222 [email protected] www.kslaw.com

From: Goldbard George, Laura [mailto:[email protected]] Sent: Friday, February 01, 2013 2:22PM To: McCarthy, Kathleen Cc: Pokotilow, Steven Subject: RE: Yummie Tummie Design Patents I Spanx, Inc.

Katie,

Steven and I share Tin1es Three as a c11ent. When he heard that you are involved, he wants to join the call. As he will be out of the country next week, how does Monday, February 11, 2013 at 2:00pm work for our call?

Best regards.

Laura

From: McCarthy, Kathleen [mailto:[email protected]] Sent: Thursday, January 31, 2013 6:08 PM To: Goldbard George, Laura Subject: RE: Yummie Tummie Design Patents I Spanx, Inc.

Dear Laura:

Monday at 2 pm will work for me. I will give you a call then.

Best regards, Katie

1

Case 1:13-cv-00710-WSD Document 4-5 Filed 04/02/13 Page 3 of 4Kathleen E. McCarthy King & Spalding LLP 1185 Avenue of the Americas New York, NY 10036-4003 Tel: (212) 556-2345 Fax: (212) 556-2222 [email protected] www.kslaw.com

From: Goldbard George, Laura [mailto:[email protected]] Sent: Thursday, January 31, 2013 6:05 PM To: McCarthy, Kathleen Subject: RE: Yummie Tummie Design Patents I Spanx, Inc.

Dear Katie~


I an1 available for a call next week How about Monday at 2:00 p111?

Laura


STROOCK & STROOCK & LAVAN LLP 180 MAIDEN LANE

NEvVYORK, NY 10038-4982 Tel: (212) 806-667 5 Fax: (212) 806-7675 [email protected] www.stroock.com

THE INFORMATION CONTAINED IN THIS EMAIL IS PRIVILEGED AND CONFIDENTIAL AND IS INTENDED ONLY FOR THE USE

OF THE INDIVIDUAL NAMED ABOVE AND OTHERS WHO HAVE BEEN SPECIFICALLY AUTHORIZED TO RECEIVE SAME. IF

THE RECIPIENT IS NOT THE INTENDED RECIPIENT~ YOU AHE HEREBY NOTIFIED THAT ANY DISSEMINATION,

DISTRIBUTION OR COPYING OF THIS COMMUNICATION IS STRICTLY PROHIBITED. IF YOU HAVE RECEIVED THIS

COMMUNICATION IN ERROR, OR IF ANY PROBLEMS OCCUR WITH TI-llS TRANSMISSION, PLEASE NOTIFY US BY

TELEPHONE AT (212) 806-5400.

From: McCarthy, Kathleen [mailto:[email protected]] Sent: Thursday, January 31, 2013 5:49 PM To: Goldbard George, Laura Subject: Yummie Tummie Design Patents I Spanx, Inc.

Dear Laura:



2

Case 1:13-cv-00710-WSD Document 4-5 Filed 04/02/13 Page 4 of 4I would also like to discuss some initial questions I have with you. Are you available for a call next week?

Best regards, Katie


Kathleen E. McCarthy King & Spalding LLP 1185 Avenue of the Americas New York, NY 10036-4003 Tel: (212) 556-2345 Fax: (212) 556-2222 kmccarthy@ kslaw .com www.kslaw.com



IRS Circular 230 Disclosure: To ensure compliance with requirements imposed by the IRS in Circular 230, we inform you that any tax advice contained in this communication (including any attachment that does not explicitly state otherwise) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.


3


Exhibit 4

1

Shah, Binni N.


Sent: Monday, February 04, 2013 1:48 PM

To: 'McCarthy, Kathleen'

Cc: Pokotilow, Steven

Subject: RE: Yummie Tummie Design Patents / Spanx, Inc.

Hi Katie,

We agree to a further extension on the formal response, on behalf of Spanx, to our letter, until February 14, 2013.

Best regards,

Laura


STROOCK & STROOCK & LAVAN LLP180 MAIDEN LANE


THE INFORMATION CONTAINED IN THIS EMAIL IS PRIVILEGED AND CONFIDENTIAL AND IS INTENDED ONLY FOR THE USE OF THE

INDIVIDUAL NAMED ABOVE AND OTHERS WHO HAVE BEEN SPECIFICALLY AUTHORIZED TO RECEIVE SAME. IF THE RECIPIENT IS NOT THE

INTENDED RECIPIENT, YOU ARE HEREBY NOTIFIED THAT ANY DISSEMINATION, DISTRIBUTION OR COPYING OF THIS COMMUNICATION IS

STRICTLY PROHIBITED. IF YOU HAVE RECEIVED THIS COMMUNICATION IN ERROR, OR IF ANY PROBLEMS OCCUR WITH THIS

TRANSMISSION, PLEASE NOTIFY US BY TELEPHONE AT (212) 806-5400.

From: McCarthy, Kathleen [mailto:[email protected]] Sent: Friday, February 01, 2013 5:46 PMTo: Goldbard George, LauraCc: Pokotilow, StevenSubject: RE: Yummie Tummie Design Patents / Spanx, Inc.

Hi Laura:

That works for me just as well, but I am not sure I will be able to have a formal response to the letter until after we speak and I can review our discussion with my client. Can we also get a short further extension on the formal response, to a few days after the call?

Best regards, Katie

Kathleen E. McCarthyKing & Spalding LLP1185 Avenue of the AmericasNew York, NY 10036-4003Tel: (212) 556-2345Fax: (212) 556-2222


2

[email protected]

From: Goldbard George, Laura [mailto:[email protected]] Sent: Friday, February 01, 2013 2:22 PMTo: McCarthy, KathleenCc: Pokotilow, StevenSubject: RE: Yummie Tummie Design Patents / Spanx, Inc.

Katie,

Steven and I share Times Three as a client. When he heard that you are involved, he wants to join the call. As he will be out of the country next week, how does Monday, February 11, 2013 at 2:00 pm work for our call?

Best regards.

Laura

From: McCarthy, Kathleen [mailto:[email protected]] Sent: Thursday, January 31, 2013 6:08 PMTo: Goldbard George, LauraSubject: RE: Yummie Tummie Design Patents / Spanx, Inc.

Dear Laura:

Monday at 2 pm will work for me. I will give you a call then.

Best regards, Katie


From: Goldbard George, Laura [mailto:[email protected]] Sent: Thursday, January 31, 2013 6:05 PMTo: McCarthy, KathleenSubject: RE: Yummie Tummie Design Patents / Spanx, Inc.

Dear Katie,


I am available for a call next week. How about Monday at 2:00 pm?

Laura


STROOCK & STROOCK & LAVAN LLP


3

180 MAIDEN LANE


THE INFORMATION CONTAINED IN THIS EMAIL IS PRIVILEGED AND CONFIDENTIAL AND IS INTENDED ONLY FOR THE USE


THE RECIPIENT IS NOT THE INTENDED RECIPIENT, YOU ARE HEREBY NOTIFIED THAT ANY DISSEMINATION,DISTRIBUTION OR COPYING OF THIS COMMUNICATION IS STRICTLY PROHIBITED. IF YOU HAVE RECEIVED THIS

COMMUNICATION IN ERROR, OR IF ANY PROBLEMS OCCUR WITH THIS TRANSMISSION, PLEASE NOTIFY US BY

TELEPHONE AT (212) 806-5400.

From: McCarthy, Kathleen [mailto:[email protected]] Sent: Thursday, January 31, 2013 5:49 PMTo: Goldbard George, LauraSubject: Yummie Tummie Design Patents / Spanx, Inc.

Dear Laura:



I would also like to discuss some initial questions I have with you. Are you available for a call next week?

Best regards, Katie



________________________________




4

IRS Circular 230Disclosure: To ensure compliance with requirements imposed by the IRS in Circular 230, we inform you that any tax advice contained in this communication (including any attachment that does not explicitly state otherwise) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.

IRS Circular 230Disclosure: To ensure compliance with requirements imposed by the IRS in Circular 230, we inform you that any tax advice contained in this communication (including any attachment that does not explicitly state otherwise) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.



Exhibit 5

Redacted

Redacted

Redacted


Redacted


Redacted

Redacted



Exhibit 6

1

Shah, Binni N.


Sent: Wednesday, February 20, 2013 2:09 PM

To: 'McCarthy, Kathleen'; Pokotilow, Steven

Cc: Trademarks, NY; Moffitt, Natasha

Subject: RE: Times Three / Spanx

Dear Katie,

We would like to discuss your recent letter with you. Are you available tomorrow at 10:15 to have a telephone conference?

Laura

LAURA GOLDBARD GEORGESTROOCK & STROOCK & LAVAN LLP180 MAIDEN LANENEW YORK, NY 10038-4982Tel: (212) 806-6675Fax: (212) [email protected]

THE INFORMATION CONTAINED IN THIS EMAIL IS PRIVILEGED AND CONFIDENTIAL AND IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL NAMED ABOVE AND OTHERS WHO HAVE BEEN SPECIFICALLY AUTHORIZED TO RECEIVE SAME. IF THE RECIPIENT IS NOT THE INTENDED RECIPIENT, YOU ARE HEREBY NOTIFIED THAT ANY DISSEMINATION, DISTRIBUTION OR COPYING OF THIS COMMUNICATION IS STRICTLY PROHIBITED. IF YOU HAVE RECEIVED THIS COMMUNICATION IN ERROR, OR IF ANY PROBLEMS OCCUR WITH THIS TRANSMISSION, PLEASE NOTIFY US BY TELEPHONE AT (212) 806-5400.

-----Original Message-----From: McCarthy, Kathleen [mailto:[email protected]]Sent: Thursday, February 14, 2013 8:46 PMTo: Pokotilow, Steven; Goldbard George, LauraCc: Trademarks, NY; Moffitt, NatashaSubject: Times Three / Spanx

Dear Steve and Laura:

Please see the attached letter.

Best regards, Katie

Kathleen E. McCarthyKing & Spalding1185 Avenue of the Americas


2

New York, New York 10036General Dial: 212-556-2100Direct Dial: 212-556-2345Fax: [email protected]://www.kslaw.com





Exhibit 7



From: Sent: To: Cc: Subject:

McCarthy, Kathleen <[email protected]> Wednesday, February 20, 2013 2:34 PM Goldbard George, Laura; Pokotilow, Steven Trademarks, NY; Moffitt, Natasha Re: Times Three I Spanx

I have a call already scheduled @ 10:30 and then a lunch meeting at noon. I am free at 2 or later if that works at your end.

Best regards, Katie

Kathleen E. McCarthy King & Spalding 1185 Avenue of the Americas New York, New York 10036 General Dial: 212-556-2100 Direct Dial: 212-556-2345 Fax: 212-556-2222 [email protected]

http://www.kslaw.com

-----Original Message-----From: Goldbard George, Laura [mailto:[email protected]] Sent: Wednesday, February 20, 2013 02:09PM To: McCarthy, Kathleen; Pokotilow, Steven <[email protected]>

Cc: Trademarks, NY; Moffitt, Natasha Subject: RE: Times Three I Spanx

Dear Katie,


Laura

LAURA GOLDBARD GEORGE STROOCK & STROOCK & LAVAN LLP 180 MAIDEN LANE NEW YORK, NY 10038-4982 Tel: {212) 806-6675 Fax: {212) 806-7675 [email protected] www.stroock.com

1

Case 1:13-cv-00710-WSD Document 4-9 Filed 04/02/13 Page 3 of 3THE INFORMATION CONTAINED IN THIS EMAIL IS PRIVILEGED AND CONFIDENTIAL AND IS INTENDED ONLY FOR THE USE


THE RECIPIENT IS NOT THE INTENDED RECIPIENT, YOU ARE HEREBY NOTIFIED THAT ANY DISSEMINATION, DISTRIBUTION

OR COPYING OF THIS COMMUNICATION IS STRICTLY PROHIBITED. IF YOU HAVE RECEIVED THIS COMMUNICATION IN

ERROR, OR IF ANY PROBLEMS OCCUR WITH THIS TRANSMISSION, PLEASE NOTIFY US BY TELEPHONE AT {212) 806-5400.

-----Original Message-----

From: McCarthy, Kathleen [mailto:[email protected]]

Sent: Thursday, February 14, 2013 8:46 PM

To: Pokotilow, Steven; Goldbard George, Laura

Cc: Trademarks, NY; Moffitt, Natasha

Subject: Times Three I Spanx



Best regards, Katie

Kathleen E. McCarthy

King & Spalding

1185 Avenue of the Americas

New York, New York 10036

General Dial: 212-556-2100

Direct Dial: 212-556-2345

Fax: 212-556-2222

kmcca rthy@ kslaw .com

http://www.kslaw.com


This message is being sent by or on behalf of a lawyer. It is intended exclusively for the individual or entity to which it is

addressed. This communication may contain information that is proprietary, privileged or confidential or otherwise

legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy

or disseminate this message or any part of it. If you have received this message in error, please notify the sender

immediately by e-mail and delete all copies of the message.

IRS Circular 230

Disclosure: To ensure compliance with requirements imposed by the IRS in Circular 230, we inform you that any tax

advice contained in this communication (including any attachment that does not explicitly state otherwise) is not

intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue

Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.

2


Exhibit 8


Goldbard George, Laura

From: Sent: To: Cc:

McCarthy/ Kathleen < [email protected]> Thursday/ February 211 2013 10:50 AM Goldbard George/ Laura; Pokotilow/ Steven Trademarks/ NY; Moffitt Natasha

Subject: RE: Times Three I Spanx

Laura and Steve:

I may still be able to take this call-- will advise later-- but wanted to give you a heads up that I am at home and waiting to schedule a doctor's appointment (on hold at the moment). I managed to get a scratched cornea earlier in the week by getting poked in the eye by my little guy (not on purpose of course) with an Angry Birds valentine. You can't make this stuff up.

If the timing of the doctor's appointment works out, 3:30 will still work, and I can still speak even though my eyesight is compromised. Unless you hear from me otherwise, please call at 3:30 at 718-721-6119.

Thanks, Katie

Kathleen E. McCarthy King & Spalding LLP 1185 Avenue of the Americas New York, NY 10036-4003 Tel: {212) 556-2345 Fax: {212) 556-2222 [email protected] www.kslaw.com

-----Original Message-----From: Goldbard George, Laura [mailto:[email protected]] Sent: Wednesday, February 20, 2013 2:41 PM To: McCarthy, Kathleen; Pokotilow, Steven Cc: Trademarks, NY; Moffitt, Natasha Subject: RE: Times Three I Spanx

3:30 works. We will call you.

-----Original Message-----From: McCarthy, Kathleen [mailto:[email protected]] Sent: Wednesday, February 20, 2013 2:34 PM To: Goldbard George, Laura; Pokotilow, Steven Cc: Trademarks, NY; Moffitt, Natasha Subject: Re: Times Three I Spanx


1

Case 1:13-cv-00710-WSD Document 4-10 Filed 04/02/13 Page 3 of 4Best regards, Katie

Kathleen E. McCarthy King & Spalding 1185 Avenue of the Americas New York, New York 10036 General Dial: 212-556-2100 Direct Dial: 212-556-2345 Fax: 212-556-2222 kmcca rthy@ kslaw .com http://www.kslaw.com

-----Original Message-----From: Goldbard George, Laura [mailto:[email protected]] Sent: Wednesday, February 20, 2013 02:09 PM To: McCarthy, Kathleen; Pokotilow, Steven <[email protected]> Cc: Trademarks, NY; Moffitt, Natasha Subject: RE: Times Three I Spanx

Dear Katie,


Laura

LAURA GOLDBARD GEORGE STROOCK & STROOCK & LAVAN LLP 180 MAIDEN LANE NEW YORK, NY 10038-4982 Tel: (212) 806-6675 Fax: (212) 806-7675 [email protected] www.stroock.com


-----Original Message-----From: McCarthy, Kathleen [mailto:[email protected]] Sent: Thursday, February 14, 2013 8:46 PM To: Pokotilow, Steven; Gold bard George, Laura

2

Case 1:13-cv-00710-WSD Document 4-10 Filed 04/02/13 Page 4 of 4Cc: Trademarks, NY; Moffitt, Natasha Subject: Times Three I Spanx



Best regards, Katie

Kathleen E. McCarthy King & Spalding 1185 Avenue of the Americas New York, New York 10036 General Dial: 212-556-2100 Direct Dial: 212-556-2345 Fax: 212-556-2222 [email protected] http://www. kslaw .com





3


Exhibit 9


Goldbard George, Laura

From: Sent: To: Cc:

McCarthy, Kathleen < [email protected] > Tuesday, February 26, 2013 8:58AM Goldbard George, Laura; Pokotilow, Steven Trademarks, NY


Hi Laura and Steve:

I had a call with the Spanx GC yesterday morning per our call on Friday and she needs to confer with the CEO. I was just advised that the meeting with the CEO can't take place until Thursday. Can we push back our call, since I won't have client instructions until Thursday? I have a court conference at noon on Friday but should be back in the office by 3:30.

Can we move our call from today to 3:30 Friday?

Thanks, Katie

Kathleen E. McCarthy King & Spalding LLP 1185 Avenue of the Americas New York, NY 10036.-4003 Tel: (212) 556-2345 Fax: (212) 556-2222 [email protected] www.kslaw.com

-----Original Message-----From: Goldbard George, Laura [mailto:[email protected]] Sent: Thursday, February 21, 2013 4:09 PM To: McCarthy, Kathleen; Pokotilow, Steven Cc: Trademarks, NY; Moffitt, Natasha Subject: Re: Times Three I Spanx

Yes, that works.

LAURA GOLDBARD GEORGE STROOCK & STROOCK & LAVAN LLP 180 MAIDEN LANE NEW YORK, NY 10038 Direct: 212.806.6675 Fax: 212.806.7675 [email protected] www .stroock.com

-----Original Message-----From: McCarthy, Kathleen [mailto:[email protected]] Sent: Thursday, February 21, 2013 03:35 PM To: Goldbard George, Laura; Pokotilow, Steven

1

Case 1:13-cv-00710-WSD Document 4-11 Filed 04/02/13 Page 3 of 6Cc: Trademarks, NY <[email protected]>; Moffitt, Natasha <[email protected]> Subject: RE: Times Three I Spanx

Hi Laura:

I have a court conference tomorrow at 11 in the SDNY, so I will be en route to the courthouse at 10:15 and a lunch thereafter. I could do the same time tomorrow as we had planned for today-- 3:30 --if that works for you both.

Thanks, Katie

Kathleen E. McCarthy King & Spalding LLP 1185 Avenue of the Americas New York, NY 10036-4003 Tel: (212) 556-2345 Fax: (212) 556-2222 [email protected] www.kslaw.com

-----Original Message-----From: Goldbard George, Laura [mailto:[email protected]] Sent: Thursday, February 21, 2013 3:28 PM To: McCarthy, Kathleen; Pokotilow, Steven Cc: Trademarks, NY; Moffitt, Natasha Subject: RE: Times Three I Spanx

Katie,

Steven is tried up on a call and I have a 4:00 meeting. Thus, please advise if we can re-schedule to tomorrow morning at 10:15.

Laura

-----Original Message-----From: McCarthy, Kathleen [mailto:[email protected]] Sent: Thursday, February 21, 2013 10:50 AM To: Goldbard George, Laura; Pokotilow, Steven Cc: Trademarks, NY; Moffitt, Natasha Subject: RE: Times Three I Spanx

Laura and Steve:

I may still be able to take this call-- will advise later-- but wanted to give you a heads up that I am at home and waiting to schedule a doctor's appointment (on hold at the moment). I managed to get a scratched cornea earlier in the week by getting poked in the eye by my little guy (not on purpose of course) with an Angry Birds valentine. You can't make this stuff up.


Thanks, Katie

2







Best regards, Katie

Kathleen E. McCarthy King & Spalding 1185 Avenue of the Americas New York, New York 10036 General Dial: 212-556-2100 Direct Dial: 212-556-2345 Fax: 212-556-2222 [email protected] http:/ /www.kslaw.com

-----Original Message-----From: Goldbard George, Laura [mailto:[email protected]] Sent: Wednesday, February 20, 2013 02:09 PM To: McCarthy, Kathleen; Pokotilow, Steven <[email protected]> Cc: Trademarks, NY; Moffitt, Natasha Subject: RE: Times Three I Spanx

3


Dear Katie,


Laura

LAURA GOLDBARD GEORGE STROOCK & STROOCK & LAVAN LLP 180 MAIDEN LANE NEW YORK, NY 10038-4982 Tel: (212) 806-6675 Fax: (212) 806-7675 [email protected] www.stroock.com


-----Original Message-----From: McCarthy, Kathleen [mailto:[email protected]] Sent: Thursday, February 14, 2013 8:46 PM To: Pokotilow, Steven; Goldbard George, Laura Cc: Trademarks, NY; Moffitt, Natasha Subject: Times Three I Spanx



Best regards, Katie


4

Case 1:13-cv-00710-WSD Document 4-11 Filed 04/02/13 Page 6 of 6King & Spalding Confidentiality Notice:






5


Exhibit 10



From: Goldbard George/ Laura Sent: To: Cc:

Tuesday/ February 261 2013 11:35 AM 'McCarthy/ Kathleen'; Pokotilow/ Steven Trademarks/ NY


Katie,

Friday does not work for us. How about Tuesday at 3:30?

Laura

-----Original Message-----From: McCarthy, Kathleen [mailto:[email protected]] Sent: Tuesday, February 26, 2013 8:58AM To: Goldbard George, Laura; Pokotilow, Steven Cc: Trademarks, NY Subject: RE: Times Three I Spanx

Hi Laura and Steve:

I had a call with the Spanx GC yesterday morning per our call on Friday and she needs to confer with the CEO. I was just advised that the meeting with the CEO can't take place until Thursday. Can we push back our call, since I won't have client instructions until Thursday? I have a court conference at noon on Friday but should be back in the office by 3:30. Can we move our call from today to 3:30 Friday?

Thanks, Katie

Kathleen E. McCarthy King & Spalding LLP 1185 Avenue of the Americas New York, NY 10036-4003 Tel: {212) 556-2345 Fax: {212) 556-2222 [email protected] www.kslaw.com

-----Original Message-----From: Goldbard George, Laura [mailto:[email protected]] Sent: Thursday, February 21, 2013 4:09 PM To: McCarthy, Kathleen; Pokotilow, Steven Cc: Trademarks, NY; Moffitt, Natasha Subject: Re: Times Three I Spanx

Yes, that works.

1

Case 1:13-cv-00710-WSD Document 4-12 Filed 04/02/13 Page 3 of 6LAURA GOLDBARD GEORGE STROOCK & STROOCK & LAVAN LLP 180 MAIDEN LANE NEW YORK, NY 10038 Direct: 212.806.6675 Fax: 212.806.7675 I gold bard@ stroock.com www.stroock.com

-----Original Message-----From: McCarthy, Kathleen [mailto:[email protected]] Sent: Thursday, February 21, 2013 03:35 PM To: Goldbard George, Laura; Pokotilow, Steven Cc: Trademarks, NY <[email protected]>; Moffitt, Natasha <[email protected]> Subject: RE: Times Three I Spanx

Hi Laura:

I have a court conference tomorrow at 11 in the SONY, so I will be en route to the courthouse at 10:15 and a lunch thereafter. I could do the same time tomorrow as we had planned for today-- 3:30 --if that works for you both.

Thanks, Katie


-----Original Message-----From: Goldbard George, Laura [mailto:[email protected]] Sent: Thursday, February 21, 2013 3:28PM To: McCarthy, Kathleen; Pokotilow, Steven Cc: Trademarks, NY; Moffitt, Natasha Subject: RE: Times Three I Spanx

Katie,


Laura

-----Original Message-----From: McCarthy, Kathleen [mailto:[email protected]] Sent: Thursday, February 21, 2013 10:50 AM To: Goldbard George, Laura; Pokotilow, Steven Cc: Trademarks, NY; Moffitt, Natasha

2

Case 1:13-cv-00710-WSD Document 4-12 Filed 04/02/13 Page 4 of 6Subject: RE: Times Three I Spanx

Laura and Steve:

I may still be able to take this call-- will advise later-- but wanted to give you a heads up that I am at home and waiting to schedule a doctor's appointment (on hold at the moment}. I managed to get a scratched cornea earlier in the week by getting poked in the eye by my little guy (not on purpose of course} with an Angry Birds valentine. You can't make this stuff up.


Thanks, Katie

Kathleen E. McCarthy King & Spalding LLP 1185 Avenue of the Americas New York, NY 10036-4003 Tel: (212} 556-2345 Fax: (212} 556-2222 [email protected] www.kslaw.com





Best regards, Katie

Kathleen E. McCarthy King & Spalding 1185 Avenue of the Americas New York, New York 10036

3


General Dial: 212-556-2100 Direct Dial: 212-556-2345 Fax: 212-556-2222 [email protected] http:/ /www.kslaw.com

-----Original Message -----From: Goldbard George, Laura [mailto:[email protected]] Sent: Wednesday, February 20, 2013 02:09 PM To: McCarthy, Kathleen; Pokotilow, Steven <[email protected]> Cc: Trademarks, NY; Moffitt, Natasha Subject: RE: Times Three I Spanx

Dear Katie,


Laura

LAURA GOLDBARD GEORGE STROOCK & STROOCK & LAVAN LLP 180 MAIDEN LANE NEW YORK, NY 10038-4982 Tel: {212) 806-6675 Fax: {212) 806-7675 lgold bard@ stroock.com www.stroock.com





Best regards, Katie

4









5


Exhibit 11



From: Sent: To: Cc:

McCarthy, Kathleen < [email protected] >

Tuesday, February 26, 2013 11:58 AM Goldbard George, Laura; Pokotilow, Steven Trademarks, NY


That should work, with the proviso that I have to start calling Queens County Court starting Friday night at 5 pm to see if I am on jury duty next week. Let's set it down for Tuesday at 3:30 and I'll let you know asap if we need an adjustment. I already postponed once, so I have to show up if my number is called. Serving as a juror (on a short civil jury trial) might actually be interesting, but they never pick me.

Thanks, Katie

-----Original Message-----From: Goldbard George, Laura [mailto:[email protected]] Sent: Tuesday, February 26, 2013 11:35 AM To: McCarthy, Kathleen; Pokotilow, Steven Cc: Trademarks, NY Subject: RE: Times Three I Spanx

Katie,

Friday does not work for us. How about Tuesday at 3:30?

Laura

-----Original Message-----From: McCarthy, Kathleen [mailto:[email protected]] Sent: Tuesday, February 26, 2013 8:58AM To: Goldbard George, Laura; Pokotilow, Steven Cc: Trademarks, NY Subject: RE: Times Three I Spanx

Hi Laura and Steve:

I had a call with the Spanx GC yesterday morning per our call on Friday and she needs to confer with the CEO. I was just advised that the meeting with the CEO can't take place until Thursday. Can we push back our call, since I won't have client instructions until Thursday? I have a court conference at noon on Friday but should be back in the office by 3:30. Can we move our call from today to 3:30 Friday?

Thanks, Katie

Kathleen E. McCarthy King & Spalding LLP 1185 Avenue of the Americas New York, NY 10036-4003

1


Tel: (212) 556-2345 Fax: (212) 556-2222 [email protected] www.kslaw.com

-----Original Message-----

From: Goldbard George, Laura [mailto:[email protected]] Sent: Thursday, February 21, 2013 4:09 PM To: McCarthy, Kathleen; Pokotilow, Steven Cc: Trademarks, NY; Moffitt, Natasha Subject: Re: Times Three I Spanx

Yes, that works.

LAURA GOLDBARD GEORGE STROOCK & STROOCK & LAVAN LLP 180 MAIDEN LANE NEW YORK, NY 10038 Direct: 212.806.6675 Fax: 212.806.7675 I gold bard@ stroock.co m www.stroock.com

-----Original Message-----From: McCarthy, Kathleen [mailto:[email protected]] Sent: Thursday, February 21, 2013 03:35 PM To: Gold bard George, Laura; Pokotilow, Steven Cc: Trademarks, NY <[email protected]>; Moffitt, Natasha <[email protected]>


Hi Laura:

I have a court conference tomorrow at 11 in the SONY, so I will be en route to the courthouse at 10:15 and a lunch thereafter. I could do the same time tomorrow as we had planned for today-- 3:30 -- if that works for you both.

Thanks, Katie


-----Original Message-----From: Goldbard George, Laura [mailto:[email protected]] Sent: Thursday, February 21, 2013 3:28 PM

2

Case 1:13-cv-00710-WSD Document 4-13 Filed 04/02/13 Page 4 of 7To: McCarthy, Kathleen; Pokotilow, Steven Cc: Trademarks, NY; Moffitt, Natasha Subject: RE: Times Three I Spanx

Katie,


Laura

-----Original Message-----From: McCarthy, Kathleen [mailto:[email protected]] Sent: Thursday, February 21, 2013 10:50 AM To: Goldbard George, Laura; Pokotilow, Steven Cc: Trademarks, NY; Moffitt, Natasha Subject: RE: Times Three I Spanx

Laura and Steve:

I may still be able to take this call-- will advise later-- but wanted to give you a heads up that I am at home and waiting to schedule a doctor•s appointment (on hold at the moment). I managed to get a scratched cornea earlier in the week by getting poked in the eye by my little guy (not on purpose of course) with an Angry Birds valentine. You can•t make this stuff up.

If the timing of the doctor•s appointment works out, 3:30 will still work, and I can still speak even though my eyesight is compromised. Unless you hear from me otherwise, please call at 3:30 at 718-721-6119.

Thanks, Katie




-----Original Message-----From: McCarthy, Kathleen [mailto:[email protected]] Sent: Wednesday, February 20, 2013 2:34 PM

3

Case 1:13-cv-00710-WSD Document 4-13 Filed 04/02/13 Page 5 of 7To: Goldbard George, Laura; Pokotilow, Steven Cc: Trademarks, NY; Moffitt, Natasha Subject: Re: Times Three I Spanx


Best regards, Katie


-----Original Message -----From: Goldbard George, Laura [mailto:[email protected]] Sent: Wednesday, February 20, 2013 02:09 PM To: McCarthy, Kathleen; Pokotilow, Steven <[email protected]> Cc: Trademarks, NY; Moffitt, Natasha Subject: RE: Times Three I Spanx

Dear Katie,


Laura

LAURA GOLDBARD GEORGE STROOCK & STROOCK & LAVAN LLP 180 MAIDEN LANE NEW YORK, NY 10038-4982 Tel: (212) 806-6675 Fax: (212) 806-7675 [email protected] www .stroock.com


4





Best regards, Katie






IRS Circular 230 Disclosure: To ensure compliance with requirements imposed by the IRS in Circular 230, we inform you that any tax advice contained in this communication (including any attachment that does not explicitly state otherwise) is not

5

Case 1:13-cv-00710-WSD Document 4-13 Filed 04/02/13 Page 7 of 7intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.



6


Exhibit 12


UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK

TIMES THREE CLOTHIER, LLC, Civil Action No.

Plaintiff, ------

v. JURY TRIAL DEMANDED

SPANX, INC.

Defendant.

COMPLAINT FOR PATENT INFRINGEMENT

Times Three Clothier, LLC d/b/a! Yummie Tummie ("Yummie Tummie") sues

Defendant Spanx, Inc. d/b/a Spanx by Sara Blakely ("Defendant Spanx by Sara Blakely") and,

on information and belief, alleges as follows:

Introduction

1. Yummie Tummie owns the designs claimed in United States Design Patent Nos.

606, 285 ("the '285 Patent"); 616,627 ("the '627 Patent"); 622,477 ("the '477 Patent"); 623,377

("the '377 Patent") 665,558 ("the '558 Patent") and 666,384 ("the '384 Patent") (collectively

"the patents-in-suit"). Defendant Spanx by Sara Blakely has copied Yummie Tummie's patented

designs in garments that it makes, uses, sells, and offers to sell, without Yummie Tummie's

permission, and has contributed to or induced, and continues to contribute to or induce, others to

infringe the patents-in-suit. Yummie Tummie seeks damages and/or a disgorgement of

Defendant Spanx by Sara Blakely's total profits as well as its customers' profits for patent

infringement and an injunction preventing Defendant Spanx by Sara Blakely from making,

NY74493965


using, selling, or offering to sell, and from contributing to and inducing others to make, use, sell,

or offer to sell, Yummie Tummie's patented designs without permission.

Jurisdiction and Venue

2. This is an action for patent infringement arising under the patent laws of the

United States, 35 U.S.C. §§ 271 and 281, et seq. The Court has original jurisdiction over this

patent infringement action under 28 U.S. C. §§ 1338(a).

3. Venue is proper in this Court because Yummie Tummie is located in the Southern

District of New York and Defendant Spanx by Sara Blakely is responsible for acts of

infringement occurring in the Southern District of New York as alleged in this Complaint, and

has delivered or caused to be delivered its infringing products in the Southern District of New

York.

Plaintiff Yummie Tummie

4. Yummie Tummie is a limited liability company organized and existing under the

laws of the State ofNew York, with its principal place ofbusiness in New York, New York.

5. Yummie Tummie is an independent manufacturer of shapewear garments that

embody innovative designs that are marketed, distributed, and sold under the well-known brand

names Yummie Tummie®, Yummie by Heather Thomson®, Tummy Tank®, Tummylicious™,

RIPT Fusion® and Core Form™ (collectively, "Yummie Tummie®"). Yummie Tummie's

expansive Yummie Tummie® product line was conceived and designed by Heather Thomson, a

fashion designer and creative director who has contributed to many acclaimed fashion

collections, including Sean John by Sean Combs, Sweetface by Jennifer Lopez, and House of

DenSon by Beyonce Knowles.

2

NY 74493965


6. Yummie Tummie has invested significant time, effort and expense to protect its

innovative designs and has a patent portfolio of eleven patents, including the patents-in-suit. Ms.

Thomson's patented designs are embodied in an expansive line of Yummie Tummie® products,

all of which offer consumers attractive and fashion-forward women's shapewear. Yummie

Tummie has launched a range of Yummie Tummie® branded shapewear products based on its

patented design, including a variety of styles of tops, apparel, and intimates for women of all

sizes. Yummie Tummie's Yummie Tummie® line of shapewear is sold at such retailers as Saks

Fifth Avenue, Nordstrom, The Home Shopping Network, Bloomingdale's and Lord & Taylor.

Yummie Tummie' s Design Patents

7. The United States Patent and Trademark Office issued the '285 Patent on

December 22, 2009. A copy of the '285 Patent is attached hereto as Exhibit 1. Through

assignment, Yummie Tummie is the owner of all right, title, and interest, including rights for

past infringements, in the '285 Patent.

8. The United States Patent and Trademark Office issued the '627 Patent on June 1,

2010. A copy of the '627 Patent is attached hereto as Exhibit 2. Through assignment, Yummie

Tummie is the owner of all right, title, and interest, including rights for past infringements, in the

'627 Patent.

9. The United States Patent and Trademark Office issued the '4 77 Patent on August

31, 2010. A copy of the '4 77 Patent is attached hereto as Exhibit 3. Through assignment,

Yummie Tummie is the owner of all right, title, and interest, including rights for past

infringements, in the '4 77 Patent.


September 14, 2010. A copy of the '377 Patent is attached hereto as Exhibit 4. Through

3

NY 74493965



past infringements, in the '3 77 Patent.

11. The United States Patent and Trademark Office issued the '558 Patent on August

21, 2012. A copy of the '558 Patent is attached hereto as Exhibit 5. Through assignment,

Yummie Tummie is the owner of all right, title, and interest, including rights for past

infringements, in the '55 8 Patent.


September 4, 2012. A copy of the '384 Patent is attached hereto as Exhibit 6. Through


past infringements, in the '3 84 Patent.

13. Yummie Tummie has complied with the statutory requirement of placing a notice

of the patents-in-suit on all necessary garments it manufactures and sells.

Defendant Spanx by Sara Blakely and its Acts of Infringement

14. Defendant Spanx by Sara Blakely is a Georgia corporation, doing business in

New York, NY through many retailers and a showroom.

15. Defendant Spanx by Sara Blakely has used and continues to use the designs of the

patents-in-suit in products that it makes, uses, sells, and offers to sell, without Yummie

Tummie's permission, including, but not limited to, Defendant Spanx by Sara Blakely's "The

Total Taming Tank A226764," also known as "The Spanx Total Taming Tank," "the Top This

Tank Style 1847" and "The Top This Cami Style 1846" (collectively the "Infringing Garments").

16. Defendant Spanx by Sara Blakely has contributed to or induced, and continues to

contribute to or induce, others, including third party garment retailers, including, inter alia, JC

Penny, Kohl's and QVC, and garment purchasers, to infringe at least one of the patents-in-suit by

4

NY 74493965


using, offering for sale, and selling at least one of the Infringing Garments, which are copies of

Yummie Tummie's patented designs, without Yummie Tummie's permission.

17. Defendant Spanx by Sara Blakely was aware of Yummie Tummie's patents at

least as early as May 18, 2012 as a result of a letter Yummie Tummie sent to Defendant Spanx

by Sara Blakely listing certain patents-in-suit thereby providing Defendant Spanx by Sara

Blakely with actual knowledge of same.

18. On January 18, 2013, Yummie Tummie sent Defendant Spanx by Sara Blakely a

cease and desist letter, in regard to the Infringing Garments demanding that Defendant Spanx by

Sara Blakely refrain from further infringing Yummie Tummie's patents and compensate

Yummie Tummie for its past infringement. A copy of the January 18, 2013 letter is attached as

Exhibit 7. Since that time, Defendant Spanx by Sara Blakely's counsel responded to the January

18 letter which led to discussions between the parties in an attempt to resolve the matter. Prior

to initiating such discussions, Defendant Spanx by Sara Blakely's counsel requested multiple

extensions of time to respond to Yummie Tummie's letter. Yummie Tummie agreed to such

extensions based on its good faith belief that Defendant Spanx by Sara Blakely intended to

resolve the matter. However, in the midst of ongoing discussions initiated by Defendant Spanx

by Sara Blakely, Defendant Spanx by Sara Blakely filed a Declaratory Judgment action in the

Northern District of Georgia, entitled Spanx, Inc. v. Times Three Clothier, LLC, Case No. 13-cv-

00710-WSD, on March 5, 2013 without notice to Yummie Tummie. Such action by Defendant

Spanx by Sara Blakely evidences that Defendant Spanx by Sara Blakely intends to continue its

willful and intentional infringement of Yummie Tummie's design patents asserted herein.

5

NY 74493965


COUNT I (DESIGN PATENT INFRINGEMENT, 35 U.S.C. §§ 271 AND 281)

19. Yummie Tummie incorporates the allegations contained in paragraphs 1 through

18 as though fully set forth herein.

20. Defendant Spanx by Sara Blakely has been and, on information and belief, still is

making, using, offering to sell, selling, and/or importing in the United States Infringing

Garments that infringe the '285 Patent in violation of35 U.S.C. § 271(a).

21. On information and belief, Defendant Spanx by Sara Blakely has been and still is

actively inducing others to infringe the '285 Patent in violation of 35 U.S.C. § 271 (b).

22. On information and belief, Defendant Spanx by Sara Blakely's infringement has

been intentional and willful, making this an exceptional case.

23. By reason of Defendant Spanx by Sara Blakely's infringement, Yummie Tummie

has suffered, and unless Defendant Spanx by Sara Blakely's conduct is permanently enjoined,

will continue to suffer, actual damages and irreparable harm, as to which it has no adequate

remedy at law.

COUNT II (DESIGN PATENT INFRINGEMENT, 35 U.S.C. §§ 271 AND 281)







actively inducing others to infringe the '627 Patent in violation of35 U.S.C. § 271(b).

6

NY74493965







remedy at law.

COUNT III (DESIGN PATENT INFRINGEMENT, 35 U.S.C. §§ 271 AND 281)





Garments that infringe the '477 Patent in violation of 35 U.S.C. § 271(a).








remedy at law.

COUNT IV (DESIGN PATENT INFRINGEMENT, 35 U.S.C. §§ 271 AND 281)



7

NY 74493965


3 5. Defendant Spanx by Sara Blakely has been and, on information and belief, still is










remedy at law.

COUNTY (DESIGN PATENT INFRINGEMENT, 35 U.S.C. §§ 271 AND 281)












8

NY 74493965



remedy at law.

COUNT VI (DESIGN PATENT INFRINGEMENT, 35 U.S.C. §§ 271 AND 281)







actively inducing others to infringe the '384 Patent in violation of35 U.S.C. § 27l(b).

4 7. On information and belief, Defendant Spanx by Sara Blakely's infringement has





remedy at law.

PRAYER FOR RELIEF

WHEREFORE, Yummie Tummie respectfully requests that this Court:

1. Enter judgment in favor of Yummie Tummie;

2. Permanently enjoin Defendant Spanx by Sara Blakely and its predecessors,

successors, divisions, subsidiaries, or joint ventures thereof, together with any and all

parent or affiliated companies or corporations, and all officers, directors, employees,

agents, attorneys, representatives, those acting in privity or concern with Defendant

9

NY 74493965


Spanx by Sara Blakely, or on its behalf, from further infringing the '285 Patent, and

from inducing others to infringe the '285 Patent;







4. Permanently enjoin Defendant Sparr.x by Sara Blakely and its predecessors,





from inducing others to infringe the '4 77 Patent;










10

NY 74493965











8. Award Yummie Tummie its actual damages under 35 U.S.C. § 284 in an amount to

be determined at trial;

9. Award Yummie Tummie enhanced damages up to three times the amount found or

assessed under 35 U.S.C. § 284, as a result of Defendant Spanx by Sara Blakely's

knowing and willful infringement;

10. Award Yummie Tummie the disgorged total profits of Defendant Spanx by Sara

Blakely and its customers that sold or offered for sale the Infringing Garments under

35 U.S.C. §289 from infringing the patents-in-suit in an amount to be determined at

trial;

11. Award Yummie Tummie punitive damages because of Defendant Spanx by Sara

Blakely's knowing, willful, and deliberate bad faith acts of unfair competition in an

amount to be determined at trial;

12. Award Yummie Tummie all of its actual costs and reasonable attorneys' fees in this

action as authorized by 35 U.S.C. § 285; and

11

NY74493965


13. Grant to Yummie Tummie such other relief as may be just and warranted under the

circumstances.

JURY TRIAL DEMAND

Yummie Tummie demands a trial by jury o all issues so triable.

Dated: Apri12, 2013 By:

NY 74493965

STROOCK & STROOCK & LAVAN LLP 180 Maiden Lane New York, NY 10038 (212) 806-5400 Email: [email protected] Email: [email protected] Email: [email protected] Email: [email protected]

Attorneys for Plaintiff Times Three Clothier, LLC

12


Exhibit 1


111111 1111111111111111111111111111111111111111111111111111111111111

c12) United States Design Patent Schindler

(54) GARMENT

(75) Inventor: Heather Thomson Schindler, New York, NY (US)

(73) Assignee: Times Three Clothier LLC, New York, NY (US)

(**) Term: 14 Years

(21) Appl. No.: 29/302,500

(22) Filed: Jan.17,2008

(51) LOC (9) Cl. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 02-02 (52) U.S. Cl. ....................................................... D2/840 (58) Field of Classification Search .......... D2/700-703,

(56)

D2/731, 732, 828, 840, 718, 737, 847; 21112, 2/113; 450/96,94, 115, 116, 122-124, 127,

450/132, 154 See application file for complete search history.

References Cited

U.S. PATENT DOCUMENTS

1,977,329 A * 2,052,935 A * D110,662 S * D129,894 S * D174,115 S * 2,963,022 A * 3,026,875 A * 3,036,574 A * D211,231 S * 3,454,013 A * D234,649 S * D239,475 S * 4,916,755 A 5,915,531 A * 6,000,993 A * D452,600 S * D453,058 S * D453,255 S *

10/1934 Tobin ............................ 2/113 9/1936 Moran ......................... 450/10 7/1938 Rielly ......................... D2/714

10/1941 Abeles ........................ D2/703 3/1955 Dior ............................ D2/703

12/1960 Spetalnik ..................... 450/15 3/1962 Kaupp ........................ 450/116 511962 Jeffrey . ... .. ... ... ... ... ... .. . 450/30 6/1968 Sallysy ........................ D21702 7/1969 Cahill ........................ 450/116 4/197 5 Cascio ........................ D2/703 4/1976 Cascio ........................ D21702 4/1990 Feigenbaum eta!. 6/1999 Hilpert et a!. .. .. ... ... ... ... .. .. 2/69

12/1999 Erwin ........................... 450/7 112002 Kim ............................ D21702 112002 Kim ............................ D2/703 212002 Kim ............................ D21702

USOOD606285S

(10) Patent No.: (45) Date of Patent:

US D606,285 S ** Dec. 22, 2009

6,430,748 B1 * D556,978 S *

2007/0094765 A1 * 2008/0134409 A1

8/2002 Burkhart ....................... 2/78.1 12/2007 Thunstedt .................... D2/847

5/2007 Summers eta!. ............... 2/113 6/2008 Karasina

JP JP JP

FOREIGN PATENT DOCUMENTS

2006-316359 2007-146337 2007-303002

1112006 6/2007

1112007

* cited by examiner

Primary Examiner-Ian Simmons Assistant Examiner-Anna J Burmeister (74) Attorney, Agent, or Firm-Irah H. Donner; Wilmer Cutler Pickering Hale and Dorr LLP

(57) CLAIM

The ornamental design for a garment, as shown and described.

DESCRIPTION

FIG. 1 is a front elevation view of Embodiment 1, of a garment;

FIG. 2 is a rear elevation view thereof;

FIG. 3 is a right elevation view thereof;

FIG. 4 is a left elevation view thereof;

FIG. 5 is a right side elevation view of Embodiment 2, of a multi-fabric garment, where the front and rear elevation views are the same as FIGS. 1-2; and,

FIG. 6 is a left elevation view of Embodiment 2, of a multifabric garment.

The center section and lower section of the claimed design is shaded to illustrate contrasting materials.

The broken lines depicting the stitching shown in the drawings are for environmental structure only and form no part of the claimed design.

1 Claim, 6 Drawing Sheets


U.S. Patent Dec. 22, 2009 Sheet 1 of 6 US D606,285 S

-----------

FIG. 1



FIG. 2



FIG. 3



\

FIG. 4


U.S. Patent Dec. 22, 2009 Sheet 5 of 6

~--------~~~-------r-----I I I , I

)I ' I I

I I I I I I I I

I I I I I ...J _______ _

FIG. 5

US D606,285 S


U.S. Patent Dec. 22, 2009 Sheet 6 of 6

~-----

\ I I I '

\\ I I I I I I

' I I

' I' I

' I ----------L ~d I I I I Ill I

~~~ I I

Ill I I

~II I I

Ill I

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Ill I I

~II I I I I I I I I

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~=-~========~=======~ I I I I II I 1 I

FIG. 6

US D606,285 S


Exhibit 2


I IIIII 1111111111111111111111111111111111111111111 11111111111


(54) GARMENT


(73) Assignee: Times Three Clothier, LLC., New York, NY (US)

(**) Term: 14 Years

(21) Appl. No.: 29/350,198

(22) Filed: Nov. 12, 2009

Related U.S. Application Data

(63) Continuation of application No. 29/302,500, filed on Jan. 17, 2008, now Pat. No. Des. 606,285.


(56)

D2/731, 732,828,840,718,737,847, 714; 2/112, 113, 69; 450/96, 94, 115, 116, 122-124,

450/127, 132, 154, 10, 15, 30 See application file for complete search history.

References Cited


357,068 A 570,696 A

1,774,613 A 1,931,822 A 1,977,329 A 2,052,935 A D110,662 S D128,536 S * D129,894 S 2,310,103 A 2,579,547 A * D170,694 S * D174,038 S * D174,114 S * D174,115 S D174,194 S * D177,982 S *

2/1887 Dalby 1111896 Brown 9/1930 Pidgeon

10/1933 Hoffman 10/1934 Clarke 9/1936 Moran 7/1938 Rielly 7/1941 Wei! ............................ D21702

10/1941 Abeles 2/1943 McDonald

12/1951 Cadous ....................... 450/112 10/1953 Kahn .......................... D21702 2/1955 Goldstein .................... D21702 3/1955 Dior ............................ D21702 3/1955 Dior 3/1955 Prochaska .................... D21702 6/1956 Kahn .......................... D21702

JP

USOOD616627S

(10) Patent No.: US D616,627 S ** Jun.1,2010 (45) Date of Patent:

2,963,022 A 3,026,875 A 3,036,574 A

12/1960 Spetalnik 3/1962 Kaupp 511962 Nellie

(Continued)


2006-316359 1112006

(Continued)

Primary Examiner-Philip S Hyder Assistant Examiner-Anna J Burmeister (74) Attorney, Agent, or Firm-Irah H. Donner; Wilmer Culter Pickering Hale and Dorr LLP

(57) CLAIM

The ornamental design for a garment, as shown and described herein.

DESCRIPTION





FIG. 5 is a right side elevation view of Embodiment 2, of a garment, where the front and rear elevation views are the same as FIGS. 1-2; and,

FIG. 6 is a left elevation view of Embodiment 2, of a garment.

The center section and lower section of the claimed design is shaded to illustrate different appearance. The broken lines shown in the drawings are for environmental structure only and form no part of the claimed design.




D211,231 s 6/1968 Sallysy 3,454,013 A 7/1969 Cahill D234,649 s 4/1975 Cascio D239,475 s 4/1976 Cascio 4,916,755 A 4/1990 Feigenbaum eta!. 5,915,531 A 6/1999 Hi! pert et a!. 6,000,993 A 12/1999 Erwin D452,600 S 112002 Kim eta!. D453,058 S 112002 Kim eta!.

US D616,627 S Page 2

6,430,748 B1 D556,978 S D595,480 S *

2007/0094765 A1 2008/0134409 A1 2008/0244805 A1

8/2002 Burkhart 12/2007 Thunstedt et al. 7/2009 Giugliano .................... D21702 5/2007 Summers eta!. 6/2008 Karasina

10/2008 Griffin


JP JP

2007-146337 2007-303002

6/2007 1112007

D453,255 S * 212002 Kim ............................ D21702 * cited by examiner


U.S. Patent Jun.1,2010 Sheet 1 of 6

rrl"l rr.,, I I I I II II I I I I II II II II II II II II II It II II II It II II II I I II II I I II II II I I II I I \ \ Ji I I I I 1 \ I 1 I I I I \ 1 I I I I \ I I I II \ \ I I I I II \\ // \\ II '' "'/ \\ It ',', ,."'..,/ \\ ,, ............. _____ ........... \~\

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FIG. 1

US D616,627 S



ro\\ rr1~ II \\ IJ It II \\ 1 1 II II \\ II I I 11 '~, "~/ r r II '~' ,..::;." I I II .._ ... .._._ __ .,.,_,. II

11 '--====--.... r r II II II II II II I I II 1 r 1' I I I I I 1 \ I I I \ \ I; ,, ~ ~ v ~ \ I \ I \ I \ I \ I \ I \ I \ I

)

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FIG. 2

US D616,627 S



,--- .............

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FIG. 3

US D616,627 S



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FIG. 4

US D616,627 S



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US D616,627 S



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FIG. 6

US D616,627 S


Exhibit 3


I IIIII 1111111111111111111111111111111111111111111 11111111111


(54) GARMENT


(73) Assignee: Times Three Clothier, LLC, New York, NY (US)

(**) Term: 14 Years

(21) Appl. No.: 29/362,498

(22)

(63)

Filed: May 26, 2010


Continuation of application No. 29/362,414, filed on May 25, 2010, which is a continuation of application No. 29/350,198, filed on Nov. 12, 2009, now Pat. No. Des. 616,627, which is a continuation of application No. 29/302,500, filed on Jan. 17, 2008, now Pat. No. Des. 606,285.


(56)

D2/731, 732,828,840,718,737,847, 714; 2/112, 113, 69; 450/96, 94, 115, 116, 122-124,


References Cited


357,068 A 2/1887 Dalby 570,696 A 1111896 Brown

1,683,510 A 9/1928 Wiese 1,774,613 A 9/1930 Pidgeon 1,931,822 A 10/1933 Hoffman 1,977,329 A 10/1934 Clarke 2,052,784 A 9/1936 Martin 2,052,935 A 9/1936 Moran Dll0,662 S 7/1938 Rielly D128,536 S 7/1941 Wei! D129,078 S 8/1941 Monteil D129,894 S 10/1941 Abeles

JP

USOOD6224 77S

(10) Patent No.: US D622,4 77 S ** Aug. 31, 2010 (45) Date of Patent:

2,310,103 A D152,981 S

2/1943 McDonald 3/1949 Kaupp

(Continued)


2006-316359 1112006

(Continued)

Primary Examiner-Philip S Hyder Assistant Examiner-Anna J Burmeister (74) Attorney, Agent, or Firm-Stroock & Stroock & Lavan LLP

(57) CLAIM


DESCRIPTION

FIG. 1 is a front elevation view of embodiment 1, of a garment;




FIG. 5 is a right side elevation view of embodiment 2, of a garment, where the front and rear elevation views are the same as FIGS. 1-2; and,

FIG. 6 is a left elevation view of embodiment 2, of a garment.

The phantom and/or broken lines are for illustrative purposes only and form no part of the claimed design. The broken lines depicting the stitching shown in the drawings are for environmental structure only and form no part of the claimed design. The broken lines depicting the human form shown in the drawings are for environmental structure only and form no part of the claimed design.




2,579,547 A 12/1951 Cadous D170,694 S 10/1953 Kahn D174,038 S 2/1955 Goldstein D174,114 S 3/1955 Dior D174,115 S 3/1955 Dior D174,194 S 3/1955 Prochaska D177,982 S 6/1956 Kahn D181,626 S 12/1957 Cassini 2,963,022 A 12/1960 Spetalnik 3,026,875 A 3/1962 Kaupp 3,036,574 A 5/1962 Nellie D211,231 s 6/1968 Sallysy 3,454,013 A 7/1969 Cahill D234,649 s 4/1975 Cascio D239,475 s 4/1976 Cascio 4,916,755 A 4/1990 Feigenbaum eta!.


5,915,531 A 6,000,993 A D452,600 S D453,058 S D453,255 S 6,430,748 B1 D556,978 S D595,480 S

2007/0094765 A1 2008/0078208 A1 2008/0134409 A1 2008/0229474 A1 2008/0244805 A1

6/1999 Hilpert et a!. 12/1999 Erwin

1/2002 Kim 112002 Kim et al. 212002 Kim et al. 8/2002 Burkhart

12/2007 Thunstedt et al. 7/2009 Giugliano 5/2007 Summers eta!. 4/2008 Kronbach 6/2008 Karasina 9/2008 Fons et a!.

10/2008 Griffin


JP JP

2007-146337 2007-303002

6/2007 1112007


U.S. Patent Aug. 31, 2010 Sheet 1 of 6

rrll rr-,, II II II II I I I I II II I I II II II I I II II II I I II II II I I I I I I II I I I I II II II I I II II I I \ \ J / I I I I 1 \ I 1 I I I I \ 1 I I I I \ I I I I I \ \ I I I I It \', // \I ,, ,, ,;/ ,, ,, ' ..... '.... __,"".,.-' \\ ,, ...... _ ...... _____ ....... .; ,,

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1111 I

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FIG. 1

US D622,4 77 S



rr\\ rr-,, I I \ \ It I I I I \\ It I I II \\ / 1 II I I ',' //I II II '', .... ~/ II

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~=~======~===========I======~=~ ... ·.I I I I I I I I I I I I I I I IIi

FIG. 2

US D622,4 77 S



/,.---- ...........

I '\. I \

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,, ~~~----~~~ 1m ,_, ~.!,.--------..J-- ....... ·.·: 11

11 I 1 I il

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.~~=:~=====::L.=====~==-=-~~T---: .. II I I 1 1 11 1

FIG. 3

US D622,4 77 S



' " ',. I Ill ,, I I ~\1

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i I~~ I I I~

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~:·. 1

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.. 111 I I I 1

111

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r:l I I I I II~ ~II I I I I i I I I

~·.:.:.=cc=========z='=======d. · 1 1 I 1 I Iii

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FIG. 4

US D622,4 77 S



' •' .... ·. I II~

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1111 I I I II~ II I I IIi

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FIG. 5

US D622,4 77 S



.... :r---. ____ T---T-rtt

·:I \ I I ··:' ~1111 1 1 I \ i

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Ill I I 1111 ~II I I

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~=cc=========z========~ I I I I I 1111

FIG. 6

US D622,4 77 S


Exhibit 4


I IIIII 1111111111111111111111111111111111111111111 11111111111


(54) GARMENT



(**) Term: 14 Years

(21) Appl. No.: 29/362,414

(22) Filed: May25, 2010


(63) Continuation of application No. 29/350,198, filed on Nov. 12, 2009, now Pat. No. Des. 616,627, which is a continuation of application No. 29/302,500, filed on Jan. 17, 2008, now Pat. No. Des. 606,285.


(56)

D2/731, 732,828,840,718,737,847, 714; 2/112, 113, 69; 450/96, 94, 115, 116, 122-124,


References Cited


357,068 A 2/1887 Dalby 570,696 A 1111896 Brown

1,683,510 A 9/1928 Wiese 1,774,613 A 9/1930 Pidgeon 1,931,822 A 10/1933 Hoffman 1,977,329 A 10/1934 Clarke 2,052,784 A 9/1936 Martin 2,052,935 A 9/1936 Moran Dll0,662 S 7/1938 Rielly D128,536 S 7/1941 Wei! D129,078 S 8/1941 Monteil D129,894 S 10/1941 Abeles 2,310,103 A 2/1943 McDonald D152,981 S 3/1949 Kaupp

JP

USOOD623377S

(10) Patent No.: US D623,377 S ** Sep. 14, 2010 (45) Date of Patent:

2,579,547 A D170,694 S

12/1951 Cadous 10/1953 Kalm

(Continued)


2006-316359 1112006

(Continued)

Primary Examiner-Philip S Hyder Assistant Examiner-Anna J Burmeister (74) Attorney, Agent, or Firm-Stroock & Stroock & Lavan LLP

(57) CLAIM


DESCRIPTION





FIG. 5 is a right side elevation view of Embodiment 2, of a garment, where the front and rear elevation views are the same as FIGS. 1-2; and,

FIG. 6 is a left elevation view of Embodiment 2, of a garment.

The phantom and/or broken lines are for illustrative purposes only and form no part of the claimed design. The broken lines depicting the stitching shown in the drawings are for environmental structure only and form no part of the claimed design. The broken lines depicting the human form shown in the drawings are for environmental structure only and form no part of the claimed design.




D174,038 S 2/1955 Goldstein D174,114 S 3/1955 Dior D174,115 S 3/1955 Dior D174,194 S 3/1955 Prochaska D177,982 S 6/1956 Kahn D181,626 S 12/1957 Cassini 2,963,022 A 12/1960 Spetalnik 3,026,875 A 3/1962 Kaupp 3,036,574 A 5/1962 Nellie D211,231 s 6/1968 Sallysy 3,454,013 A 7/1969 Cahill D234,649 s 4/1975 Cascio D239,475 s 4/1976 Cascio 4,916,755 A 4/1990 Feigenbaum eta!. 5,915,531 A 6/1999 Hi! pert et a!.


6,000,993 A D452,600 S D453,058 S D453,255 S 6,430,748 B1 D556,978 S D595,480 S

2007/0094765 A1 2008/0078208 A1 2008/0134409 A1 2008/0229474 A1 2008/0244805 A1

12/1999 Erwin 1/2002 Kim 112002 Kim et al. 212002 Kim et al. 8/2002 Burkhart

12/2007 Thunstedt et al. 7/2009 Giugliano 5/2007 Summers eta!. 4/2008 Kronbach 6/2008 Karasina 9/2008 Fons et a!.

10/2008 Griffin


JP JP

2007-146337 2007-303002

6/2007 1112007


U.S. Patent Sep.14,2010 Sheet 1 of 6 US D623,377 S

FIG. 1



FIG. 2



FIG. 3



FIG. 4



FIG. 5



FIG. 6


Exhibit 5


USOOD665558S

(12) United States Design Patent Schindler

(IO) Patent No.: (45) Date of Patent:

US D665,558 S ** *Aug. 21, 2012

(54) GARMENT OTHER PUBLICATIONS


Left-hand image on Contents page, "Self' magazine, Jan. 2006 issue.

(2 pages).*


(Continued)

Primary Examiner Karen E. Eldridge Powers

( * ) Notice: This patent is subject to a terminal disclaimer.

(7 4) Attorney, Agent, or Firm Stroock & Stroock & Lavan LLP

(**) Term: 14 Years

(21) Appl. No.: 29/350,288 (57) CLAIM

(22) Filed: Nov. 13, 2009 The ornamental design for a garment, as shown and described herein.

(60)

(51) (52) (58)

(56)

DE


Division of application No. 29/302,500, filed on Jan. 17, 2008, now Pat. No. Des. 606,285, and a division of application No. 29/350,198, filed on Nov. 12, 2009, which is a continuation of application No. 29/302,500.

LOC (9) Cl. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 02-01 U.S. Cl. . ... ... .. ... ... ... ... ... .. ... ... ... ... .. ... ... ... ... ... . D2/701 Field of Classification Search . ... ... ... . D2/700-703,

D2/706, 708,731,732,828,840,718,737, D2/847, 714,800,717,723,756, 793,841;

450/96,94,115,116,122-124,127,132, 450/154,10,15,30,112, 1,3, 7, 11,20,

450/31, 34, 63, 64, 86, 95; 2/112, 113, 69, 2/67, 70, 73, 78.1, 78.2, 78.3, 104, 105, 109,

2/110; 66/176 See application file for complete search history.

References Cited


26,473 A * 12/1859 Brown ............................ 450/95

(Continued)


8513103.2 5/1985

(Continued)

-·~-·-· ., ... ~ Ji' r -·-.... ' . ' . ., ' I'" ~- •.. , / ~ f"'· ~,:.1 '·

/ 1 : ' .... , .'~ /' I • \ I I '· ..... ;-" / I '

I~ ' ; '· .. ·-.... ·- -·---· .--··- ~- .. -""'"" I I i \ I . ~ ----·--.- -·-·- J ,· , J '. ' ' • ~ r t t i ' . ' ; . ,\' :!: ' I • · • I I \ ' I ( ' \ \ l ' I ~ I \\ l/ j • t I \' /t ~ : • • \ \ . • . c I : \ '\ r/ ./ ' : . ' ' ·' / .

/,

••• ·' ' .. ,i I. . ··...::::·. ..... -·"' // ' .. ,~, -·-·-····" _.-:,:...· \ ' ' ... - . ' ' .. ~: .. ::.::-~.,;. ...

i i I l \ \ I i ,,. .,. .. ~\. \ i j/

I ~~\ /~{;;· ·, ! I I I l I I I I l • I , I '· , I . r ';\ I 1:

11

.I ·., I ' . I r ! 1 • i 'I. I 'I ;

: ' 111 I ! I! !

) I !1:

1: i i!i \ ;

r J, •. • 1 \'i, · i ' J ' 1

'' I I ' ' • ' . II' \'~ ... , ., '

' jf \\ ' .i l ' •. \ ' : ; j ' · \ 1 I I 1 I \ , l

j ' / \ l ' .. ' ( . . \ . l ' •' I , ' ,

. ~ lf . "\\ ~ ~ I J ,, I . '·, I , .. , ·, \\• .

·o'•' I \ ',1! ' ' ' I ' I ' ' J I· f • 'I ' ' I

I • I ' ' ' 1 1 ' ' ' : . ~ ' ' .

DESCRIPTION

This application is related to co-pending U.S. Design Application 29/350,290, filed on Nov. 13, 2009, the contents of which are hereby incorporated by reference. FIG. 1 is a front elevation view of Embodiment 1, of a garment; FIG. 2 is a rear elevation view thereof; FIG. 3 is a right elevation view thereof; FIG. 4 is a left elevation view thereof; FIG. 5 is a right side elevation view of Embodiment 2, of a garment, where the front and rear elevation views are the same as FIGS. 1-2; and, FIG. 6 is a left elevation view of Embodiment 2, of a garment. The sleeves are not shown in PIGS. 3-6 for ease of illustration. The center section and lower section of the claimed design is shaded to illustrate a different appearance. The dashed broken lines shown in the drawings illustrate environmental features that form no part of the claimed design. The dash-dot-dotdash broken lines shown at the junction of the bodice with the sleeve and the interior of the bodice represent the bounds of the design and form no part of the claimed design. The broken lines shown in the drawings are for environmental structure only and form no part of the claimed design.


............. ._ J •• ··, ...

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US D665,558 S Page2

U.S. PATENT DOCUMENTS D234,649 S * D239,475 S * 3,949,426 A 4,377,007 A 4,916,755 A * 4,976,653 A 5,083,316 A 5,094,648 A 5,461,725 A 5,566,392 A 5,605,060 A D391,740 S 5,915,531 A * 6,000,993 A * 6,061,832 A 6,185,741 B1 6,282,720 B1 * D452,600 S * D453,058 S * D453,255 S * 6,430,748 B1 * D476,464 S 6,846,217 B1 D556,978 S * 7,395,557 B1 D595,480 S * 7,905,117 B2 *

4/1975 Cascio ........................... D2/703

240,569 A * 357,068 A * 432,442 A * 445,945 A * 570,696 A * 672,028 A * 839,699 A * 933,739 A *

1,007,047 A * 1,088,371 A * 1,110,749 A 1,121,005 A 1,191,865 A 1,249,446 A 1,323,748 A * 1,342,188 A * 1,587,099 A * 1,683,510 A * 1,770,615 A * 1,774,613 A * 1,777,215 A 1,813,043 A 1,828,310 A * 1,886,049 A 1,894,062 A * 1,897,619 A * 1,899,022 A *

D91,329 S 1,931,822 A * 1,953,797 A * 1,977,329 A * RE19,380 E * 2,000,073 A * 2,033,456 A 2,035,377 A * 2,040,058 A * 2,040,561 A * 2,052,784 A * 2,052,935 A * 2,076,748 A 2,097,777 A 2,098,881 A * 2,098,882 A * D110,662 S * 2,190,030 A D128,536 S * D129,078 S * D129,894 S * 2,274,382 A 2,310,103 A * 2,335,751 A 2,579,547 A * D170,694 S * D174,038 S * D174,114 S * D174,115 S * D174,194 S * D174,329 S * 2,723,396 A * D177,982 S * D181,626 S * 2,963,022 A * D191,347 S 3,026,875 A * 3,036,574 A * 3,060,446 A 3,066,675 A 3,217,713 A D211,231 S * 3,421,513 A 3,422,818 A 3,454,013 A * 3,479,844 A 3,556,106 A 3,582,993 A 3,683,910 A * D224,700 S * 3,699,590 A

4/1881 Appleton . .. . . . . .. . . . . .. . . . . . .. . . 66/176 2/1887 Dably ............................. 66/176 7 I 1890 Sanford . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21113 2/1891 Bohne ............................. 66/176

1111896 Brown . . . . . . . . . . . . . . . . . . . . . . . . . . . . 66/1 7 6 4/1901 Appleton . . . . . . . . . . . . . . . . . . . . . . . . 66/176

12/1906 Anderson ........................... 2/67 9/1909 Bodensiek ........................ 450/7

10/1911 Albers et al. . . . . . . . . . . . . . . . . . . . . . . 21109 2/1914 Rossiter .......................... 450/94 9/1914 De Blieux

12/1914 Farnsworth 7/1916 Workman

12/1917 Mell 12/1919 Gitenstein ........................ 2/78.3 6/1920 Jacob . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2/78.1 6/1926 Williams . . . . . . . . . . . . . . . . . . . . . . . . . 2/78.2 9/1928 Carl ................................ 450/20 7 I 1930 Herlich . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2/67 9/1930 Pidgeon .......................... 450/20 9/1930 McGill 7/1931 Foreman

10/1931 Bergh . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2/67 1111932 Rothblum

111933 Schrank .............................. 2/73 211933 Powell ................................ 2/67 211933 Duisdieker ......................... 2/67 5/1933 Redman

10/1933 Hoffman ......................... 450/95 4/1934 Daniel . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2/67

10/1934 Tobin ................................ 2/113 1111934 Craig . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2/7 8.2 511935 Goas ............................... 66/176 3/1936 Cunningham 3/1936 Redmond . . . . . . . . . . . . . . . . . . . . . . . . . 21111 511936 Craig . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 66/176 511936 Ernst ............................... 450/34 9/1936 Charles ........................... 66/176 9/1936 Moran ............................ 450/10 4/1937 Schweig

1111937 Rothman 1111937 Robbins .......................... 450/27 1111937 Robbins .......................... 450/27 7/1938 Rielly ............................ D2/714 2/1940 Kops 7 I 1941 Weil . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . D2/702 8/1941 Monteil . . . . . . . . . . . . . . . . . . . . . . . . . D2/800

10/1941 Abeles ........................... D2/703 2/1942 Richman 2/1943 McDonald ........................ 2/113

1111943 Friedman 12/1951 Cadous ......................... 450/112 10/1953 Kahn ............................. D2/702 211955 Goldstein ...................... D2/702 3/1955 Dior ............................... D2/702 3/1955 Dior ............................... D2/703 3/1955 Prochaska ...................... D2/702 3/1955 Katz .............................. D2/700

1111955 Stack .............................. 450/58 6/1956 Kahn ............................. D2/702

12/1957 Cassini .......................... D2/800 12/1960 Spetalnik ........................ 450/15 9/1961 Herman 3/1962 Kaupp .......................... 450/116 511962 Jeffrey ............................ 450/30

10/1962 Horne 12/1962 Herman 4/1964 Kunel 6/1968 Sallasky . . . . . . . . . . . . . . . . . . . . . . . . . D2/702 111969 Landau 111969 Erteszek 7/1969 Cahill ........................... 450/116

1111969 Silvain 111971 Rosner 6/1971 Keller 8/1972 McKenna . . . . . . . . . . . . . . . . . . . . . . . 602/68 9/1972 Bienefeld . . . . . . . . . . . . . . . . . . . . . . D2/700

10/1972 Webber et al.

4/1976 Cascio ........................... D2/702 4/1976 George 3/1983 Sudjian 4/1990 Feigenbaum et al. .............. 2/67

12/1990 White 111992 Kuehner 3/1992 Turner

10/1995 Witczak 10/1996 Dzelzkalns 211997 Osborne 3/1998 Barrington et al. 6/1999 Hilpert et al. . . . . . . . . . . . . . . . . . . . . . . . 2169

12/1999 Erwin ............................... 450/7 5/2000 Morrison 2/2001 Kehoe 9/2001 Mayer ............................... 2/113 112002 Kim . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . D2/702 112002 Kim . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . D2/703 2/2002 Kim . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . D2/702 8/2002 Burkhart . . . . . . . . . . . . . . . . . . . . . . . . . . 2/78.1 7/2003 Jenkins 112005 Struble et al.

12/2007 Thunstedt ...................... D2/847 7/2008 Ledyard 7/2009 Giugliano . . . . . . . . . . . . . . . . . . . . . . D2/702 3/2011 Kronback . . . . . . . . . . . . . . . . . . . . . . . 66/176

2006/0242748 A1 2007/0094765 A1 * 2008/0134409 A1 * 2008/0229474 A1 * 2008/0244805 A1 *

1112006 Martz 5/2 007 Summers et al. . . . . . . . . . . . . . . . . . 21113 6/2008 Karas ina . . . . . . . . . . . . . . . . . . . . . . . . . . . 21117 9/2008 Fons et al. . . . . . . . . . . . . . . . . . . . . . . . . . 21113

1 0/2 008 Griffin . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2/7 4

DE EP EP EP EP EP EP EP EP EP GB GB GB GB GB JP JP JP JP JP JP JP JP JP JP JP wo wo


202005000716 lJ1 0174179 0774241 1082951 1125566

000385562-0106 000454202-0027 000454202-0121 0006337 55-0027 000730403-0023

116526 212307

1603600 3020687 4004524 2-82707

2001-172806 2002-138302 2003-129303 A 2005-281893 A 2006-316359 2006-316359 A 2007-146337 2007-146337 A 2007-303002 2008-156812 A

96/08217 01175201

4/2005 3/1986 5/1997 3/2001 8/2001 7/2005

12/2005 12/2005 12/2006 5/2007 6/1918 3/1924

1111981 7/2005

10/2007 6/1990 6/2001 5/2002 5/2003

10/2005 * 1112006

1112006 * 6/2007

6/2007 * 1112007

7/2008 3/1996

10/2001

OTHER PUBLICATIONS

Cover and ad page picturing Serena Williams, "Lucky" magazine, Oct. 2003. (2 pages).* Mila Kunis Magazine Cover, [on-line]; [downloaded from the Internet on May 5, 2012]; [cover identified is for Oct. 2003 issue]; lJRL: <http:/ /www.whosdatedwho.com/tpx_1783/mila-kunis/ magazinecovers_13>. ( 4 pages).* Yummie Tummie and Maidenform Settle Patent Infringement and Invalidity Lawsuits, Fox News 44, PR N ewswire (20 11 ). http://www. fox44now.com/story/15242333/yummie-tummie-and-maidenformsettle-patent-infringement-and-invaliditylawsuits?clienttype=printable printed Aug. 12, 2011. Maidenform Brands, Inc. Reports Second Quarter 2011 Results and Provides Guidance for Full Year 2011, News Releases--General News, Iselin, NJ /PRNewswire via COMTEX/ Aug. 10, 2011.


US D665,558 S Page3

Associated Press, "Maidenform 2Q net income drops on settlement,'~ Forbes.com (Aug. 10, 2011 ). http:/ /www.forbes.com/feeds/ap/20 111 08/1 0/business-specialized -consumer-services-us-earnsmaidenform_8611962.html?partner=email printed Aug. 12, 2011. Maidenform's Responses and Objections to TTC's First Set of Request for Production of Documents (Nos. 1-144) Aug. 24,2010. Maidenform's Second Set of Requests for the Production of Documents and Things (Nos. 78-123) Sep. 3, 2010. Maidenform's Second Set of Interrogatories (Nos. 16-17) Sep. 3, 2010. Maidenform's First Supplemental Responses and Objections to TTC's First Set of Interrogatories Sep. 10, 2010. TTC's Responses to Maidenform's Second Set of Requests for Production (Nos. 78-123)---0ct. 12, 2010. TTC's Written Responses to Maidenform's Second Set oflnterrogatories (Nos. 16-17). San Francisco Chronicle article MFOOO 1240-1242. Women's Wear Daily article MF0001087-1088. Oct. 12, 2010. Maidenform's Responses and Objections to TTC's Supplemental First Set of Interrogatories (Nos. 1A-18A) Nov. 2010. Donner's Objections to Maidenform's Request for Production of Documents Included in the Subpoena to I. Donner Feb. 22, 2011. lA Nike Fly Lightweight + Women's Sports Top, Nike, http:// clothing-and-accessories.become.com/nike-fly-lightweightwomens-sports-top-com ... (URL is incomplete) received by Applicant Aug. 24, 2010. 2A Pretty Shapewear Camisole, SassyBax, www.sassybax.com/ pretty-camisole.php received by Applicant Aug. 24, 2010. 3A Underwire Torso Trim, SassyBax, www.sassybax.com/ underwire trim.php received by Applicant Aug. 24, 2010. 4A The Torso Trim, SassyBax, www.sassybax.com/torso_trim. php received by Applicant Aug. 24, 2010. 5A Belly Bra, JCPenney, www.jcpenney.com/jcp/X6. aspx?DeptiD=51669&CatiD=51669&Grptyp=Siz&Item ... (URL is incomplete) received by Applicant Aug. 24,2010. 6A Secret Sculptor Tunic, Shape Fx, www.shapefx.com/store/ Shapewear_Shop_by_Category_Camis_Tanks_Se . . . (URL is incomplete) received by Applicant Aug. 24, 2010. 7 A The Skinny, www.skinnycami.biz/files/ received by Applicant Aug. 24, 2010. 8A Slimplicity Lingerie Strap Camisole, Spanx, www.spanx.com/ product/index.jsp?productld=3977353&cp=2992553.40 15964&par ... (URL is incomplete) received by Applicant Aug. 24, 2010. 9 A Hide & Sleek Cami, Spanx, http:/ /web.archive.org/ ... (URL is incomplete) received by Applicant Aug. 24, 2010. lOA Hide & Sleek Full Slip 18 Inch 060A, Spanx, www.herroom. com/Spanx-060A-Hide-Sleek-Full-Slip-18-Inch.shtml received by Applicant Aug. 24, 2010. llA Teez-Her The Skinny Tank, Teez-Her, www.essentialapparel. com/index.cfm/a/catalog.prodshow/vid/72638/catid/267/Teez ... (URL is incomplete) received by Applicant Aug. 24,2010. 12A Cami-Rolls, http:/ /camirolls.com/shop.shtml received by Applicant Aug. 24, 2010. 13A TummyTee, www.redefyne.com/tummytee.html received by Applicant Aug. 24, 2010. 14A Champion Seamless Empire Top with Built-In Sports Bra, Champion, www.championusa.com/Champion/Products/WomenChampion/Women_ShopByCa ... (URL is incomplete) received by Applicant Aug. 24, 2010. 15A Cosabella Smooth Bodyshaper Cami SHPE702, CosaBella, www.herroom.com/Cosabella-Shpe702-Smooth-BodyshaperCami.shtml received by Applicant Aug. 24, 2010. 16A Daisy Fuentes Slimming Camisole, Kohls, www.kohls.com/ upgrade/webstore/product_page.j sp?Product%3C %3Eprd_id=8 received by Applicant Aug. 24, 2010. 17 A 582L Countouring Balconet Bra Cami-Long Torso, Dumi Shapewear, www.du-mi.com/store/product-info.php?pidl2.html received by Applicant Aug. 24, 2010. 18A Very Precious, Great Glam, http://greatglam.com/pd-veryprecious.cfm received by Applicant Aug. 24, 2010. 19A Sensual Charm, Great Glam, http://greatglam.com/pd-sensual-charml.cfm received by Applicant Aug. 24, 2010.

20A Yalof Schwartz, Suze, "Too Busy for the Gym?'~ Glamour, www.glamour.com/fashion/blogs/ slaves-to-fashion/2007 I 1 0/toobus ... (URL is incomplete) received by Applicant Aug. 24, 2010. Page shown present on Internet approximately Oct. 2007. 21A Underwire Torso Trim, Sassybax, http:/ /webarchive.orglweb/ 20071020033219/sassybax.com received by Applicant Aug. 24, 2010. Page shown present on Internet on Oct. 20, 2007. 22A Nancy Ganz The Belly Band Convertible Bodybriefer 3313, Nancy Ganz, www.herroom.com/NancyGanz ... (URL is incomplete) received by Applicant Aug. 24, 2010. Page shown present on Internet on Nov. 25, 2007. 23A Spanx Hide & Sleek Full Slip 060A, Spanx, www.herroom. com/Spanx-Hide ... (URL is incomplete) received by Applicant Aug. 24, 2010. Page shown on Internet on Nov. 1, 2007. 24A Spanx Hide & Sleek Cami 050, Spanx, www.herroom.com/ Spanx ... (URL is incomplete) received by Applicant Aug. 24, 2010. Page shown present on Internet on Oct. 30, 2007. 25Aa, 25Ab. 25Ac-Collection of Photographs received by Applicant on Dec. 8, 2010 received by Applicant Aug. 24,2010. 26A Alleged Ann Mason Receipt; Nov. 26, 2006. 27Aa, 27Ab Declaration of Ann Mason; May 19,2007. 28A Yummie Tummie and Maidenform Settle Patent Infringement and Invalidity Lawsuits, Fox News 44, PR Newswire (2011). http:// www.fox44now.com/story/ 15242333/yummie-tummie-andmaidenform -settle-patent-infringement -and-invaliditylawsuits?clienttype=printable printed Aug. 12, 2011. 29 A Maidenform Brands, Inc. Reports Second Quarter 20 11 Results and Provides Guidance for Full Year 2011, News ReleasesGeneral News, Iselin, NJ /PRNewswire via COMTEX/ Aug. 10, 2011. 30A Associated Press, "Maidenform 2Q net income drops on settlement," Yahoo News (Aug. 10, 2011 ). http:/ I news.yahoo.com/ maidenform-2q-net-income-drops-settlement-125621767 .htmlprintedApr. 20, 2012. 1 Email from Christine Conforte to Heather Schindler "FW: Tummy Tee," sent Dec. 1, 2006. 2 Email from Christine Conforte to Heather Schindler "Liz Lange," sent Dec. 13, 2006. 3 Email from Heather Schindler to Chistine Conforte "Liz Lange," sent Dec. 13, 2006. 4 Email from Christine Conforte "Liz Lange," sent Dec. 11, 2006. 5 Email from Heather Schindler to Christine Conforte "Liz Lange," sent Dec. 9, 2006. 6 Email from Christine Conforte to Heather Schindler "Liz Lange," sent Dec. 7, 2006. 7 Email from Heather Schindler to Christine Conforte "Liz Lange," sent Dec. 7, 2006. 8 Email from Christine Conforte to Heather Schindler, "Liz Lange," sent Dec. 6, 2006. 9 Email from Heather Schindler to Liz Lange copying Michelle Mooring and Christine Conforte, "Follow Up," sent Jan. 24, 2007. 10 Email from Liz Lange to Heather Schindler copying Christine Conforte and Michelle Mooring, "Follow Up," sent Jan. 23, 2007. 11 Email from Heather Schindler to Liz Lange copying Christine Conforte and Michelle Mooring, "Follow Up," sent Jan. 23, 2007. 12 Email from Liz Lange to Heather Schindler copying Christine Conforte "Follow Up," sent Jan. 19, 2007. 13 Email from Heather Schindler to Christine Conforte copying Michelle Mooring "FW: TummyTube,'~ sent Jan. 31, 2007. 14 Email from Christine Conforte to Heather Schindler copying Liz Lange "Tummy Tube," sent Jan. 30, 2011. 15 Email from Heather Schindler to Liz Lange copying Michelle Mooring and Christine Conforte "TummyTube," sent Feb. 6, 2007. 16 Email from Liz Lange to Heather Schindler and Christine Conforte "TummyTube,'~ sent Feb. 2, 2007. 17 Email from Heather Schindler to Christine Conforte copying Liz Lange "TummyTube," sent Feb. 2, 2007. 18 Email from Christine Conforte to Heather Schindler copying Liz Lange "TummyTube," sent Jan. 30, 2007. 19 "Style Spy," Lucky Magazine, p. 26, Jan. 2002 issue. 20 LeCove swimwear catalog, p. 26 received by Applicant Aug. 24, 2010.


US D665,558 S Page4

21 JC Penney maternity catalog, p. 165 received by Applicant Aug. 24, 2010. 22 WWD Intimates catalog, cover received by Applicant Aug. 24, 2010. 23 "Fashion Q & A,'' Shape Magazine, p. 68. Jan. 2008 issue. 24 Vogue Magazine, vol. 15, cover received by Applicant Aug. 24, 2010. 25 "Self Selects," Self Magazine, p. 162. Jun. 2000 issue. 26 "Do good while you shop," Lucky Magazine, p. 286. Oct. 2006 • ISSUe.

27 "Photo Finish," WWD Intimates catalog. 2006. 28 "Shapewear Report," In Style Magazine, pp. 338-346. Sep. 2007 issue. 29 Self Magazine advertisements. Jun. 2007 issue. 30 Self Magazine, p. 33. Dec. 2007 issue. 31 "My best stress bust is ... ," Self Magazine, p. 200. Apr. 2002 • ISSUe.

32 Times Three Clothier, LLC Sales Order No. 1000, Sales Order Date Apr. 30, 2007. 33 Email from Ivan A. Saperstein to Heather Schindler copying Michelle Mooring and J. Schindler "Gatsby's" sent Jul. 20, 2007. 34 Email from Heather Schindler to Ivan A. Saperstein copying Michelle Mooring and J. Schindler "Gatsby's" Jul. 20, 2007. 3 5 Email from Ivan A. Saperstein to Michelle Mooring, Heather Schindler and J. Schindler "Gatsby's" Jul. 20, 2007. 36 Invoice billed and shipped to Seams Beautiful-Carolyn Weaver, Invoice# 00006138, Aug. 11, 2006. 37 Invoice billed and shipped to Seams Beautiful-Carolyn Weaver, Invoice# 00006155, Aug. 25, 2006. 38 Packing Slip to Seams Beautiful, Aug. 25, 2006. 39a, 39b, 39c, 39d, 39e, 39f, 39g, 39h, 39i Maidenform v. Times Three Clothier LLC d/b/a Yummie Tummie, Case No. 10-cv-1661 (GBD) SkinnyCami Declarations. pp. 1-118 (submitted in 9parts) received by Applicant Dec. 14, 2010. 40 Applicant's Specifications. pp.1-3 (submitted in 1 part) dated May 24, 2007 -Jun. 11, 2007.

41 Maidenform's Initial Disclosures Jul. 9, 2010. pp. 1-13 (submitted in 1 part). 42 Maidenform's Responses and Objections to TTCc's First Set of Interrogatories (Nos. 1-18) Aug. 24,2010. pp. 1-12 (submitted in 1 part). 43 Skinny Camisole Slimmer Corset Shaper Girdle, http:/ /co 1 03w. co1103.mail.live.com/mail/RteTrame_15.1.3059.0405.html?pf pf (URL is incomplete). Pages 1-3 (submitted in 1 part) received by Applicant Aug. 24, 2010 . 44a, 44b, 44c Applicant's Tummy Tees. pp. 1-3 (submitted in 3 parts). 6Ba is Applicant's Tummy Tee early prototype sewn in Feb./ Mar. 2005. 6Bb and6Bc are photos of Applicant's production sample first received May 30, 2007. 45---Gazelle Sleeveless Long Shirt, Adidas, www.shopadidas.com/ product/index.j sp?productiD=3847890&v2=y&cp=37 4817 5.3 . . . (URL is incomplete) received by Applicant Aug. 24,2010 . 46 Super Soft Slimmer Tank, MyShape, www.myshape.com/shop/ style/ 11906?ci_sku= 11906&utm_source ... (URL is incomplete) received by Applicant Aug. 24, 2010. 47 Ann Michell Spaghetti Strap Tank Top Style 982, Lauren Silva, www.laurensilva.com/ Ann_Michell_Spaghetti_Strap_Camisole_Control_Shirt_p/an ... (URL is incomplete) received by Applicant Aug. 24, 2010. 48 New Marilyn Monroe Smoothing Camisole 7762, ebay, www. cgi.ebay.com/New-Marilyn-Monroe-Smoothing-Camisole-7762-28 . .. (URL is incomplete) received by Applicant Aug. 24,2010. 49 Nancy Ganz The Belly Band Convertible Bodybriefer 3313, Her Room, www.herroom.com/Nancy-Ganz-3313-The-Belly-BandConvertible-Bodyvriefer.sht ... (URL is incomplete) received by Applicant Aug. 24, 2010. 50 Nike Seamless Airborne Women's Long Tank Top, Nike, http:// store.nike.com/us/en_us/?l=shop,pdp,ctr-inline/cid-1/pid-282277/ pgid-238467 received by Applicant Aug. 24, 2010.

* cited by examiner



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Exhibit 6


(12) United States Design Patent Schindler

(54) GARMENT



(**) Term: 14 Years

(21) Appl. No.: 29/392,830

(22) Filed: May 26, 2011

(60)

(51) (52) (58)

(56)

DE


Continuation of application No. 29/350,290, filed on Nov. 13, 2009, now abandoned, which is a division of application No. 29/302,500, filed on Jan. 17, 2008, now Pat. No. Des. 606,285, said application No. 29/392,830 is a continuation of application No. 29/350,288, filed on Nov. 13, 2009, which is a division of application No. 29/302,500.

LOC (9) Cl. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 02-01 U.S. Cl. . ... ... .. ... ... ... ... ... .. ... ... ... ... .. ... ... ... ... ... . D2/701 Field of Classification Search . . . . . . . . . . . . . . . . . . . D2/700,

D2/701, 702,703,706, 708, 714, 717, 718, D2/723, 731, 732, 756, 793, 800, 828, 840, D2/841, 847; 2/67, 69, 70, 73, 78.1, 78.2,

2/7 8 .3' 1 04' 1 0 5' 1 09' 11 0' 112' 113; 6 6/ 17 6; 450/1,3, 7, 10, 11, 15,20,30,31,34,63,

450/64,86,94,95,96,112,115,116,122, 450/123, 124, 127, 132, 154

See application file for complete search history.

References Cited


357,068 A 2/1887 Dalby

(Continued)


G8513103.2 8/1985

(Continued)

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USOOD666384S

(IO) Patent No.: US D666,384 S ** Sep. 4, 2012 (45) Date of Patent:

OTHER PUBLICATIONS

Left-hand image on Contents page, "Self' magazine, Jan. 2006 issue. (2 pages).*

(Continued)

Primary Examiner Karen E Eldridge Powers (7 4) Attorney, Agent, or Firm Stroock & Stroock & Lavan LLP

(57) CLAIM I claim the ornamental design for a garment, as shown and described.

DESCRIPTION

This application is related to the following applications: U.S. Design application Ser. No. 29/362,414, filed on May 25, 2010 now U.S. Pat. No. D623,377, U.S. Design application Ser. No. 29/362,498, filed on May 26, 2010 now U.S. Pat. No. D622,477, U.S. Design application Ser. No. 29/350,198, filed on Nov. 12, 2009 now U.S. Pat. No. D616,627, the contents of each of the above applications are hereby incorporated by reference. FIG. 1 is a front elevation view of embodiment 1, of a garment; FIG. 2 is a rear elevation view thereof; FIG. 3 is a right elevation view thereof; FIG. 4 is a left elevation view thereof; FIG. 5 is a right side elevation view of embodiment 2, of a garment, where the front and rear elevation views are the same as FIGS. 1-2; and, FIG. 6 is a left elevation view of embodiment 2, of a garment. The dashed broken lines depicting stitching and the human form shown in the drawings are for environmental structure only and form no part of the claimed design. The dash-dotdot-dash broken lines shownatthejunctionofthe bodice with the sleeve and the interior of the bodice represent the bounds of the design and form no part of the claimed design.

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US D666,384 S Page2

U.S. PATENT DOCUMENTS 6,846,217 B1 D521,712 S * 7,115,015 B2 * 7,181,775 B2 * D556,978 S 7,395,557 B1 D595,480 S RE41,654 E * 7,878,881 B2 * 7,900,276 B2 * D644,411 S * D644,412 S *

112005 Struble et al.

570,696 A 709,200 A * 933,739 A

1,110,749 A 1,121,005 A 1,191,865 A 1,249,446 A 1,683,510 A * 1,774,613 A 1,777,215 A 1,813,043 A 1,886,049 A

D91,329 S 1,931,822 A 1,977,329 A 2,033,456 A 2,040,058 A 2,040,657 A * 2,052,935 A 2,076,748 A 2,097,777 A D110,662 S D111,201 S * 2,190,030 A D128,536 S D129,894 S 2,274,382 A 2,310,103 A 2,335,751 A * 2,579,547 A D170,694 S D174,038 S D174,114 S D174,115 S D174,194 S D177,982 S 2,963,022 A 2,976, 708 A * D191,347 S 3,026,875 A 3,036,574 A 3,060,446 A 3,066,675 A 3,217,713 A D211,231 S 3,421,513 A 3,422,818 A 3,454,013 A 3,479,844 A 3,490,449 A * 3,556,106 A 3,582,993 A 3,699,590 A D234,649 S D239,475 S 3,949,426 A 4,377,007 A 4,916,755 A 4,976,653 A 5,083,316 A 5,094,648 A 5,461,725 A 5,566,392 A 5,605,060 A 5,667,422 A * D391,740 S D393,736 S * 5,772,492 A * 5,915,531 A 6,000,993 A 6,061,832 A 6,185,741 B1 D452,600 S D453,058 S D453,255 S 6,430,748 B1 D476,464 S 6,766,533 B1 *

1111896 Brown 9/1902 Buckley . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2/73 9/1909 Bodensiek 9/1914 De Blieux

12/1914 Farnsworth 7/1916 Workman

12/1917 Mell 9/1928 Wiese ............................. 450/20 9/1930 Pidgeon 9/1930 McGill 7/1931 Foreman

1111932 Rothblum 5/1933 Redman

10/1933 Hoffman 10/1934 Tobin 3/1936 Cunningham 5/1936 Mendel et al. 5/1936 Kops et al. .................... 139/421 9/1936 Moran 4/1937 Schweig

1111937 Rothman 7/1938 Rielly 9/1938 !merman ........................ D2/723 2/1940 Kops 7/1941 Weil

10/1941 Abeles 2/1942 Richman 2/1943 McDonald

1111943 Friedman ............................ 2/73 12/1951 Cadous 10/1953 Kahn 2/1955 Goldstein 3/1955 Dior 3/1955 Dior 3/1955 Prochaska 6/1956 Kahn

12/1960 Spetalnik 3/1961 Gordon ........................... 66/176 9/1961 Herman 3/1962 Kaupp 5/1962 Jeffrey

10/1962 Horne 12/1962 Herman 1111965 Kunel 6/1968 Salisky 111969 Landau 111969 Erteszek 7/1969 Cahill

1111969 Silvain 111970 Ewehvahn .................... 450/155 111971 Rosner 6/1971 Keller

10/1972 Webber et al. 4/197 5 Lo Cascio 4/1976 LoCascio 4/1976 George 3/1983 Sudjian 4/1990 Feigenbaum et al.

12/1990 White 111992 Kuehner 3/1992 Turner

10/1995 Witczak 10/1996 Dzelzkalns 211997 Osborne 9/1997 Erwin ............................. 450/30 3/1998 Barrington et al. 4/1998 Rubin . . . . . . . . . . . . . . . . . . . . . . . . . . . . D2/717 6/1998 Erwin ............................. 450/30 6/1999 Hilpert et al.

12/1999 Erwin 5/2000 Morrison 2/2001 Kehoe 112002 Kim 112002 Kim 2/2002 Kim 8/2002 Burkhart 7/2003 Jenkins 7/2004 Meier et al. . . . . . . . . . . . . . . . . . . . . . . . . . 2/67

5/2006 Overby . . . . . . . . . . . . . . . . . . . . . . . . . . D2/717 10/2006 Horii et al. ...................... 450/33 2/2007 Carney . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2/311

12/2007 Thunstedt 7/2008 Ledyard 7/2009 Giugliano 9/2010 Struble et al .................... 450/31 2/2011 Hendrickson ................... 450/36 3/2011 Hendrickson et al ............. 2/237 9/2011 Guerrier . . . . . . . . . . . . . . . . . . . . . . . . D2/703 9/2011 Reuther . . . . . . . . . . . . . . . . . . . . . . . . . D2/714

200110054303 A1 * 2004/0163159 A1 * 2006/0242748 A1 2007/0094765 A1 2007/0118062 A1 * 2008/0078208 A1 * 2008/0134409 A1 2008/0244805 A1 2009/0299258 A1 * 201110061147 A1 *

12/2 00 1 Browder, Jr. . . . . . . . . . . . . . . . . . . . . 66/1 71 8/2004 Edwards et al. . ................. 2/338

1112006 Martz 5/2007 Summers et al. 5/2 007 Fleck . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 60 2/7 5 4/2008 Kronbach . . . . . . . . . . . . . . . . . . . . . . . 66/171 6/2008 Karasina

10/2008 Griffin 12/2009 Cureington-Sims ............ 602/61 3/2011 Welfeld . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2/237

DE EP EP EP EP EP EP EP EP EP GB GB GB GB GB JP JP JP JP JP JP JP JP JP wo wo


202005000716 lJ1 0174179 0774241 1082951 1125566

000385562-0106 000454202-0027 000454202-0121 0006337 55-0027 000730403-0023

116526 212307

1603600 3020687 4004524 2-82707

2001-172806 2002-138302 2003-129303 A 2005-281893 A 2006-316359 A 2007-146337 A 2007-303002 2008-156812 A

96/08217 01175201

4/2005 3/1986 5/1997 3/2001 8/2001 7/2005

12/2005 12/2005 12/2006 5/2007 6/1918 3/1924

1111981 7/2005

10/2007 6/1990 6/2001 5/2002 5/2003

10/2005 1112006 6/2007

1112007 7/2008 3/1996

10/2001

OTHER PUBLICATIONS

Cover and ad page picturing Serena Williams, "Lucky" magazine, Oct. 2003. (2 pages).* Mila Kunis Magazine Cover, [on-line]; [downloaded from the Internet on May 5, 2012]; [cover identified is for Oct. 2003 issue]; lJRL: <http:/ /www.whosdatedwho.com/tpx_1783/mila-kunis/ magazinecovers_13>. ( 4 pages).* Maidenform Brands, Inc. Reports Second Quarter 2011 Results and Provides Guidance for Full Year 2011, News Releases--General News, Iselin, NJ /PRNewswire via COMTEX/ Aug. 10, 2011. Associated Press, "Maidenform 2Q net income drops on settlement," Forbes.com (Aug. 10, 2011). http://www.forbes.com/feeds/ap/20 111 08/1 O/business-specialized-consumer-services-us-earnsmaidenform_8611962.html?partner=email printedAug. 12,2011. Maidenform's Responses and Objections to TTC's First Set of Requests for Production of Documents (Nos. 1-144) Aug. 24, 2010. Maidenform's Second Set of Requests for the Production of Documents and Things (Nos. 78-123) Sep. 3, 2010. Maidenform's Second Set of Interrogatories (Nos. 16-17) Sep. 3, 2010. Maidenform's First Supplemental Responses and Objections to TTC's First Set of Interrogatories Sep. 10, 2010. TTC's Responses to Maidenform's Second Set of Requests for Production (Nos. 78-123)---0ct. 12, 2010.


US D666,384 S Page3

TTC's Written Responses to Maidenform's Second Set oflnterrogatories (Nos. 16-17). San Francisco Chronicle article MFOOO 1240-1242. Women's Wear Daily article MF0001087-1088. Oct. 12, 2010. Maidenform's Responses and Objections to TTC's Supplemental First Set of Interrogatories (Nos. 1A-18A) Nov. 26, 2010. I. Donner's Objections to Maidenform's Request for Production of Documents Included in the Subpoena to I. Donner Feb. 22, 2011. Email from Christine Conforte to Heather Schindler "FW: Tummy Tee," sent Dec. 1, 2006. Email from Christine Conforte to Heather Schindler "Liz Lange,', sent Dec. 13, 2006. Email from Heather Schindler to Chistine Conforte "Liz Lange," sent Dec. 13, 2006. Email from Christine Conforte "Liz Lange," sent Dec. 11, 2006. Email from Heather Schindler to Christine Conforte "Liz Lange,', sent Dec. 9, 2006. Email from Christine Conforte to Heather Schindler "Liz Lange,', sent Dec. 7, 2006. Email from Heather Schindler to Christine Conforte "Liz Lange,', sent Dec. 7, 2006. Email from Christine Conforte to Heather Schindler, "Liz Lange,', sent Dec. 6, 2006 Email from Heather Schindler to Liz Lange copying Michelle Mooring and Christine Conforte, "Follow Up,', sent Jan. 24, 2007. Email from Liz Lange to Heather Schindler copying Christine Conforte and Michelle Mooring, "Follow Up,', sent Jan. 23, 2007. Email from Heather Schindler to Liz Lange copying Christine Conforte and Michelle Mooring, "Follow Up,', sent Jan. 23, 2007. Email from Liz Lange to Heather Schindler copying Christine Conforte "Follow Up,', sent Jan. 19, 2007. Email from Heather Schindler to Christine Conforte copying Michelle Mooring "FW: TummyTube," sent Jan. 31, 2007. Email from Christine Conforte to Heather Schindler copying Liz Lange "Tummy Tube,', sent Jan. 30, 2011. Email from Heather Schindler to Liz Lange copying Michelle Mooring and Christine Conforte "TummyTube," sent Feb. 6, 2007. Email from Liz Lange to Heather Schindler and Christine Conforte "TummyTube," sent Feb. 2, 2007. Email from Heather Schindler to Christine Conforte copying Liz Lange "TummyTube,', sent Feb. 2, 2007. Email from Christine Conforte to Heather Schindler copying Liz Lange "TummyTube,', sent Jan. 30, 2007. "Style Spy,', Lucky Magazine, p. 26, Jan. 2002 issue. LeCove swimwear catalog, p. 26 received by Applicant Aug. 24, 2010. JC Penney maternity catalog, p. 165 received by Applicant Aug. 24, 2010. WWD Intimates catalog, cover received by Applicant Aug. 24,2010. "Fashion Q & A,', Shape Magazine, p. 68. Jan. 2008 issue. Vogue Magazine, vol. 15, cover received by Applicant Aug. 24, 2010. "Self Selects,', Self Magazine, p. 162. Jun. 2000 issue. "Do good while you shop," Lucky Magazine, p. 286. Oct. 2006 issue. "Photo Finish," WWD Intimates catalog. 2006. "Shapewear Report," In Style Magazine, pp. 338-346. Sep. 2007 • ISSUe.

Self Magazine advertisements. Jun. 2007 issue. Self Magazine, p. 33. Dec. 2007 issue. "My best stress bust is ... ,',Self Magazine, p. 200. Apr. 2002 issue. Times Three Clothier, LLC Sales Order No. 1000, Sales Order Date Apr. 30, 2007. Email from Ivan A. Saperstein to Heather Schindler copying Michelle Mooring and J. Schindler "Gatsby's" sent Jul. 20, 2007. Email from Heather Schindler to Ivan A. Saperstein copying Michelle Mooring and J. Schindler "Gatsby's" Jul. 20, 2007. Email from Ivan A. Saperstein to Michelle Mooring, Heather Schindler and J. Schindler "Gatsby's', Jul. 20, 2007. Invoice billed and shipped to Seams Beautiful-Carolyn Weaver, Invoice# 00006138, Aug. 11, 2006. Invoice billed and shipped to Seams Beautiful Carolyn Weaver, Invoice# 00006155, Aug. 25, 2006. Packing Slip to Seams Beautiful, Aug. 25, 2006.

M aidenform v. Times Three Clothier LLC dlb/ a Yummie Tummie, Case No. 10-cv-1661 (GBD) SkinnyCami Declarations. pp. 1-118 (submitted in 9 parts) received by Applicant Dec. 14, 2010. Applicant's Specifications. pp 1-3 (submitted in 1 part) dated May 24, 2007 -Jun. 11, 2007. Mai denform' s Initial Disclosures Jul. 9, 20 1 0. pp. 1-13 (submitted in 1 part). Maidenform's Responses and Objections to TTC's First Set of Interrogatories (Nos. 1-18) Aug. 24, 2010. pp. 1-12 (submitted in 1 part). Skinny Camisole Slimmer Corset Shaper Girdle, http://co103w. co1103.mail.live.com/mail/RteTrame_15.1.3059.0405.html?pf pf (URL is incomplete). pp. 1-3 (submitted in 1 part) received by Applicant Aug. 24, 2010. Applicant's Tummy Tees. pp. 1-3 (submitted in 3 parts). 6Ba is Applicant's Tummy Tee early prototype sewn in Feb./Mar. 2005. 6Bb and 6Bc are photos of Applicant's production sample first received May 30, 2007. Gazelle Sleeveless Long Shirt, Adidas, www.shopadidas.com/product/index.jsp?productiD=3847890&v2=y&cp=3748175.3 ... (URL is incomplete) received by Applicant Aug. 24,2010. Super Soft Slimmer Tank, MyShape, www.myshape.com/shop/style/ 11906?ci_sku= 11906&utm_source . . . (URL is incomplete) received by Applicant Aug. 24, 2010. Ann Michell Spaghetti Strap Tank Top Style 982, Lauren Silva, www.laurensilva.com/ Ann_Michell_Spaghetti_Strap_Camisole_Control_Shirt_p/an ... (URL is incomplete) received by Applicant Aug. 24, 2010. New Marilyn Monroe Smoothing Camisole 7762, ebay, www.cgi. ebay.com/New-Marilyn-Monroe-Smoothing-Camisole-7762-28 ... (URL is incomplete) received by Applicant Aug. 24,2010. Nancy Ganz The Belly Band Convertible Bodybriefer 3313, Her Room, www.herroom.com/Nancy-Ganz-3313-The-Belly-BandConvertible-Bodyvriefer.sht ... (URL is incomplete) received by Applicant Aug. 24, 2010. Nike Seamless Airborne Women's Long Tank Top, Nike, http:/ /store. nike.com/us/en_us/? 1 =shop,pdp,ctr-inline/cid-1/pid-282277 /pgid-238467 received by Applicant Aug. 24, 2010. Nike Fly Lightweight+ Women's Sports Top, Nike, http:/ /clothingand -accessories.become.com/nike-fly-lightweight -womens-sportstop-com ... (URL is incomplete) received by Applicant Aug. 24, 2010. Pretty Shapewear Camisole, SassyBax, www.sassybax.com/prettycamisole.php received by Applicant Aug. 24, 2010. Underwire Torso Trim, SassyBax, www.sassybax.com/underwire_ trim. php received by Applicant Aug. 24, 2010. The Torso Trim, SassyBax, www.sassybax.com/torso_trim.php received by Applicant Aug. 24, 2010. Belly Bra, JCPenney, www.jcpenney.com/jcp/X6. aspx?DeptiD=51669&CatiD=51669&Grptyp=Siz&Item ... (URL is incomplete) received by Applicant Aug. 24,2010. Secret Sculptor Tunic, Shape Fx, www.shapefx.com/store/ Shapewear_Shop_by_Category_Camis_Tanks_Se ... (URL is incomplete) received by Applicant Aug. 24, 2010. The Skinny, www.skinnycami.biz/files/ received by Applicant Aug . 24,2010. Slimplicity Lingerie Strap Camisole, Spanx, www.spanx.com/product/index.j sp?productld=39773 53&cp=29925 53.40 15964&par . . . (URL is incomplete) received by Applicant Aug. 24,2010. Hide & Sleek Cami, Spanx, http:/ /web.archive.orgl . . . (URL is incomplete) received by Applicant Aug. 24, 2010. Hide & Sleek Full Slip 18 Inch 060A, Spanx, www.herroom.com/ Spanx-060A-Hide-Sleek-Full-Slip-18-Inch.shtml received by Applicant Aug. 24, 2010. Teez-Her The Skinny Tank, Teez-Her, www.essentialapparel.com/ index.cfm/a/catalog.prodshow/vid/72638/catid/267 /Teez ... (URL is incomplete) received by Applicant Aug. 24,2010. Cami-Rolls, http:/ /camirolls.com/shop.shtml received by Applicant Aug. 24, 2010. TummyTee, www.redefyne.com/tummytee.html received by Applicant Aug. 24, 2010.


US D666,384 S Page4

Champion Seamless Empire Top with Built-In Sports Bra, Champion, www.championusa.com/Champion/Products/Women-Champion/Women_ShopByCa . . . (URL is incomplete) received by Applicant Aug. 24, 2010. Cosabella Smooth Bodyshaper Cami SHPE702, CosaBella, www. herroom.com/Cosabella-Shpe702-Smooth-Bodyshaper-Cami.shtml received by Applicant Aug. 24,2010. Daisy Fuentes Slimming Camisole, Kohls, www.kohls.com/upgrade/webstore/product_page.j sp?PRODUCT%3C%3 Eprd_id=8 received by Applicant Aug. 24, 2010. 582L Countouring Balconet Bra Cami-Long Torso, Dumi Shapewear, www.du-mi.com/store/product-info.php? pid12.html received by Applicant Aug. 24, 2010. Very Precious, Great Glam, http://greatglam.com/pd-very-precious. cfm received by Applicant Aug. 24, 2010. Sensual Charm, Great Glam, http://greatglam.com/pd-sensualcharm1.cfm received by Applicant Aug. 24, 2010. Yalof Schwartz, Suze, "Too Busy for the Gym?" Glamour, www. glamourcom/fashion/blogs/ slaves-to-fashion/2007 I 1 0/too-bus . . . (URL is incomplete) received by Applicant Aug. 24, 2010, Page shown present on Internet approximately Oct. 2007. Underwire Torso Trim, Sassybax, http:/ /webarchive.orglweb/ 20071020033219/sassybax.com received by Applicant Aug. 24, 2010, Page shown present on Internet on Oct. 20, 2007.

Nancy Ganz The Belly Band Convertible Bodybriefer 3313, Nancy Ganz, www.herroom.com/N ancyGanz . . . (URL is incomplete) received by Applicant Aug. 24, 2010, Page shown present on Internet on Nov. 25, 2007. Spanx Hide & Sleek Full Slip 060A, Spanx, www.herroom.com/ Spanx-Hide ... (URL is incomplete) received by Applicant Aug. 24, 2010, Page shown present on Internet on Nov. 1, 2001. Spanx Hide & Sleek Cami 050, Spanx, www.herroom.com/Spanx .. . (URL is incomplete) received by Applicant Aug. 24, 2010, Page shown present on Internet on Oct. 30, 2007. Collection of Photographs received by Applicant (submitted in 3 parts) on Dec. 8, 2010 received by Applicant Aug. 24, 2010. Alleged Ann Mason Receipt; Nov. 26, 2006. Declaration of Ann Mason; May 19, 2007. Yummie Tummie and Maidenform Settle Patent Infringement and Invalidity Lawsuits, Fox News 44, PR N ewswire (20 11 ). http://www. fox44now.com/story/15242333/yummie-tummie-and-maidenformsettle-patent-infringement-and-invaliditylawsuits?clienttype=printable printed Aug. 12, 2011. Maidenform Brands, Inc. Reports Second Quarter 2011 Results and Provides Guidance for Full Year 2011, News Releases--General News, Iselin, NJ /PRNewswire via COMTEXT/ Aug. 10, 2011. Associated Press, "Maidenform 2Q net income drops on settlement," Yahoo News (Aug. 10, 2011 ). http:/ /news.yahoo.com/maidenform-2q-net-income-drops-settlement-125621767.html printed Apr. 20, 2012.

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-1- NY 74509515v4


ATLANTA DIVISION

SPANX, INC, ) ) Plaintiff, ) Case No. 12-CV-00710-WSD ) v. ) ) TIMES THREE CLOTHIER, LLC ) d/b/a Yummie Tummie, ) ) Defendant. )

DECLARATION OF RICHARD ROTHFELD

I, Richard Rothfeld, declare that:

1. I am the General Counsel of Times Three Clothier, LLC d/b/a

Yummie Tummie (“Yummie Tummie”). As a result of my position, I am familiar

with the organization of Yummie Tummie, its business operations, and the location

of witnesses and documents in Yummie Tummie’s possession. I am also familiar

with companies in the shapewear garment industry.

2. Yummie Tummie is a limited liability company organized under the

laws of New York. Yummie Tummie’s headquarters and showroom are located in

New York City.


-2- NY 74509515v4

3. Yummie Tummie owns several patents related to apparel products

which are at issue in this action. Documents and records relating to the

development of Yummie Tummie’s patents are located at Yummie Tummie’s

offices in New York City.

4. Heather Thomson, the inventor of the products at issue, and Wendy

Herman, head of sales of the products at issue, reside in the New York

metropolitan area and their offices are located in New York City.

5. In light of negotiations between Yummie Tummie and Spanx

regarding Yummie Tummie’s infringement allegations, Yummie Tummie

refrained from filing suit against Spanx, although it was ready to do so.

6. Attached as Exhibit 1 is an article from Forbes Magazine entitled

“Undercover Billionaire: Sara Blakely Joins the Rich List Thanks to Spanx”

available at http://www.forbes.com/sites/clareoconnor/2012/03/07/ undercover-

billionaire-sara-blakely-joins-the-rich-list-thanks-to-spanx/ (last accessed April 1,

2013).

7. Based on Exhibit 1, Yummie Tummie is a significantly smaller

company than Spanx, Inc. measured in any conceivable manner.

I hereby declare that all statements made herein of my own knowledge are

true and that these statements were made with the knowledge that willful false


4/1/13 Undercover Billionaire: Sara Blakely Joins The Rich List Thanks To Spanx - Forbes

www.forbes.com/sites/clareoconnor/2012/03/07/undercover-billionaire-sara-blakely-joins-the-rich-list-thanks-to-spanx/print/ 1/7

This story appears on the Mar. 26, 2012 cover of Forbes.

Sara Blakely stands topless at a conference room table. It’s Monday morning

at the Spanx headquarters in Atlanta, and the founder of the hosiery company

has been in a product development meeting for all of five minutes before

walking out abruptly. She returns a minute later in nothing but a lacy taupe

bra with black pants and beige wedges and adjusts herself in a full-length

mirror, worrying aloud about the metal clasps on this early prototype. Will

they create lumps under her clothes? Her CEO, Laurie Ann Goldman — petite

and glamorous in a leopard print shift dress — tugs on Blakely’s straps.

Meet Sara Blakely

The conference room looks like a boudoir designed by Willy Wonka: a jar of

gum balls here, a loud houndstooth print there. Blakely hardly blinks in the

presence of five colleagues and me as she removes the bra and tries on a

second prototype. She’s been getting half-naked in public for the last decade,

controlling every detail of the new category in women’s retail—shapewear—

that she created from a one-product wonder sold out of her apartment.

Today Spanx is to slimming undergarments what Kleenex is to tissues: a

brand that stands for the category. It nets an estimated 20% on revenue just

south of $250 million. In recent months four Wall Street investment banks

separately valued Spanx at an average $1 billion, a sum Forbes corroborated

with the help of industry analysts. Blakely owns 100% of the private company,

has zero debt, has never taken outside investment and hasn’t spent a nickel

on advertising. At 41 she’s the youngest woman to join this year’s World’s

Billionaires list without help from a husband or an inheritance. She is part of a

tiny, elite club of American women worth ten figures on their own, including

Oprah Winfrey and Meg Whitman.

Lots of women, from Betty Grable to Kim Kardashian, have put their butts on

the line to plump their profiles and profits. Far fewer have had to overcome

three phobias—fear of heights, fear of flying and stage fright—to master the art

of selling. Blakely is on the road “always,” she says. She feels dizzy in tall

buildings (it doesn’t help to have a Manhattan condo on the 37th floor) and

often cries in midair. She’s unwilling to board a plane without her iPod, so she

LI ST S | 3/07/2012 @ 11:54AM | 988,301 views

Undercover Billionaire: SaraBlakely Joins The Rich ListThanks To Spanx

Clare O'Connor, Forbes Staff

The billionaire beat: wealth, entrepreneurs and money in politics.




can play the same Mark Knopfler song, “What It Is,” at every takeoff. “I have

sweaty palms, panic attacks, my heart’s racing,” says Blakely, whose Floridian

roots you occasionally hear in her “Ah” for “I.” She once had to muster the

courage to hawk her wares 6 to 12 times a month on home shopping channel

QVC; now that Spanx is so well-known, it’s maybe once a month but for hours

at a time. Blakely had early practice wrestling with anxiety when she

occasionally did standup comedy. “Every time I went onstage I was so terrified

I almost threw up,” she recalls. “I learned why they call it the greenroom.”

Spanx started as a one-woman show. In her first year Blakely shilled her new

invention from a folding table in the foyer of Neiman Marcus, with a giant

before-and-after photo of her derriere in cream slacks and bikini briefs

underneath in one shot (an embarrassingly obvious Maginot Line) and $30

Spanx Power Panties (et voilà! no more line) in the other.

Over the last couple of years Spanx has depended less on Blakely’s face—and

other body parts—to shift its shapers and stay ahead of a handful of copycats.

The company is now run by a team of 125, only 16 of them men. It sells 200

products in 11,500 department stores, boutiques and online shops in 40

countries. Distributors worldwide clamor to get on the stockist list. “With

international, we’re just warming up,” says Goldman.

Blakely would still happily pose in nothing but Spanx on the cover of any of

the nine catalogs mailed each year to 6 million shoppers, but she knows

Goldman, 49, won’t go for it. “I’m game for anything,” says Blakely. “The

company has to pull me back.” Goldman, who created the first business plan

at Spanx over the founder’s objections that it would stunt creativity, plays the

straight man to Blakely’s more impulsive act.

Fueling her more impetuous side is her entrepreneurial twin: husband Jesse

Itzler, 43, a former rapper from Long Island, who has backed and cofounded a

few startups, including Marquis Jet, which sells fractional air-travel time.

When I meet him at his midtown Manhattan office, he bounds up the stairs in

a sweaty headband, his blond curls dripping. He’s come from an intense

cardio workout with a Navy SEAL he hired to move in with him and Sara for a

month. (This is more efficient than hiring rickshaws from his office, as he

used to do, and paying the driver to be a passenger while he hauled the vehicle

all the way home.)

Itzler regards Blakely’s accomplishments with amazement and amusement.




“She’s 50% Lucille Ball, 50% Einstein. I keep a list of Sara-isms in my phone,”

he says, referring to her goofy moments. “There’s something every day.”

Recent example: wearing two different shoes, one red-soled Christian

Louboutin and one plain boot, and having to hobble up the escalator at

Bloomingdale’s. Legend: On the way to the Screen Actors Guild Awards one

year, Blakely realized in the limo she’d forgotten her jewelry at her hotel.

Instead of turning back, she had her driver stop at a candy store—and

accessorized her gown with stretchable candy necklaces and bracelets. Spanx

fans recognize her on the street, in stores and in airports and want to show

their allegiance. “Women flash her,” says Itzler. “Imagine that. She’s just

really good. She’s the best, man.”

***

Blakely didn’t set out to invent anything, but she always had a knack for

hucksterism. The daughter of a personal injury lawyer and an artist, she grew

up in the beach town of Clearwater, Fla., always looking to make a buck. She’d

set up a haunted house at Halloween and charge her neighbors admission. Or,

tearing a page from Tom Sawyer, she’d trick her friends into doing her chores

by turning weedpulling into a competition. As a teen she pulled off a rare

double act: popular blonde cheerleader and debate team champion (no

performance anxiety then).

But tragedy eclipsed her sunny childhood. While riding a bike around her cul-

de-sac, she saw a car run over her best friend, right in front of her. “I think

that when you witness death at age 16, there’s a sense of urgency about life,”

she says. “The thought of my mortality—I think about it a lot. I find it

motivating. It can be any time that your number’s up.”

That same year Blakely’s parents separated. Not long afterward, both her

prom dates died in horrible circumstances. She sought solace in her father’s

Wayne Dyer cassette tapes, memorizing all ten volumes of the motivational

speaker’s How to Be a No-Limit Person series. Dyer preaches “self-

actualization” and “eliminating your erroneous zones.” She was so moved that

she marched to her principal’s office to suggest they include the cassette tapes

in the Clearwater High curriculum. Her friends couldn’t run the other way fast

enough. “People used to fight over who had to ride home with me at night

after a party,” says Blakely. “No one wanted to be in my car—they’d be, like,

‘No! She’s going to make us listen to that motivational crap!’”

Blakely started her first business in 1990, a kids’ club at the Clearwater Beach

Hilton, charging $8 a child for a few hours of babysitting while moms and

dads tanned. She was just out of high school, had no experience, no CPR

training — and no insurance. She got away with it for three summers before

trying to steal business from rival hotels’ summer programs. It was only when

she went to pitch the Hilton’s general manager— age 20, in her first suit from

Casual Corner—that she was busted. “He literally escorted me off the

premises,” Blakely remembers.

After getting a degree in legal communications at Florida State, Blakely twice

took the LSAT exam for law school admission and twice scored abysmally.

Frustrated, she drove from Clearwater to Orlando to audition for a job at

Disney World. Two inches too short to fill the 5-foot-8 Goofy costume, she

instead spent eight hours a day on a moving walkway buckling visitors into

their seats at Epcot’s now closed World of Motion ride. “I think I wanted to

postpone reality, having spent my whole life thinking I’d be a lawyer,” says




Blakely, who as a kid loved watching her dad in court. “It didn’t work. My first

day at Disney I went on break and saw

Snow White dragging on a cigarette.”

After three months of misery at Disney, Blakely applied for a job she’d seen

advertised on a billboard. She spent the next seven years at Danka, then a $1

billion Florida-based office supply company, now part of Japanese printer

giant Ricoh. It taught her the art of the cold call. “They gave me a cubicle, a

phone book and a territory of four zip codes in Clearwater and said, ‘Now go

sell $20,000 of fax machines a month door-to- door,’” she recalls.

Blakely again found herself being escorted out of buildings. “I’d get business

cards ripped up in my face because I was soliciting.” But with her easy charm,

good looks and slick debating skills, she became, at age 25, Danka’s national

sales trainer.

***

Like many startups, Spanx began life as an answer to an irritating problem.

The panty hose Blakely was forced to wear at both Disney and Danka were

uncomfortable and old-fashioned. “It’s Florida, it’s hot, I was carrying fax

machines,” she says. She hated the way the seamed foot stuck out of an open-

toe sandal or kitten heel. But she noticed that the control-top eliminated

panty lines and made her tiny body look even firmer. She’d bought a new pair

of cream slacks for $78 at Arden B and was keen to wear them to a party. “I cut

the feet off my pantyhose and wore them underneath,” she says. “But they

rolled up my legs all night. I remember thinking, ‘I’ve got to figure out how to

make this.’ I’d never worked in fashion or retail. I just needed an

undergarment that didn’t exist.”

Blakely, then 27, moved to Atlanta, set aside her entire $5,000 savings and

spent the next two years meticulously planning the launch of her product

while working nine to five at Danka. She spent seven nights straight at the

Georgia Tech library researching every hosiery patent ever filed. She visited

craft stores like Michaels to find the right fabrics. She sought out hosiery mills

in the Yellow Pages and started cold calling, only to be told no repeatedly.

Immune to rejection thanks to years selling door-to-door, she decided just to

show up. At the Highland Mills hosiery factory in Charlotte, N.C., she was

turned away, only to receive a call from the manager two weeks later. He had

daughters, he told her, who wouldn’t let him pass up her invention. (Today

the Spanx line is manufactured in 15 countries, including Thailand, Israel and

Honduras; the cotton crotches are still hand-sewn in North Carolina.)

To save $3,000 in legal fees she wrote her own patent from a Barnes & Noble

textbook, setting aside $150 to incorporate her company, but couldn’t decide

on a name. After a succession of terrible ideas she settled on Spanks,

substituting an “x” at the last minute after reading that made-up names sold

better. “The word ‘Spanx’ was funny,” she says. “It made people laugh. No one

ever forgot it.” In the summer of 2000 she spent evenings on a friend’s

computer designing her packaging. She went for cherry red and, with the help

of a graphic artist, created a blonde cartoon model with a long ponytail called

Sunny—Sara’s animated alter ego.

Blakely flew to Dallas that fall to meet with buyers from Neiman Marcus.

Current CEO Karen Katz was president of all the upscale chain’s stores at the

time and remembers seeing Blakely in a conference room, pitching. “Sara’s

effort was to solve an age-old problem for women in a modern way,” Katz




says. She adds that Blakely’s obvious charisma and unusual backstory didn’t

hurt. “We were smitten from the beginning.” With Neiman in the bag, Blakely

convinced Bloomingdale’s, Saks and Bergdorf Goodman to give her a shot.

Blakely was still working her day job at Danka, keeping her side business top

secret, sitting up all night shoving Spanx orders into white padded envelopes

from Office Depot. She was 24/7 customer service, answering phone calls

from her bathtub or bed. Her then boyfriend quit his job and took care of

shipping and handling.

Unable to shell out for advertising, Blakely took on marketing and p.r. She

tore out journalists’ bylines from magazines and called them. She took over

morning staff meetings at department stores to show sales associates why

Spanx shouldn’t languish in the beige hinterland of the hosiery floor but be

sold alongside womenswear and shoes. If that didn’t work, she improvised,

once sneaking some red Spanx packages onto a rack she bought at Target and

placing them by a cash register in Neiman. “All the staff assumed someone

else had approved it, until they caught me on CCTV,” she laughs.

She connived her way to her biggest coup, shipping samples to Oprah

Winfrey’s longtime stylist Andre Walker, who noticed the talk-show host

started looking ten pounds lighter. In November 2000 Winfrey named Spanx

her favorite product of the year on the annual audience scream-a-thon that

was her Favorite Things Show. When Blakely got the call from Harpo

Productions, she was warned to get her website ready, since orders would

undoubtedly cascade after the show. Spanx didn’t have a website. “We took a

color copy of the packaging and scanned it in,” Blakely says. “I ran a

considerable Web business for $18 a month.” She resigned from Danka two

weeks before the show aired. Spanx was profitable from day one, and raked in

$4 million its first year and $10 million the next.

For the next two years Blakely constantly traveled to do in-store demos and

local news appearances. In 2001 she scored a coveted deal with QVC, which

turned her down until it read a Forbes story (“Footless and Fancy-Free,” Apr.

2, 2001) that described Blakely as an “accidental entrepreneur” who’d

reinvented the girdle. So what if Spanx took the high road (Bergdorf ) and the

low (QVC) at once? Women were buying like mad.

“Sara was out there shaking her butt and selling her product,” says Goldman

in her office, next door to Blakely’s and furnished like an Upper East Side

living room—velvet fittings, monogrammed Louis Vuitton trunks. Goldman, a

ten-year veteran of Coca-Cola, where she ran the licensing division in 54

countries, came on board in 2002, first as a consultant, then as CEO. She was

Spanx’s fifth employee. Her office was the kitchen in Blakely’s apartment in

Decatur, but she knew that wouldn’t be the case for long. “I wanted to run

Spanx like a public company from the start. I thought, Let’s get Ernst & Young

to do our audits. They didn’t really do companies our size, but I said we were

going to be bigger one day. We did the same with IT.”

As Goldman set about professionalizing the company, Blakely found a

publicity stunt she couldn’t pass up. After six auditions she was cast on

Richard Branson’s 2003 reality show, Rebel Billionaire, which aired on Fox in

2004. Her lawyers (and her dad) begged her not to do it. But Blakely says she

wanted to meet and learn from the Virgin mogul. Branson saw it as another

sign of her p.r. savvy. “She was already reasonably successful before, and she

cleverly thought the show would help,” he says.




Leaving Spanx in Goldman’s hands for three months, Blakely won task after

task—shocking her teammates and the crew. “I was cast as the girl who’d have

the meltdown from heights on the first episode and lose her mind,” she says.

Blakely followed daredevil Branson up the side of a moving hot air balloon at

8,000 feet, climbing a rope ladder the equivalent of a 17-story building. She’d

be a world record holder if she’d remembered to call Guinness afterward.

“Sara was the runner-up overall,” says Branson. “The only reason I didn’t give

her the top prize was because she was already successful. She didn’t need a leg

up.” Instead, Branson cut her a personal check for $750,000 to start a

foundation. To date Blakely and Spanx have donated $17.5 million to charities

primarily aimed at supporting girls and women—college scholarships in South

Africa, homes for single mothers and their families (via Habitat for Humanity)

and empowerment grants supporting entrepreneurship among them.

“Isn’t my wife delicious?” Itzler asks aloud in an Atlanta restaurant, while

gripping her thigh under the table. He’s flown in from New York for one day to

watch Blakely speak to a group of jobless women seeking inspiration. With six

homes—two in Atlanta, an Upper West Side condo in Manhattan, a

Connecticut summer house, an outpost near Blakely’s brother in La Jolla,

Calif. and a new place in Clearwater—he and his wife often miss each other.

One of them usually has in tow their 2-year-old son, Lazer, named after

Itzler’s Brooklyn-born greatgrandfather.

Blakely and Itzler met six years ago through Marquis Jet, an offshoot of

NetJets. He’d come up with the idea of allowing travelers to buy time on

private planes at age 27, after a few years in L.A. rapping (biggest hit: “Shake It

Like a White Girl”) and writing sports jingles, including the NBA’s Knicks

anthem “Go New York Go.” In 2006, when he planned a celebrity poker

tournament, a sales rep suggested he invite Blakely, who by then was

successful (and brave) enough to fly on private planes. Itzler had never heard

of Spanx and Googled Blakely’s picture, thinking, “Yeah, she can come. Top of

the list.” Each was hooked, even though both were attached to other people.

They married in 2008 in Boca Grande, Fla. in front of Blakely’s early Spanx

employees and Itzler’s friends from his years in the music and sports

industries. “We had very successful people and, like, thugs,” he says.

Blakely had a moment of panic weeks before the wedding. She sat Itzler down

at a favorite Upper West Side restaurant and told him the secret only her

immediate family knew: just how rich she was. “She said to me, ‘I’m not sure

you really know how successful Spanx is—[and] I am.’” Blakely told him the

company pulled in not a couple of million dollars a year but a couple of

hundred million. Itzler started crying. “I was just so happy for her.”

Itzler himself isn’t exactly poor. In 2010 he sold Marquis to Berkshire

Hathaway, which owns NetJets, for an undisclosed amount. He now owns a

stake in Zico, a trendy coconut water brand (Coca-Cola has 20%), as well as

Voli, a low-calorie vodka, and Sheets, a caffeinated version of Listerine’s strip

that dissolves on the tongue—all held through his 100 Mile Group, an

incubator and marketing company. Investors in various projects include

friends LeBron James and Gisele Bündchen.

Blakely has strong views about her wealth. “I feel like money makes you more

of who you already are,” she says from behind a mirrored desk in her plush

Atlanta office, stirring a bowl of take-out soup and exhausted from a sleepless,

flu-ridden night. “If you’re an asshole, you become a bigger asshole. If you’re

nice, you become nicer. Money is fun to make, fun to spend and fun to give




away.” Most fun: anonymously buying dinner for an entire restaurant crowd

at her favorite Japanese steak house in Atlanta or bidding on travel

“experiences” like VIP trips to Paris Fashion Week and Sundance at the

charity auctions she and Itzler attend.

Coming off its best year ever, Spanx has big plans for expansion. Goldman is

pushing to double international sales, now over 15% of the total, within three

years. She spends a lot of time jetting around Asia, laying the groundwork for

Spanx in countries that don’t obsess about their posteriors quite as much as

Westerners do. She and Blakely plan to open stand-alone shops, first in

Atlanta, then slowly worldwide. They’re pushing their cheaper diffusion line,

Assets, and adding new categories— swimwear, activewear, men’s underwear

—as customers demand more options and competitors like Yummie Tummie,

Dr. Rey Shapewear, Skweez Couture and Body Wrap (as well as Victoria’s

Secret and Maidenform) flood the booming shapewear market.

Spanx is often the most expensive brand on the shapewear rack, but it hasn’t

hurt sales. “If you have a great product, you can charge whatever you want,”

says Noah Wrubel, CEO of lingerie site BareNecessities.com. “I as a retailer

have no interest in a race to the bottom. Anyone can make a cheaper product.”

Blakely can afford to fund Spanx’s planned growth, but she and Goldman

might, for the first time, consider a public offering or an injection of outside

capital to speed things up. “We’ve been approached consistently from day one,

and it was never something I entertained,” Blakely says. “Now, for the first

time, I may entertain it.”

She still gets teary-eyed whenever she rides up the escalator in

Bloomingdale’s to see the Spanx shop that opened last spring. “I have to pinch

myself,” she says, hobbling in her different shoes, greeting shop assistants

and adoring customers who recognize her from years of TV appearances. “Five

grand,” she says, thinking back a decade. “Good investment.”

This article is available online at:

http://www.forbes.com/sites/clareoconnor/2012/03/07/undercover-billionaire-sara-blakely-joins-the-rich-list-thanks-to-spanx/


US2008 997414.1


ATLANTA DIVISION


[PROPOSED] ORDER

For good cause shown, Defendant Times Three Clothier, LLC’s Motion to

Transfer, or, in The Alternative, Stay this Action is hereby GRANTED.

This ______ day of ______________, 2013.

______________________________


spanx v yummie tummie - motion to transfer

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