Scotts loses trade dress claim over green & gold for Miracle-Gro

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 theone I blogged last year. While it’s hard to get rid of trademark claims ona motion to dismiss, a preliminary injunction may be a different matter—as itis here, where the court does a thorough job with an expansive trade dressclaim (which frankly should have John Deere’s lawyers taking notice, given itsown 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 andgarden products, some of which are depicted below: 

P&G recently introduced a new non-selective herbicide—a weedkiller—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 “consistsof a rectangular shaped box in the colors green and yellow” for “plant food.” Whenthe appropriate colors are transposed onto the lined image in the registration, themark 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 bandand the top color taking up a smaller ratio than the bottom color;

(3) With the two bands sharing a common border that runshorizontally 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 tradedress claim—broader because it lacked a shape restriction and applied to morethan plant food. Nonetheless, Scotts has never used the Miracle-Gro Trade Dresswith any herbicide, nor did it plan to. Also, the broader trade dress did havesome greater specificity—specifically, the “circular horizontally centeredgraphic element.” As implemented, this element was the Miracle-Gro logo orwordmark, which consists of “white text overlaid on (and extending beyond thehorizontal border of) a black circle with some additional graphic sheen.”

Products using this broader trade dress have been on themarket from 15 to 70 years, depending on the product. Plant food was theoriginal, sold for over 70 years, and was most closely associated with theregistration.

Since 2014, Scotts has sold around 104 million units of thisproduct for approximately $650 million. During the same period, Scotts soldroughly one billion units of Miracle-Gro, generating approximately $5.6 billionin revenue, although just under one-third came from so-called “specialtyproducts” or “flavors,” “which come in quite different packaging (althoughsometimes 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 andconfiguration.

Spruce became available to consumers mid-November 2024. Itcosts between $12.99 to $39.99 depending on the configuration. Spruce iscarried in brick-and-mortar retailers such as Home Depot, Lowe’s, Walmart,Target, Ace, and True Value, as well as online. P&G has investedsignificantly in television, online/social media, print, and in-storeadvertising as part of the product rollout:

The bottom of each container consists of a clear ortransparent section. The transparent portion is designed to allow consumers tosee the liquid product. A spruce green portion predominates most of the productpackaging. “The Miracle-Gro green is a brighter green with a glossy finish thatresembles a freshly cut lawn on a sunny day, while the green on the Sprucepackaging has a matte finish and is darker, more like a pine (or spruce) treein a shadowy forest.” On most packages, a round, yellow dandelion image (withan even darker green background) traverses the clear and dark green portions, intendedto depict a half-living, half-dehydrated-and-dying, dandelion. The Sprucetrademark appears in bold white text, with a yellow “violator” containing thetext “Visible Results in 1 HOUR.” I learned: “A graphic violator is a visualelement used in product design that sellers use to draw the consumer’sattention to certain messaging the seller wants to emphasize.”

Many third-party lawncare products similarly use green andyellow color combinations: 

Although market presence for all of these wasn’t shown, Scottsadmitted that Preen Weed Preventer Plus Plant Food product (leftmost) is“widely sold in the lawn-and-garden marketplace” (perhaps outselling theMiracle-Gro weed preventer product) and at times “shelved right next to” thatMiracle-Gro product. That is true also of Spectracide (center), which Scottsadmitted is “a leading weed killer product.”

Plaintiff’s witness Sass had worked for Scotts for over 20years. He testified about the 12 distributor declarations and 110 consumerdeclarations submitted to the PTO for the Registration. The declarants eachsaid something like: “when I see packaging which is green on top and yellow onthe bottom in connection with plant food products, I interpret the packagingdesign as an indication that the goods come from a single source, i.e., themakers of Miracle-Gro.”

Testifying about differences from other products on themarket, Sass emphasized the importance of the proportions (“typically one-thirdgreen on top, two-thirds yellow on the bottom”) and a dark circle element forthe Scott products. The court concluded that the proportions were “perhaps moreimportant” than Scott argued.

Meanwhile, P&G’s witness Croswell testified that P&Gsettled on Spruce’s dark green because P&G believed it would make Sprucedistinctive in the weed-killer market and because it invoked the namesake ofthe brand (i.e., Spruce trees). “[D]uring development, P&G and one of thethird-party marketing companies it used identified concerns about whether acertain version of the Spruce design may have been too similar to a particularcompetitive product. But at no point during that process did anyone raise aconcern that any version of the proposed Spruce design was too similar to theMiracle-Gro line of products.” And P&G has no plans to expand the Sprucebrand 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 cautioningthat it would not allow Scotts to extend the benefits of incontestability tothe common-law trade dress, and that incontestability and likely confusion aretwo different questions.

Strength of the mark: Miracle-Gro’s trade dress likelyacquired distinctiveness through secondary meaning, even though its PTO declarationswere only directed to a rectangular box and it had no survey evidence. Lengthof time on the market, advertising, sales volume, and market leadership favoredsecondary meaning nonetheless.

The trade dress was also probably nonfunctional.

Without evidence of actual confusion, “it basically comesdown to the Court’s assessment of the objective likelihood of confusion basedon the products and packaging, along with the evidentiary value of thecompeting consumer surveys the parties tendered.”

Given that strength of the plaintiff’s mark and similarity ofthe marks are the most important, Scotts lost primarily because ofdissimilarity.

Miracle-Gro’s trade dress had substantial commercialstrength, but its conceptual strength was unclear, especially given the definitionalquestions (are proportions key to the trade dress, or not?). The court notedthat, on all the products it saw, the one-third/two-thirds division was thesame, and the green was above the yellow. With that, plus the “circularhorizontally centered” black circle at the dividing line between the colors,there was likely some conceptual strength.

“But when you start subtracting individual elements fromthat combination, the distinctiveness quickly vanishes.” There was nothingparticularly distinct about using green and yellow for packaging in the lawncare industry: they “are the colors of sunshine and plants.” Although theburden is on the defendant to show what actually happens in the market, P&Gdid so, showing that several other strong market performers use green andyellow. It’s not that those others are confusing—it’s that reasonable consumerswouldn’t just rely on seeing green and yellow to attribute source given themarket.

The dissimilar Miracle-Gro variants also sapped some of theconceptual strength of the trade dress. “[T]he more consumers come into contactwith Miracle-Gro products with a different style of packaging, and inparticular different color combinations, the less likely they are to look forthe green and yellow combination as identifying their favorite lawn and gardenproduct.” (But the black circle abides.)

Nonetheless, this factor overall tilted towards Scotts.

Relatedness of the goods: One of the products bearing the Scottstrade dress is a “Weed Preventer.”

That didn’t move the needle much (herbicide is not “weedpreventer” but killer, and you’d use the weed preventer on a flowerbed but notthe weed killer, and vice versa for weeds sprouting between bricks), but theproducts were somewhat related insofar as they are all in the lawn and gardencategory.

Similarity of the marks: a “defendant’s resounding successon this factor makes the plaintiff’s burden of prevailing on the seven other Frisch’sfactors effectively insurmountable.” Similarity doesn’t depend on aside-by-side, element-by-element comparison; it is based on the overallimpression arising from the combination of elements. Even going element byclaimed 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: Scottshas the one-third/two-third ratio, and Spruce uses a clear, bottom portion (aboutone-fifth), then dark green predominates over most of the rest. The yellowportion, it is relatively small and is used to highlight a message—“VisibleResults in 1 HOUR.”

True, on both packages, the colors “shar[e] a common borderthat runs horizontally along the package” in the form of “a straight linedividing the two colored bands.” “But these visual elements are whollyunremarkable and add little to the overall visual impression of each product.”

Likewise, both products contain a “horizontally centeredgraphic element.” But on one, it’s the Miracle-Gro logo, which is white text ona black circle with some additional features. Spruce, has a circular yellowdandelion (with different graphics on each half) overlaid on a dark greenbackground. Moreover, the circular graphics are “in different places on thepackage ([top] v. bottom).” “The dissimilarity on this element could not bemore stark.”

There were other dissimilarities as well, including in theactual containers—with five Spruce configurations versus the entire Miracle-Groproduct line, “none of them even remotely resemble each other in shape.” Scottsdidn’t have text in the top portion; P&G did. The graphics were “meaningfully”different: photorealistic images of vegetation versus graphic design-likeelements (e.g., an outlined paw print). And the Spruce trademark creates itsown distinct visual impression, serving as a house mark.

The trade dresses at issue are “clearly distinguishable andwould appear so to all but the most obtuse consumer.”

Scotts tried to change this result with survey evidence. Itsexpert, Dr. Wind, conducted a Squirt survey—one that presents surveyrespondents with both of the conflicting marks and “do[ ] not assume that therespondent is familiar with the senior mark.” Potential purchasers ofMiracle-Gro and Spruce were broken into three groups, Home Depot, Lowe’s, orMeijer, each with a test and control cell. After telling respondents to imaginethey were considering purchasing a lawn and garden product, the survey showedrespondents in each group in-store displays from the stores to which they wereassigned (except the Lowe’s, which was mistakenly shown Home Depot; the courtfound this rendered the survey “suspect and deserving of little weight” as tothis subgroup). E.g., Home Depot respondents saw these: 

Then test respondents were shown some of the same photoscontaining Spruce, with red lines surrounding the Spruce products, and askedhow they would describe those products to a friend.

Finally, test respondents were shown the in-store displaythat included Miracle-Gro products along with various other third-partyproducts (the right-most photo in the initial photo array above) and wereasked: “Do you believe that any of these products or product lines on thisplant food display were made by the same company that manufacturers theproducts you saw that were circled in red?” Respondents were asked somefollow-up questions (e.g., the reason they selected the products).

The survey repeated the process for (1) asking whetherrespondents thought any of the products or product lines in the display withthe Miracle-Gro “ha[d] a business affiliation or connection with the companythat manufactures the products you saw that were circled in red” [I note thatthere was no training on what a “business affiliation” is, and there probablyshould be]; and (2) asking whether respondents thought any of the products orproduct lines in the display with the Miracle-Gro “gave permission or approvalto the company that manufactures the products you saw that were circled inred.”

Control groups saw the same images and stimuli, except thecolors on the Spruce products were black, white, and silver.

If a respondent who answered positively mentioned green andyellow in connection with Spruce, the coders tagged that respondent as“confused.” Dr. Wind calculated net confusion rates, “[d]ue to explicitreference 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 donot appear side-by-side in the marketplace and that an Eveready surveyis 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 issueare typically not displayed side-by-side in a retail setting, nor was there asufficient showing that the typical consumer sees them sequentially,” andMiracle-Gro is commercially strong. The court quoted McCarthy to the effectthat “Squirt methodology is inappropriate unless there are ‘a significantnumber of real world situations in which both marks are likely to be seen inthe marketplace sequentially or side-by-side.’”

Design: P&G argued that Squirt surveys have aninherently leading nature (seems true), which was amplified by stimuli unreflectiveof true market conditions. This was even more problematic than choosing Squirtin the first place. First, there was the Lowe’s error. Second, in the HomeDepot image, nearly half of the “plant food” display shown to respondents wasdominated by a pallet of Miracle-Gro potting mix. “[T]he Court finds itunlikely that large pallets of Miracle-Gro potting mix typically sit directlyin front of Home Depot’s plant food shelves (or at least, that customerstypically would stand behind such a pallet while selecting something on theplant food shelf). Simply put, the Home Depot photo was highly suggestive.”

Identification of confused respondents: Dr. Wind “classifiedany respondent ‘confused’ for simply describing the products as ‘green andyellow’—even if they mentioned nothing about Scotts or Miracle-Gro.” That is,if a respondent accurately noted that the packaging for Spruce productscontained the colors green and yellow, that would be coded as reflecting“confusion.” This the court found most troublesome of all. “P&G identifieda significant number of responses that clearly should not have been coded inthat manner—namely, respondents who referenced “Spruce” in their answers, andwho did not mention “Miracle-Gro” or “Scotts” at all, but who happened tomention that the Spruce bottle was green and yellow (which it is).”

P&G offered its own survey by Dr. Simonson: an “aided Evereadysurvey.” An Eveready format assumes that survey respondents “are awareof the [senior] mark from their prior experience.” This “format is especiallyuseful when the senior mark is readily recognized by buyers in the relevantuniverse.” 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 otherproducts?

• Does the company that makes this product have a businessaffiliation or connection with any other company? [Again, no definition/training.]

• Did the company that makes this product receive permissionor approval from another company?

However, Simonson used the typical Eveready questions, but displayedmultiple products from the marketplace (as would occur in a Squirtsurvey), instead of the single, allegedly infringing product. Each respondentviewed a picture array of products, like so:

They were asked to review all the products “as they would ifthey were considering purchasing a weed preventer at an online store.” Therespondents then saw one of the four images below, with the Spruce product (ora control version of the Spruce product, bottom) blown up on the left-handside: 

They were then asked variations of the four standardEveready questions along with follow-up probing questions as necessary. The“control” “had a different trade dress, but still incorporated green and yellowelements 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 thecourt didn’t rely on the Simonson survey, it didn’t like the control.

Here, the characteristic beingassessed was the color combination. But instead of altering solely Spruce’scolor, as Dr. Wind did for his control, Dr. Simonson created an entirely newshape, maintained the colors green and yellow (but making white the mostprominent color), and added a circular graphic element to the top portion ofthe packaging. In many ways, Dr. Simsonson crafted a control that was moresimilar to the Miracle-Gro’s Trade Dress than Spruce’s current packaging, whichmay explain why the control group displayed greater confusion than the testgroup.

(The court  did reject Scotts’ criticism thatthe answers “Ortho,” “RoundUp,” “fertilizer,” or the like should have beencoded as confused. “This case is about Miracle-Gro; not every brand Scottsuses. And Scotts certainly does not have a monopoly on the word ‘fertilizer.’”)

Remaining factors: Marketing channels favored Scotts; degreeof purchaser care was not very significant/it was dependent on mark similarity.Intent: (1) P&G considered other packaging designs with other colorschemes; (2) some third-party reports prepared for P&G, as part of Spruce’spackaging development process, featured images of Miracle-Gro products; (3)Scotts sent P&G a letter expressing concerns about confusing similaritybetween the products’ designs in May 2024. This was “attenuated at best” intentevidence. “It seems natural to the Court that a product development team mightconsider different colors and designs, then test those options before going tomarket.” 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 ofintentional copying. “Scotts is the category leader; you would expect some ofits products to appear in any report about the market.” Finally, the Scottsletter had no bearing on intent—the packaging design was nearly finalized bythen. No weight.

Likely product line expansion: Not likely; no weight.

Dilution: In the Sixth Circuit, “[t]he ‘similarity’ test fordilution claims is more stringent than in the infringement milieu.” Given thehigh level of dissimilarity here, that was fatal.