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Spanx v. SPANK: Fighting Over a Trademark on a Tush
Atlanta lingerie maker sues British company for placing abbreviated name on knickers
Fulton County Daily Report
May 08, 2008
The makers of abbreviated and abbreviating undergarments for women are duking it out over -- ahem -- an abbreviation.
The plaintiff is Spanx Inc., the Atlanta creator of elasticized, slimming "body shapers" -- known in less euphemistic times as girdles -- and other items engineered to make women look better with their clothes on.
The defendant is Sexy Panties and Naughty Knickers Ltd., a British purveyor of beribboned bits of satin and lace designed to make women look better with their clothes off.
Spanx slapped Sexy Panties and Naughty Knicker with a suit for trademark infringement.
The claim: the abbreviation for Sexy Panties and Naughty Knickers -- SPANK -- is so visually and phonetically similar to Spanx that, among other things, it confuses consumers, dilutes and infringes the Spanx trademark and constitutes unfair competition under the Lanham Act and in violation of Georgia law. The acronym SPANK, as depicted on photographs of panties filed as exhibits in the suit, has a dot inserted between each letter.
The complaint itself, filed on behalf of Spanx by Sutherland Asbill & Brennan attorneys Patricia B. Cunningham and Deirdre A. Francis, is a no-frills manifesto outlining how Spanx, founded in 2000 by Decatur, Ga., resident Sara Blakely, has invested considerable sums growing its business into an international brand that has garnered kudos and attention from the likes of Oprah Winfrey and Vogue magazine.
But letters and photos attached as exhibits to the suit are a bit more revealing. Take, for example, a Dec. 6, 2007, letter from Spanx attorney James H. Johnson Jr. at Sutherland, apparently sent in response to a letter from Sexy Panties' counsel John W. Provo at Maslon Edelman Borman & Brand in Minneapolis.
"In regard to your argument that your client is not using the mark in advertising to the public, we find this argument puzzling and without merit," Johnson wrote. "Use of the mark on the product to identify it to the public is an advertising use. ... The fact that your client chose a name that is too long to put on the product does not mean that Spanx has to tolerate the infringing abbreviation."
Photos filed as an exhibit in the suit show a thong panty with "SPANK" embroidered across the back on a slim triangle of satin clearly not robust enough to support the entire "Sexy Panties and Naughty Knickers" moniker in a readably sized font.
Spanx, which sells its products at www.spanx.com and through retailers including Neiman Marcus, has asked the court to enjoin Sexy Panties, which offers its wares at www.sexypantiesandnaughtyknickers.com and through retailers such as Barneys in New York, from further use of the SPANK mark. Spanx also is seeking undisclosed damages and an accounting and disgorgement of profits derived from the use of the SPANK acronym. Sexy Panties has not yet filed its answer to the suit.
Provo, the lawyer who wrote letters on behalf of Sexy Panties, said the company still is considering how to respond to the suit and declined to comment. The Spanx lawyers at Sutherland either declined to comment or did not return calls seeking comment.
Spanx founder Blakely, however, a former sales trainer and stand-up comic, outlines on her Web site why she chose to call her $150 million company Spanx.
"I knew that Kodak and Coca-Cola are the two most recognized names in the world, and they both have a predominant 'K' sound in them. Also, from doing stand-up comedy, it is a known secret that the 'K' sound makes people laugh," she writes, adding, "SPANKS hit me like a lightning bolt. ... At the last minute I changed the 'KS' to an 'X' after doing research that made-up words do better for products than real words (and are easier to trademark).
"Spanx is edgy, fun, extremely catchy, and for a moment it makes your mind wander (admit it). Plus, it's all about making women's butts look better, so why not?"
The suit, before U.S. District Judge William S. Duffey Jr. in the Northern District of Georgia, is Spanx v. Sexy Panties and Naughty Knickers, No. 1:08-CV-1375.
