6th Circuit approves of using (at least) same similarity standard for dilution as for confusion

Scotts Co. v. Procter & Gamble Co., 2026 WL 1601797, No. 25-3555 (6^th Cir. Jun. 4, 2026)

Discussion of trade dress opinion here. False advertising claim here. The district court didn’t abuse its discretion in denying a preliminary injunction against P&G on the claims that P&G’s weed-killer product Spruce infringes on and dilutes Scotts’s Miracle-Gro trade dress.

Spruce

Scotts defined its claimed common-law trade dress as (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.

Miracle Gro examples

Approximately one-third of Scotts’s Miracle-Gro products, by revenue, are “specialty products” that come in different packaging. And a number of third-party products in the lawncare space, some of which are “widely sold in the lawn-and-garden marketplace,” and at times “shelved right next to” Miracle-Gro product, have some overlaps.

third parties

On appeal, Scotts objected to three of the district court’s factor analyses: (1) mark strength, (2) mark similarity, and (3) relatedness of goods. The big three!

Strength: the district court weighed this “at least somewhat in Scotts’ favor” because it found that the trade dress had substantial commercial strength but less conceptual strength. Scotts argued that substantial commercial strength should be sufficient to make the factor weigh entirely in Scotts’s favor. No! Strength depends on the interplay of conceptual and commercial strength. Even though Scotts has invested “substantial effort and large sums of money over an extended period of time” in promoting the trade dress, “there’s nothing particularly distinct about using green and yellow for packaging in the lawn care industry.” Extensive third party use of similar marks limited the conceptual strength of the mark, reducing its strength for purposes of this factor. [We can say—but I’m not sure any court has outright—that a mark can be both very strong and very narrow. American Airlines is highly recognizable, but it’s pretty easy to use a mark that is both heavily overlapping (using “American” or “Airlines” or even both plus a geographic modifier) and not confusing.]

Similarity of marks: Scotts that the district court erred as a matter of law by “rel[ying] on a legally improper side-by-side comparison of the packages in the courtroom,” and that it made a “clearly erroneous” factual finding that the Miracle-Gro trade dress always uses the same ratio of green and yellow.

While the Sixth Circuit “do[es] not approach trade dress claims by parsing minute differences between products,” “that does not mean that actually comparing the packaging is inappropriate.” Indeed, that’s the best practice. The district court identified the appropriate legal standard: “[W]hether a given mark would confuse the public when viewed alone, in order to account for the possibility that sufficiently similar marks may confuse consumers who do not have both marks before them but who may have a general, vague, or even hazy impression or recollection of the other party’s mark.” The district court “appropriately” cited a variety of individual visual differences to show that the “visual differences add up to a highly dissimilar overall visual impression between the Miracle-Gro Trade Dress and the Spruce packaging,” and correctly identified that the products were typically not shown side by side in retail stores.

The ratio finding was also not clearly erroneous. Scotts’s registration defines a specific one-third green to two-thirds yellow color combination. And while Scotts claimed a broader common-law trade dress, its expert testified that “our Miracle-Gro trade dress says typically one-third green on top, two-thirds yellow on the bottom,” mentioning  the “one-third/two-third” ratio repeatedly as, in the court’s words, “a key factor that distinguishes Miracle-Gro from a multitude of other green and yellow products.”

The court also noted Scotts’ attempt to make its trade dress a nose of wax. “[S]ome of the products that Scotts cites as using other ratios also completely lack other elements that Scotts identified as part of its broader common-law trade dress …. Scotts can’t have its cake and eat it too; either the yellow-and-green combination is distinct from the many other green and yellow products on the market because of its specific ratio, or it isn’t nearly as distinct as Scotts claims.”

Relatedness of the goods: Because Spruce is a weed killer and there is no equivalent product in the Miracle-Gro product line, the district court reasoned that the products are “only somewhat related” because the products are not “directly competitive.” This too was not an abuse of discretion. The Sixth Circuit sorts this factor into three categories: “(1) direct competition of services, in which case confusion is likely if the marks are sufficiently similar; (2) services are somewhat related but not competitive, so that likelihood of confusion may or may not result depending on other factors; and (3) services are totally unrelated, in which case confusion is unlikely.” This was category (2) because both were lawn and garden products, but did not directly compete.

Dilution: Scotts argued that the district court erred in holding that its finding that the Miracle-Gro trade dress and Spruce’s packaging are “highly dissimilar” also meant that Scotts wasn’t likely to succeed on its dilution claim. The Sixth Circuit has held that “[t]he degree of similarity required for a dilution claim must be greater than that which is required to show likelihood of confusion” because “[t]he purpose of anti-dilution laws is to provide a narrow remedy when the similarity between two marks is great enough that even a noncompeting, nonconfusing use is harmful to the senior user.”

Scotts argued that this precedent had to be rejected after the TDRA. It noted that both the 9^th and 2^nd Circuits have held that there’s no requirement of substantial similarity for dilution purposes, though I think they’re both wrong. [The underlying logic is that the TDRA gives a multifactor test for blurring referencing the “degree” of similarity as well as the “degree” of other factors, so it must be possible to dilute without a high degree of similarity. I think this is wrong as a matter of grammar—the statute simply doesn’t say where to draw the line. Moreover, the other factors are essentially all about fame (with the arguable partial exceptions of intent/actual association), which by definition will be satisfied if you get to the multi-factor test because you’ve shown ownership of a famous mark. So if we want continuity with the other “degree” factors, “very high” should be required for the factor to favor the plaintiff.]

According to Scotts, the district court should therefore have done more balancing, which would favor it because of its claimed fame. P&G pointed out that the definition of dilution is dependent on some amount of similarity, and that the Ninth Circuit also held that while “a particular degree of similarity is not a threshold, similarity is the necessary predicate for dilution analysis.” “The statutory text itself does not seem to mandate that the district court specifically weigh all six factors; it only states courts ‘may’ consider ‘all relevant factors’ and offers six examples.”

The court of appeals didn’t resolve the issue; even assuming that the similarity requirement is no longer heightened relative to a likelihood-of-confusion analysis, there was no abuse of discretion in finding that the “high level of dissimilarity” found in the infringement analysis also ended the dilution inquiry. [This next quote shows why the 2nd and 9th Circuits are wrong: if it’s not a humorous understatement, it’s a sign that something has gone very wrong.]  “Since dilution definitionally requires similarity and some similarity is ‘the necessary predicate’ for dilution analysis, a finding of a complete lack of similarity should strongly influence the dilution analysis.”

Even if the dilution similarity standard isn’t more rigorous than the infringement similarity standard, it was not error to hold it to the infringement similarity standard—thus, the court of appeals strongly implies, the dilution similarity standard can’t be less rigorous than that for confusion.

Some thoughts: If dilution were a less rigorous standard, how would we calibrate using the other factors of the test (“test”)? Perhaps we could say that no one can get closer than other slightly-similar marks or designs on the market. This would be particularly beneficial to makers of allegedly famous product designs or even packaging, since they’re the ones particularly likely to want to constrain competitors. This seems to me to be unrelated to any evidence we could gather about diminished distinctiveness—because even if we have a theory about preserving conceptual space around a mark, the fact of the matter is that conceptual space will shift based on other features, not just similarity. Dida’s Café would probably not make you think about Adidas, but Dida’s Sneakers could well do so. So identifying the comparators “nearest to” the famous mark that are perceptually somewhat similar and that therefore define the scope of its protection against dilution will be conceptually and practically difficult. Why would we compound our troubles by requiring less than compelling similarity, which offers us a way to define the scope of protection that is at least consistent with the idea of drawing firm boundaries around things that are property?