Sherwin-Williams’ Finish Called Copycat
The Mississippi manufacturer of a durable wall coating sold for years through Lowe's and other stores has filed suit against the Sherwin-Williams Co., alleging infringement of the product’s name.
In an intellectual-property and trademark infringement lawsuit filed in U.S. District Court, Tuff-Wall Inc., of Hattiesburg, MS, accuses Cleveland-based Sherwin-Williams of creating a copycat of its scratch-resistant ceramic wall coating after the two companies began negotiations over the original product.
In its answer to the Tuff-Wall complaint, Sherwin-Williams denied any infringement or wrongdoing.
Tuff-Wall Inc. began manufacturing, marketing and selling its signature coating through a web site in 2007, although the company was not incorporated until April 2008, court papers say.
Lowe's and other independent distributors have been selling Tuff-Wall since 2008, the suit says.
Tuff-Wall describes its product as a "highly durable, scratch-resistant ceramic wall coating which is applied as a paint substitute for businesses and consumers seeking a low maintenance, durable wall coating with a ten (10) year warranty."
In 2008, the suit says, Tuff-Wall president Ron Hankins met with Sherwin-Williams' representatives "to discuss placing the Product in Sherwin-Williams' stores as well as ... the possibility of Sherwin Williams' purchasing Tuff-Wall."
The suit does not say what happened after those initial negotiations. In February 2010, however, Sherwin-Williams filed a patent and trademark application for its own "Tuff Wall" product. Tuff-Wall of Mississippi did not know at the time about the patent application, which remains pending.
Sherwin-Williams rolled out its TuffWall Premium Texture Finish Coating in February 2013, years after Tull-Wall was incorpoated.
In January 2013, Sherwin-Williams announced in a press release that it would be introducing TuffWall Premium Texture Finish coating, a 100 percent acrylic interior coating, to all 3,500 of its stores by February 2013.
On May 8, Tuff-Wall sent Sherwin-Williams a letter, demanding that it stop using the "TuffWall" name in its new coating line, which was by then on the market.
"Your unauthorized use of the mark is likely to confuse and mislead the public and suggests a connection with Tuff-Wall Inc.'s business and dealings," the letter said. "In fact, Tuff-Wall has already received calls regarding its affiliation with Sherwin-Williams' new 'TuffWall' paint."
The letter says Sherwin-Willaims "had actual knowledge of" Tuff-Wall's ownership and trademark since 2008.
The letter gave Sherwin-Williams' a deadline of May 13 to stop using the name and withdraw its trademark application. On May 13, Tuff-Wall filed its suit.
In its complaint, Tuff-Wall Inc. says that consumers are confused by the two names and that Sherwin-Williams is cutting into Tuff-Wall's business.
Tuff-Wall Inc.'s product is a scratch-resistant ceramic wall coating with a 10-year warranty.
"Because Sherwin-Williams is improperly using and advertising Tuff-Wall's intellectual property, it is causing consumer confusion, [trade]mark dilution, and is unfairly competing with Tuff-Wall," the suit says.
A Google search of "Tuff Wall" returns both products.
Tuff-Wall's suit accuses Sherwin-Wailliams of "willful, wanton or malicious disregard of Tuff-Wall's intellectual property rights" and unjust enrichment.
The suit seeks an injunction to stop continued use of the name in the Sherwin-Williams' product; a full accounting of the profits the Cleveland paint maker has made from the name; triple damages; and other relief.