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Sherwin-Williams Sues Wooster Brush

Thursday, December 20, 2012

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The Sherwin-Williams Company has filed suit against Wooster Brush Company, saying the Wooster, OH-based manufacturer imitated its brush packaging.

Cleveland-based Sherwin-Williams alleges that Wooster's packaging is infringing upon the way Sherwin-Williams packages brushes sold under the Purdy brand, according to the lawsuit filed Dec. 14 in U.S. District Court in Cleveland.

The company also claims packaging on Wooster's roller covers and its slogan are also similar to those Sherwin-Williams has used.

homedepot.com

The Sherwin-Williams Company says that  Wooster Brush's new packaging closely resembles the Purdy-branded paint brush dress.

Representatives from the companies did not immediately respond to requests for comment on the lawsuit. Sherwin-Williams filed its complaint specifically alleging trade-dress infringement, deceptive trade practices, and unfair competition.

Sherwin-Williams seeks unspecified monetary damages, payment for all profits derived from the alleged infringement, and an order that Wooster halt infringement, the complaint says.

Brush Dress at Issue

Sherwin-Williams says it has used a particular "brush keeper" packaging for Purdy-branded paint brushes since 2010, according to the court documents. (Sherwin-Williams purchased the privately held Purdy paint brush maker Paint Sundry Brands Corp. in 2004.)

The packaging features a "golden yellow background, a small, partial image of the American flag at the top center of the brush keeper, and a thick horizontal band of color" that indicates the particular type of brush. For example, a brown horizontal mark denotes nylon/polyester blended brush.

"Sherwin-Williams' Brush Keeper Trade Dress is unique in the painting tool industry and constitutes an inherently distinctive trade dress," according to the complaint.

In 2012, Wooster introduced new packaging for its "Wooster Pro" brushes sold at The Home Depot and other retail stores. That revamp, Sherwin-Williams alleges, closely imitates its trade dress.

Ildar Sagdejev / Wikimedia Commons

The Home Depot allegedly displays both Sherwin-Williams and Wooster Brush packages side by side in some displays.

Wooster's new packaging features a "golden yellow background, a small partial image of the American flag at the top center of the brush keeper as well as a horizontal band of color," Sherwin-Williams alleges. The color code system used by Wooster is identitical to the one Sherwin-Williams has used since 2000, the complaint says.

Sherwin-Williams says hundreds of millions of dollars of paint brushes with the particular packaging and colors have been sold.

Wooster changed its packaging with "full knowledge of Sherwin-Williams' prior use of, and with the bad faith intent to trade off of, Sherwin-Williams' goodwill," according to Sherwin-Williams.

Displays, Rollers

The Home Depot displays the paint applicators side by side in some displays, and consumers are likely to confuse the two packages, the complaint says.

Wooster's packaging for its brush roller covers is also allegedly similar to Sherwin-Williams' own, according to the complaint. Sherwin-Williams claim the color combination used on Wooster Pro rollers resemble the color combination for its Purdy Golden Eagle and Purdy White Dove roller covers.

Slogan Targeted

In addition, Sherwin-Williams claims the slogan used by Wooster is similar to one that Sherwin-Williams used in connection with its Purdy paint brushes between 1998 and 2006, the complaint says.

The company used, "If it's worth painting, it's worth a Purdy."

"Wooster currently uses the slogan, 'If it's worth painting, it's worth Wooster' on its packaging for paint brushes bearing the Infringing Brush Keeper Trade Dress and Infringing Color Code Trade Dress that are sold at Home Depot," the complaint states.

Wooster adopted the slogan with knowledge of Sherwin-Williams' previous use, the company alleges.

About the Companies

The Wooster Brush Company, founded in 1851, manufactures more than 2,000 products and supplies for painters of all skill levels, according to the company's website. The company is one of the oldest makers of paint applicators in the U.S.

The Sherwin-Williams Company, founded in 1866, is the nation's largest specialty retailer of paint and painting supplies and offers products to both DIY networks and painting professionals.

Comment from William Talbott, (12/20/2012, 9:10 AM)

I am a non-professional user and believer in S-W and Wooster. Branding is important but there should be unified effort by both parties to provide uniform standards and information on labels to protect novice and do-it-yourself painters from their many cheap competitors instead of draining the resources of both companies. Be a historical American, love your neighbor.

Comment from Dean Ford, (12/20/2012, 10:59 AM)

We spend hundreds of thousands of dollars with Sherwin-Williams. I appreciate working with the local commercial/industrial staff. We have endured a very strained contracting market over the past few years. During that time Sherwin-Williams has raised prices between 30-50%. Corperate profits for SW are record setting during the construction decline. I believe the constant price increases that have further strained contractor margins have been the fuel for these record profits. It appears SW is becoming a bully. Maybe it's time to work harder with other suppiers and devlop a solid working relationship. Sherwin-Williams personel locally are great team players but company leaders are becoming further disconneted with their core customers.

Comment from peter gibson, (12/20/2012, 11:19 AM)

I agree.The suppliers have it very easy. When SW has 3500 stores,thet dont care about anything. The customer does the selling and SW justs lies back and provides product. The contracor makes jack,and SW just has a nice day !!

Comment from Ron Cros, (12/20/2012, 1:26 PM)

Really,... Kinda petty, after all said and done, the attorneys will win, the companies will raise prices to cover litigation. Why don't they put their energies into a better quality paint brush!! My employees keep complaining about the quality of today's brushes. After a half dozen jobs the brush's performance is diminished!! Nice to have the American Flag on them... Are the brushes made in America?? Maybe, I don't know! My .02!

Comment from Sarah Marble, (12/28/2012, 9:20 AM)

Although the background color at the top of the brush packaging, the American flag partial image, and the "semi-horizontal" (more diagonal in my opinion) colored bands in the center are accused of being "infringement", these two packages are remarkably different in visual appearance. Unless Sherwin Williams can prove there was a significant profit decline on their Purdy product line during the period of time Wooster had this packaging and that the profit was lost to the Wooster paintbrush line, their arguement is a waste of effort. It is unlikely this will end in victory for Sherwin Williams unless there is solid evidence that the Wooster "infringement" is detrimental to Sherwin Williams as a business. This is absolutely pitiful.

Comment from John Fauth, (1/2/2013, 8:51 AM)

It's inconceivable the courts would not consider Wooster's slogan ('If it's worth painting, it's worth Wooster') to be an infringement upon Sherwin-Williams' slogan ("If it's worth painting, it's worth a Purdy"). There is real value in those slogans and S-W is well advised to seek legal protection (though for the life of me, I cannot understand how/why Wooster did not anticipate this obvious infringement). The rest of the issues were probably just thrown in for good measure because that's what attorneys do.

Comment from Tom Schwerdt, (1/3/2013, 8:24 AM)

John, I can pretty easily conceive of it. I really don't think Wooster's slogan infringed on Sherwin Williams. As I posted on PaintSquare for the same article: The Purdy claim states they started using that slogan in 1998. A quick search sent me to Popular Science, July 1929, Page 98. Wooster has an ad using that slogan, nearly 70 years before Purdy. "If it's worth painting, it's worth a Wooster brush" I don't doubt there are earlier examples - this is just the earliest a quick search turned up.

Comment from John Fauth, (1/3/2013, 9:27 AM)

Tom, let me amend my earlier statement. It's inconceivable that an article about this suit did not include those facts. Great research on your part.

Comment from John Fauth, (1/3/2013, 9:45 AM)

I did the Google search as well. Interesting the Wooster use of the slogan seems to be limited to 1929-1930. I wonder if they abandoned its use, and only recently began using it again (after S-W had established legal protections).