Scotts Co. v. Procter & Gamble Co., 2025 WL 1779167, No.
2:24-cv-4199 (S.D. Ohio Jun. 27, 2025)
A different Scotts trade dress claim than the
one I blogged last year. While it’s hard to get rid of trademark claims on
a motion to dismiss, a preliminary injunction may be a different matter—as it
is here, where the court does a thorough job with an expansive trade dress
claim (which frankly should have John Deere’s lawyers taking notice, given its
own reliance on green and yellow). This might be a good case to give students,
given its accessibility.
Scotts makes the Miracle-Gro line of plant food and lawn and
garden products, some of which are depicted below:
P&G recently introduced a new non-selective herbicide—a weed
killer—called “Spruce”:
Scotts is the market leader in the lawn and garden business.
What is its Miracle-Go trade dress? It has an incontestable registration that “consists
of a rectangular shaped box in the colors green and yellow” for “plant food.” When
the appropriate colors are transposed onto the lined image in the registration, the
mark looks something like this:
But Scotts claimed more, alleging a trade dress comprising:
(1) A green and yellow color combination;
(2) With each color presented as a separate horizontal band
and the top color taking up a smaller ratio than the bottom color;
(3) With the two bands sharing a common border that runs
horizontally along the package;
(4) With a straight line dividing the two colored bands; and
(5) A circular horizontally centered graphic element.
The court referred to the “rectangular shaped box”
combination as the Registration, to avoid confusion with this broader trade
dress claim—broader because it lacked a shape restriction and applied to more
than plant food. Nonetheless, Scotts has never used the Miracle-Gro Trade Dress
with any herbicide, nor did it plan to. Also, the broader trade dress did have
some greater specificity—specifically, the “circular horizontally centered
graphic element.” As implemented, this element was the Miracle-Gro logo or
wordmark, which consists of “white text overlaid on (and extending beyond the
horizontal border of) a black circle with some additional graphic sheen.”
Products using this broader trade dress have been on the
market from 15 to 70 years, depending on the product. Plant food was the
original, sold for over 70 years, and was most closely associated with the
registration.
Since 2014, Scotts has sold around 104 million units of this
product for approximately $650 million. During the same period, Scotts sold
roughly one billion units of Miracle-Gro, generating approximately $5.6 billion
in revenue, although just under one-third came from so-called “specialty
products” or “flavors,” “which come in quite different packaging (although
sometimes with at least some of the design elements from the Trade Dress).”
Ninety percent of sales occur at brick-and-mortar stores,
including “do-it-yourself ... home centers” like “Lowe’s, Home Depot, Menards”;
large chain retailers like Target, Walmart, and Meijer; and hardware, garden,
and club stores. The cost ranges from $6 to $20 depending on the product and
configuration.
Spruce became available to consumers mid-November 2024. It
costs between $12.99 to $39.99 depending on the configuration. Spruce is
carried in brick-and-mortar retailers such as Home Depot, Lowe’s, Walmart,
Target, Ace, and True Value, as well as online. P&G has invested
significantly in television, online/social media, print, and in-store
advertising as part of the product rollout:

The bottom of each container consists of a clear or
transparent section. The transparent portion is designed to allow consumers to
see the liquid product. A spruce green portion predominates most of the product
packaging. “The Miracle-Gro green is a brighter green with a glossy finish that
resembles a freshly cut lawn on a sunny day, while the green on the Spruce
packaging has a matte finish and is darker, more like a pine (or spruce) tree
in a shadowy forest.” On most packages, a round, yellow dandelion image (with
an even darker green background) traverses the clear and dark green portions, intended
to depict a half-living, half-dehydrated-and-dying, dandelion. The Spruce
trademark appears in bold white text, with a yellow “violator” containing the
text “Visible Results in 1 HOUR.” I learned: “A graphic violator is a visual
element used in product design that sellers use to draw the consumer’s
attention to certain messaging the seller wants to emphasize.”
Many third-party lawncare products similarly use green and
yellow color combinations:
Although market presence for all of these wasn’t shown, Scotts
admitted that Preen Weed Preventer Plus Plant Food product (leftmost) is
“widely sold in the lawn-and-garden marketplace” (perhaps outselling the
Miracle-Gro weed preventer product) and at times “shelved right next to” that
Miracle-Gro product. That is true also of Spectracide (center), which Scotts
admitted is “a leading weed killer product.”
Plaintiff’s witness Sass had worked for Scotts for over 20
years. He testified about the 12 distributor declarations and 110 consumer
declarations submitted to the PTO for the Registration. The declarants each
said something like: “when I see packaging which is green on top and yellow on
the bottom in connection with plant food products, I interpret the packaging
design as an indication that the goods come from a single source, i.e., the
makers of Miracle-Gro.”
Testifying about differences from other products on the
market, Sass emphasized the importance of the proportions (“typically one-third
green on top, two-thirds yellow on the bottom”) and a dark circle element for
the Scott products. The court concluded that the proportions were “perhaps more
important” than Scott argued.
Meanwhile, P&G’s witness Croswell testified that P&G
settled on Spruce’s dark green because P&G believed it would make Spruce
distinctive in the weed-killer market and because it invoked the namesake of
the brand (i.e., Spruce trees). “[D]uring development, P&G and one of the
third-party marketing companies it used identified concerns about whether a
certain version of the Spruce design may have been too similar to a particular
competitive product. But at no point during that process did anyone raise a
concern that any version of the proposed Spruce design was too similar to the
Miracle-Gro line of products.” And P&G has no plans to expand the Spruce
brand into other product categories in the lawn and garden space.
Nobody was aware of instances of actual confusion.
Winning my heart, the court began its confusion analysis by cautioning
that it would not allow Scotts to extend the benefits of incontestability to
the common-law trade dress, and that incontestability and likely confusion are
two different questions.
Strength of the mark: Miracle-Gro’s trade dress likely
acquired distinctiveness through secondary meaning, even though its PTO declarations
were only directed to a rectangular box and it had no survey evidence. Length
of time on the market, advertising, sales volume, and market leadership favored
secondary meaning nonetheless.
The trade dress was also probably nonfunctional.
Without evidence of actual confusion, “it basically comes
down to the Court’s assessment of the objective likelihood of confusion based
on the products and packaging, along with the evidentiary value of the
competing consumer surveys the parties tendered.”
Given that strength of the plaintiff’s mark and similarity of
the marks are the most important, Scotts lost primarily because of
dissimilarity.
Miracle-Gro’s trade dress had substantial commercial
strength, but its conceptual strength was unclear, especially given the definitional
questions (are proportions key to the trade dress, or not?). The court noted
that, on all the products it saw, the one-third/two-thirds division was the
same, and the green was above the yellow. With that, plus the “circular
horizontally centered” black circle at the dividing line between the colors,
there was likely some conceptual strength.
“But when you start subtracting individual elements from
that combination, the distinctiveness quickly vanishes.” There was nothing
particularly distinct about using green and yellow for packaging in the lawn
care industry: they “are the colors of sunshine and plants.” Although the
burden is on the defendant to show what actually happens in the market, P&G
did so, showing that several other strong market performers use green and
yellow. It’s not that those others are confusing—it’s that reasonable consumers
wouldn’t just rely on seeing green and yellow to attribute source given the
market.
The dissimilar Miracle-Gro variants also sapped some of the
conceptual strength of the trade dress. “[T]he more consumers come into contact
with Miracle-Gro products with a different style of packaging, and in
particular different color combinations, the less likely they are to look for
the green and yellow combination as identifying their favorite lawn and garden
product.” (But the black circle abides.)
Nonetheless, this factor overall tilted towards Scotts.
Relatedness of the goods: One of the products bearing the Scotts
trade dress is a “Weed Preventer.”
That didn’t move the needle much (herbicide is not “weed
preventer” but killer, and you’d use the weed preventer on a flowerbed but not
the weed killer, and vice versa for weeds sprouting between bricks), but the
products were somewhat related insofar as they are all in the lawn and garden
category.
Similarity of the marks: a “defendant’s resounding success
on this factor makes the plaintiff’s burden of prevailing on the seven other Frisch’s
factors effectively insurmountable.” Similarity doesn’t depend on a
side-by-side, element-by-element comparison; it is based on the overall
impression arising from the combination of elements. Even going element by
claimed element, there was substantial dissimilarity.
Color: Very distinct shades of green, and Spruce was matte
(and transparent in part) while Miracle-Gro was glossy and entirely opaque.
Separate horizontal bands of color with top smaller: Scotts
has the one-third/two-third ratio, and Spruce uses a clear, bottom portion (about
one-fifth), then dark green predominates over most of the rest. The yellow
portion, it is relatively small and is used to highlight a message—“Visible
Results in 1 HOUR.”
True, on both packages, the colors “shar[e] a common border
that runs horizontally along the package” in the form of “a straight line
dividing the two colored bands.” “But these visual elements are wholly
unremarkable and add little to the overall visual impression of each product.”
Likewise, both products contain a “horizontally centered
graphic element.” But on one, it’s the Miracle-Gro logo, which is white text on
a black circle with some additional features. Spruce, has a circular yellow
dandelion (with different graphics on each half) overlaid on a dark green
background. Moreover, the circular graphics are “in different places on the
package ([top] v. bottom).” “The dissimilarity on this element could not be
more stark.”
There were other dissimilarities as well, including in the
actual containers—with five Spruce configurations versus the entire Miracle-Gro
product line, “none of them even remotely resemble each other in shape.” Scotts
didn’t have text in the top portion; P&G did. The graphics were “meaningfully”
different: photorealistic images of vegetation versus graphic design-like
elements (e.g., an outlined paw print). And the Spruce trademark creates its
own distinct visual impression, serving as a house mark.
The trade dresses at issue are “clearly distinguishable and
would appear so to all but the most obtuse consumer.”
Scotts tried to change this result with survey evidence. Its
expert, Dr. Wind, conducted a Squirt survey—one that presents survey
respondents with both of the conflicting marks and “do[ ] not assume that the
respondent is familiar with the senior mark.” Potential purchasers of
Miracle-Gro and Spruce were broken into three groups, Home Depot, Lowe’s, or
Meijer, each with a test and control cell. After telling respondents to imagine
they were considering purchasing a lawn and garden product, the survey showed
respondents in each group in-store displays from the stores to which they were
assigned (except the Lowe’s, which was mistakenly shown Home Depot; the court
found this rendered the survey “suspect and deserving of little weight” as to
this subgroup). E.g., Home Depot respondents saw these:
Then test respondents were shown some of the same photos
containing Spruce, with red lines surrounding the Spruce products, and asked
how they would describe those products to a friend.
Finally, test respondents were shown the in-store display
that included Miracle-Gro products along with various other third-party
products (the right-most photo in the initial photo array above) and were
asked: “Do you believe that any of these products or product lines on this
plant food display were made by the same company that manufacturers the
products you saw that were circled in red?” Respondents were asked some
follow-up questions (e.g., the reason they selected the products).
The survey repeated the process for (1) asking whether
respondents thought any of the products or product lines in the display with
the Miracle-Gro “ha[d] a business affiliation or connection with the company
that manufactures the products you saw that were circled in red” [I note that
there was no training on what a “business affiliation” is, and there probably
should be]; and (2) asking whether respondents thought any of the products or
product lines in the display with the Miracle-Gro “gave permission or approval
to the company that manufactures the products you saw that were circled in
red.”
Control groups saw the same images and stimuli, except the
colors on the Spruce products were black, white, and silver.
If a respondent who answered positively mentioned green and
yellow in connection with Spruce, the coders tagged that respondent as
“confused.” Dr. Wind calculated net confusion rates, “[d]ue to explicit
reference to the green and yellow packaging” of 16.2% for the Lowe’s subgroup,
9.1% for Home Depot, and 17.7% for Meijer.
P&G objected to (1) the Squirt survey format; (2)
the design; and (3) what Wind counted as “confusion.”
Squirt: P&G argued that Miracle-Gro and Spruce do
not appear side-by-side in the marketplace and that an Eveready survey
is the appropriate tool to use where one of the marks at issue (here Miracle-Gro)
is a strong mark. The court agreed with this criticism. “The products at issue
are typically not displayed side-by-side in a retail setting, nor was there a
sufficient showing that the typical consumer sees them sequentially,” and
Miracle-Gro is commercially strong. The court quoted McCarthy to the effect
that “Squirt methodology is inappropriate unless there are ‘a significant
number of real world situations in which both marks are likely to be seen in
the marketplace sequentially or side-by-side.’”
Design: P&G argued that Squirt surveys have an
inherently leading nature (seems true), which was amplified by stimuli unreflective
of true market conditions. This was even more problematic than choosing Squirt
in the first place. First, there was the Lowe’s error. Second, in the Home
Depot image, nearly half of the “plant food” display shown to respondents was
dominated by a pallet of Miracle-Gro potting mix. “[T]he Court finds it
unlikely that large pallets of Miracle-Gro potting mix typically sit directly
in front of Home Depot’s plant food shelves (or at least, that customers
typically would stand behind such a pallet while selecting something on the
plant food shelf). Simply put, the Home Depot photo was highly suggestive.”
Identification of confused respondents: Dr. Wind “classified
any respondent ‘confused’ for simply describing the products as ‘green and
yellow’—even if they mentioned nothing about Scotts or Miracle-Gro.” That is,
if a respondent accurately noted that the packaging for Spruce products
contained the colors green and yellow, that would be coded as reflecting
“confusion.” This the court found most troublesome of all. “P&G identified
a significant number of responses that clearly should not have been coded in
that manner—namely, respondents who referenced “Spruce” in their answers, and
who did not mention “Miracle-Gro” or “Scotts” at all, but who happened to
mention that the Spruce bottle was green and yellow (which it is).”
P&G offered its own survey by Dr. Simonson: an “aided Eveready
survey.” An Eveready format assumes that survey respondents “are aware
of the [senior] mark from their prior experience.” This “format is especially
useful when the senior mark is readily recognized by buyers in the relevant
universe.” Respondents are shown the allegedly infringing products,, then asked:
• Who do you think makes or puts out this product?
• Does the company that makes this product put out any other
products?
• Does the company that makes this product have a business
affiliation or connection with any other company? [Again, no definition/training.]
• Did the company that makes this product receive permission
or approval from another company?
However, Simonson used the typical Eveready questions, but displayed
multiple products from the marketplace (as would occur in a Squirt
survey), instead of the single, allegedly infringing product. Each respondent
viewed a picture array of products, like so:
They were asked to review all the products “as they would if
they were considering purchasing a weed preventer at an online store.” The
respondents then saw one of the four images below, with the Spruce product (or
a control version of the Spruce product, bottom) blown up on the left-hand
side:
They were then asked variations of the four standard
Eveready questions along with follow-up probing questions as necessary. The
“control” “had a different trade dress, but still incorporated green and yellow
elements as well as the language and small icons used on Spruce.” Simonson found that “only 2.9% of the Test group respondents … mentioned either Miracle-Gro or Scotts.” Although the
court didn’t rely on the Simonson survey, it didn’t like the control.
Here, the characteristic being
assessed was the color combination. But instead of altering solely Spruce’s
color, as Dr. Wind did for his control, Dr. Simonson created an entirely new
shape, maintained the colors green and yellow (but making white the most
prominent color), and added a circular graphic element to the top portion of
the packaging. In many ways, Dr. Simsonson crafted a control that was more
similar to the Miracle-Gro’s Trade Dress than Spruce’s current packaging, which
may explain why the control group displayed greater confusion than the test
group.
(The court did reject Scotts’ criticism that
the answers “Ortho,” “RoundUp,” “fertilizer,” or the like should have been
coded as confused. “This case is about Miracle-Gro; not every brand Scotts
uses. And Scotts certainly does not have a monopoly on the word ‘fertilizer.’”)
Remaining factors: Marketing channels favored Scotts; degree
of purchaser care was not very significant/it was dependent on mark similarity.
Intent: (1) P&G considered other packaging designs with other color
schemes; (2) some third-party reports prepared for P&G, as part of Spruce’s
packaging development process, featured images of Miracle-Gro products; (3)
Scotts sent P&G a letter expressing concerns about confusing similarity
between the products’ designs in May 2024. This was “attenuated at best” intent
evidence. “It seems natural to the Court that a product development team might
consider different colors and designs, then test those options before going to
market.” Nor was a study’s inclusion of “a few images of Miracle-Gro products
(along with many, many other lawn and garden care products)” evidence of
intentional copying. “Scotts is the category leader; you would expect some of
its products to appear in any report about the market.” Finally, the Scotts
letter had no bearing on intent—the packaging design was nearly finalized by
then. No weight.
Likely product line expansion: Not likely; no weight.
Dilution: In the Sixth Circuit, “[t]he ‘similarity’ test for
dilution claims is more stringent than in the infringement milieu.” Given the
high level of dissimilarity here, that was fatal.