A David and Goliath Story: Local Pete the Painter, Inc., Wins Trademark Infringement Battle against the Largest Coatings Company Worldwide
Date: February 7, 2017 || Client Successes
Chicago – February 7, 2017 – Pete the Painter, Inc., a residential and commercial painting business well known in the Chicagoland area and surrounding states, won a permanent injunction in the United States District Court for the Northern District of Illinois against PPG Industries, Inc., identified as the “largest coatings company worldwide” on its website.
The injunction prevents PPG from using the term PETE THE PAINTER and infringing on the Northbrook-based company’s intellectual property rights permanently.
President Peter Wirtz has done business as “Pete the Painter” for more than 47 years. In 1990 and 2009, the U.S. Patent and Trademark Office registered Pete the Painter® service marks, and Pete the Painter has continuously used its marks in connection with its painting services in Illinois since as early as 1979.
“When I started this business over four decades ago, I never thought I would be in a legal battle with one of the largest paint companies in the world,” said Wirtz. “But I’ve built Pete the Painter’s reputation with hard work, the highest quality service, and a team of unmatched professionals. That’s our brand, I take great pride it in, and I’ll protect it.”
In 2014, Pete the Painter, Inc., became aware that PPG was using a character identified as “PETE THE PAINTER” on its website advertisements and promotional items (for example a series of bobble head figurines representing the accomplishments of the PETE THE PAINTER character). PPG was also publishing painting tips on its website provided by an expert identified as “Pete the Painter.”
McAndrews, Held & Malloy filed a lawsuit on behalf of Pete the Painter, Inc., in December 2015, after PPG refused to stop using “PETE THE PAINTER,” or even admit that Pete the Painter, Inc., was the prior user, despite Pete the Painter, Inc.’s, prior rights and notice to the defendant.
Pete the Painter, Inc., is represented by George Wheeler, Ron Dicerbo, and Josh Aldort of Chicago-based McAndrews, Held, & Malloy. Counsel for PPG is Burton S. Ehrlich, Boris Umansky, and John P. Luther of the Chicago office of Ladas & Parry LLP.
Wheeler stated, “We fight hard for our clients, large or small, who are suffering or accused of intellectual property infringement. We have the litigators and other professionals required to successfully take on or defend a large multinational corporate opponent. As Pete will attest, trademarks are often a company’s most valuable asset. We will use the considerable power of federal and state trademark law to level the field of combat and ensure that our clients’ rights are protected.”
About McAndrews, Held & Malloy McAndrews, Held & Malloy boasts one of the most highly regarded teams of intellectual property attorneys, agents and technology specialists in the United States. Founded in 1988, McAndrews offers deep bench strength in matters relating to patents, trademarks, copyrights, trade secrets and unfair competition. McAndrews attorneys have underlying scientific-based degrees and extensive prior experience in technology and IP-focused professions, and they routinely handle cases that involve innovative and cutting-edge technologies in specialized industries. While best known for their record of litigation successes, the firm also offers services in IP procurement, patent interferences, trademark oppositions and cancellations, IP/technology opinions and investigations, global portfolio management, development and licensing, M&A support, due diligence, design rights and joint ventures. Clients include multi-national corporations, Fortune 500 companies, startups and world-renowned universities. For more information, visit www.mcandrews-ip.com.