On November 11, 2021 activewear apparel brand lululemon athletica canada inc. (“lululemon”) sent a cease and desist letter to interactive fitness platform Peloton Interactive, Inc. (“Peloton”), alleging that five of Peloton’s products, including four bras and a pair of leggings, were infringing upon six of lululemon’s design patents and that Peloton’s One Luxe Tight infringed upon lululemon’s Align pant trade dress.

Rather than spinning its wheels, on November 24, 2021, Peloton responded with an action for declaratory judgment against lululemon in the Southern District of New York, seeking (1) a determination that Peloton did not infringe lululemon’s design patents, (2) invalidity of these patents, and (3) a declaration that lululemon does not have trade dress rights in the Align pant and/or that Peloton did not infringe upon this trade dress. Specifically, Peloton argues that there are clear and obvious differences between its products and lululemon’s design patents, the presence of the brands’ trademarks on the products eliminates confusion, and the design patents are anticipated and/or obvious based on prior art. For example, Peloton emphasizes that the back of its Peloton Branded Strappy Bra is cut straight across and has a mesh layer, while the design patents depict a scooped back and no mesh layer, among other differences. Peloton also argues that the asserted Align trade dress does not possess the requisite distinctiveness to be protectable, and even if it does, Pelton’s One Luxe Tight is not likely to cause marketplace confusion.

Lululemon next turned up the resistance with a patent infringement lawsuit on November 29, 2021 in the Central District of California, making similar allegations to those in its cease and desist letter. Specifically, the lawsuit accuses Peloton of patent and trade dress infringement, false designation of origin, and federal and state unfair competition. For example, lululemon alleges that an ordinary observer would see Peloton’s products as substantially similar to lululemon’s patented designs. Lululemon’s lawsuit seeks an injunction as well as a jury trial and extensive damages.

This back and forth comes after Peloton and lululemon amicably terminated their 2016 co-branding relationship earlier in 2021 and Peloton launched a private label apparel line, Peloton Apparel, in September. Not only does this lawsuit demonstrate the need for clarity in entering into and upon exiting a co-branding relationship, but it also shows the importance design patent protection has and will play as this litigation progresses. It will be important to monitor these lawsuits in the coming weeks, in particular to see if either party’s arguments are met with success.