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 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.