Consumer surveys don't matter when the court is unconvinced

Scotts Co., LLC v. Pennington Seed, Inc., 2012 WL 6004140 (E.D. Va.)

The parties, who compete in the market for grass seed and plant food, each sought preliminary injunctive relief against the other’s ads, which were both denied.  Nationwide retailers typically sell both parties’ products side by side in garden departments.  The peak sales season for grass seed is brief, about 12 weeks in the spring.

Scotts began by alleging that Pennington’s ads that Pennington’s Smart Seed contained “twice the seed” of Scotts’ Turf Builder.  The court granted Pennington’s motion to dismiss because the claim at issue was covered under the terms of a confidential settlement agreement and the parties were subject to mandatory ADR before they could sue.  Pennington then sought a preliminary injunction against Scotts ads describing Pennington's 1 Step Complete combination grass seed products as “a bunch of ground-up paper” and making superiority claims for Scotts’ EZ Seed over Pennington's 1 Step Complete products.  After the required ADR, Scotts came back to court on the “twice the seed” claims, expanding that to cover Scotts’ EZ Seed and Pennington’s 1 Step Complete combination grass seed products.

On Scotts’ motion, the court gave the following facts: Pennington launched a “twice the seed” campaign on its bags, ads, and display trays, and said on its website that “more seed means more plants ... And more plants means a thicker, more beautiful lawn.”  Pennington’s Smart Seeds compete with Scotts’ coated Turf builder products; uncoated Turf Builder varieties are targeted towards different purchasers.  Scotts’ coating accounts for half the seed’s weight, so Pennington claimed “NO FILLER! TWICE THE SEED! COMPARED TO COATED SEED PRODUCTS” on the packaging and made other comparative claims directly naming Scotts, including a TV ad: “… we're proud to tell you the truth about our Pennington 1 Step. We put in twice as much seed compared to their EZ SEED, we use a better mulch, and, well, look at the difference. I guess we believe in getting to the root of the problem. Don't you? Pennington 1 Step. Honest Green.” 

The court found literal falsity “debatable.”  Pennington’s products don’t have twice the number of seeds as Scotts’ products.  But “twice the seed” was literally true on a weight basis, which Pennington argued was the industry standard.  Scotts, however, introduced a consumer survey showing that consumers thought the claim referred to number, not weight.  Without detailing the parties’ arguments about the survey, the court concluded that Scotts showed that it was slightly likely to prevail on the merits of this part of its claim.

But laches also factored in.  Scotts waited until Pennington’s promotional materials had been public for over a year, triggering a laches defense.  (I’m not sure how the court is counting.  Scotts was aware of the campaign since October 2011, but it sued (albeit too soon, given the ADR requirement) in early 2012.  Perhaps 2011 is a typo?  Also, usually courts use a presumption against laches when a claim is within the coordinate state limitations period, which this seems to be no matter what you think the coordinate state claim is. However, delay—not laches—can be a reason to deny preliminary relief even though it’s not a reason to deny permanent relief, so that may be really what the court is thinking of, though then it’s analyzing the issue at the wrong part of the inquiry/double-counting, as shown by what it says next.)  At a full trial, either party could easily prevail, so the likely success factor didn’t tip in Scotts’ favor.

Scotts also failed to show irreparable harm.  Scotts waited for more than 18 months before taking action, which showed a self-diagnosed lack of irreparable harm.  Plus, given the growing season, the need for urgency is gone; a full trial can be had before the claims could again become crucial.

Balancing the equities, the court also noted that the parties engaged in “tit-for-tat” litigation in which each one’s hands were “slightly soiled.” Though the public interest is against consumer confusion, Scotts’ showing wasn’t strong enough to tilt in its favor.

Pennington fared no better.  It complained about a TV ad (and similar radio spot) comparing Scotts’ EZ Seed to Pennington’s 1 Step Complete.  The ad called 1 Step Complete “a bunch of ground-up paper,” and said that “Scotts' EZ Seed uses the finest seed, fertilizer, and natural mulch that absorbs and holds water better than paper can.” An actor ‘changes his mind’ and uses EZ Seed instead.  A website ad, “You Be the Judge,” also made superiority claims, such as that EZ Seed retained more than four times as much water as 1 Step Complete and outperformed 1 Step Complete in a “torture test” comparing growth after certain periods.  Scotts allegedly used an outdated version of the Pennington product for its comparisons.  Scotts also ran in-store ads, “REVOLUTIONARY GROWING MATERIAL OUTPERFORMS PAPER MULCH,” repeating other claims from the internet ads.

The court found that Pennington failed to show likely success on the merits.  Though 1 Step Complete undisputedly consisted of a combination of mulch, grass seed, and fertilizer, it also was undisputed that the mulch included paper.  Scotts provided evidence of visible newsprint in both old and new formulations.  Pennington argued that Scotts’ ads unambiguously conveyed the message that 1 Step Complete was entirely paper, but no reasonable consumer seeking to purchase a grass seed product would understand it that way.  Pennington’s survey was no help in showing that consumers received the message that it was all paper.

As for the superiority claims, Scotts relied on testing by its research specialist, which Pennington attempted to discredit.  The court found that the testing reasonably supported its establishment claims and that Pennington hadn’t shown that the tests weren’t sufficiently reliable.  Though Pennington claimed to have abandoned the old formula, the court wasn’t persuaded that the old formula was no longer readily available to consumers or that the tests were unreliable with respect to the new formula.

With no likely success on the merits, the other factors didn’t favor Pennington either.

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?

Does "Dead Weeds in 1 Day" mean the entire weed will die, or just the visible part?

Scotts Co. v. Procter & Gamble Co., 2026 WL 482655, No. 2:24-cv-4199 (S.D. Ohio Feb. 20, 2026)

Previously, the court rejected Scotts’ request for a preliminary injunction of the trade dress of P&G’s Spruce brand of weed killer products, finding that it was not likely to be confused with Scotts’ Miracle-Gro. Scotts also makes Roundup and Ortho, relevant to the false advertising claims addressed here. The court dismissed one part of the claim but allowed the rest to survive.

Scotts challenged four different P&G statements (combined with certain visuals).

Dead weeds in 1 day

First, “Dead Weeds in 1 Day” and its accompanying visuals.  Scotts alleged that this was “literally false” because Spruce weed killer will not kill the entire weed within one day. Spruce is a “minimum risk product” as defined by the Environmental Protection Agency, and “[t]o date, all minimum risk products work by making contact only with the exposed portions of the plant and none directly affects the roots of the plant.” Thus, while “[w]ith regular application at certain dosages over time, a minimum risk product may eventually exhaust the roots’ storage of nutrients by repeatedly removing its leaves,” it will not kill the entire weed within one day.

Statement 2 uses the same visuals and has the same alleged problem: “Spruce works differently by dehydrating the weed down to the roots for dead weeds in just 1 day.”

visible results in 1 hour

Statement 3 promises “FAST Visible Results Within 1 Hour” or “visible results in 1 hour,” accompanied by before and after visual depictions. Scotts alleged that these “after-application images do not accurately portray typical results” of Spruce weed killer’s effects after only one hour.

Spruce works differently image

Statement 4 is titled “Spruce Works DIFFERENTLY.” It also says “WEEDS DEHYDRATE TO DEATH,” “1 HR,” and that “Without water, weeds dehydrate and die fast, showing visible results in 1 hour,” and was allegedly misleading for the same reasons.

P&G argued that Rule 9(b) should apply because false advertising “sounds in fraud.” Although this argument routinely works in consumer protection cases (because courts don’t like them), it fails here, as it sometimes does in Lanham Act false advertising cases. (Never in regular trademark cases, as far as I can recall.)

As P&G conceded, “[n]o Circuit has yet ruled on whether Rule 9(b)’s pleading standard generally applies to Lanham Act false advertising claims.” P&G’s theory of the law is that “if an element of any claim ‘requires an allegation of duplicity,’ it ‘implicates Rule 9(b)’s purpose’ and, therefore, Rule 9(b)’s heightened pleading standard applies.” And, because Scotts alleged intentional deception, the claim sounded in fraud.

But, as the court noted, “Lanham Act false advertising claims do not have a scienter element, so it is hard to see how they would require an allegation of duplicity.” The Sixth Circuit has applied the Rule 9(b) pleading requirements to some causes of action missing an intent requirement on par with the intent required for fraud—for example, to innocent misrepresentation. “But typically, courts do so when a ‘unified course of fraudulent content’ forms the basis of those non-fraud claims—especially if pleaded alongside fraud.” This is designed to prevent evasion of Rule 9(b).

Here, though, Scotts’ false advertising claim was based on the allegedly false and misleading nature of the statements themselves, not on the allegation that P&G is “willfully ... intending to deceive consumers.” “That is, if the statements are false, liability could attach even absent intent. So there is no indication that Scotts’ actual claim is fraud, with the false advertising claim only pled to circumvent Rule 9(b)’s strictures.”

More generally, “Lanham Act false advertising claims, while also based on ‘false’ statements, seem different in kind than traditional fraud claims.” Rule 9(b) is designed to ensure defendants have sufficient notice to respond. “But allegedly false or misleading advertisements typically run over an extended period of time, making it ‘unreasonable and contrary to the Sixth Circuit’s liberal construction of Rule 9(b) to require Plaintiff[s] to identify the exact day, hour or place of every advertisement’ that caused them harm.” Scotts clearly identified the statements it challenged, providing P&G all of the notice needed for it to respond. (It would also be possible to decide that this satisfied 9(b), as some cases have done.)

In addition, Lanham Act claims differ because Scotts was not alleging that it itself was defrauded, but that its customers are. “[G]iven that Scotts itself was not the defrauded entity, some of the who, what, when, where, and why questions that form the typical grist for Rule 9(b) may turn on information that Scotts itself does not have—information that instead rests only with the allegedly defrauded customers.”

Turning to the merits, Scotts plausibly alleged that statements 2-4 were false or misleading, but not the literal falsity of statement 1.

Recall that, on Scotts’ theory, Spruce weed killer does not directly affect the weed’s roots, so it does not (indeed cannot) kill the entire weed within one day (as the roots are still alive). P&G pointed out that the visuals do not depict the subterranean portion of the plant, and argued that “a ‘dead weed’ refers to a plant evidencing visible necrosis as featured in the accompanying image.” A statement “cannot be literally false if it reasonably conveys multiple meanings,” and that was the case here. “While consumers might plausibly take ‘dead weed’ to mean that the entire plant is dead, and will not grow back, consumers could also plausibly consider a weed evidencing visible necrosis (i.e., the visible green part is now brown and dead) to be a ‘dead weed.’”

Scotts did plausibly plead that Statement 1 was misleading. Statement 2 could also cross the line to literal falsity by claiming to dehydrate the weed “down to the roots for dead weeds in just 1 day.”

This is not ambiguous. The obvious meaning of this statement is that Spruce works—apparently in contrast to other weed killers—by dehydrating the whole plant, including the roots. It is not plausible that reasonable consumers would take the phrase “down to the roots” to mean just the above-ground portion of the weed. “Down to the [whatever thing]” conveys finality and the exhaustion of that thing. If coffee is good “down to the last drop,” one expects that the last drop will be good, as well. And if an event is planned “down to the last detail,” that means that the last detail is accounted for, too. True, sometimes phrases using this structure can mean something like “everything is gone except the thing.” For example, if a house is burned “down to the ground,” that does not suggest that the ground itself has burned. But even then, “down to [something]” means that the entirety of the thing is exhausted. The house burning “down to the ground” means that everything that can burn has; no part remains. Either way, weeds dehydrated “down to the roots” conveys that the roots, too, are dehydrated. Accordingly, there are not multiple reasonable interpretations of Statement 2 and Scotts has sufficiently alleged that it is literally false and misleading.

Statements 3 & 4 were also both plausibly false and misleading. “Scotts is alleging that weeds treated with Spruce weed killer will not have the visible results in one hour that the images depict. Or in other words, if you spray weeds with Spruce and wait one hour, the weeds do not in fact look like the pictures. Whether these images are actually inaccurate, and if the images and statements together are actually misleading consumers, are issues the Court will address later.”

EZ Seed has rough time in court

In re Scotts EZ Seed Litigation, 2013 WL 2303727 (S.D.N.Y.)

Plaintiffs sued Scotts, Lowe’s, and Home Depot, alleging that Scotts EZ Seed, made by Scotts and sold at Lowe's and Home Depot stores, doesn’t grow grass as advertised.  EZ Seed is a “combination mulch-grass seed product” labeled as growing grass “50% thicker with half the water” compared to “ordinary seed.”  Other label claims: “WaterSmart”; “Grows Anywhere! Guaranteed”; “Makes the Most Of Every Drop”; “Grows in Tough Conditions! Guaranteed!”; “Drought tolerant”; “[t]he revolutionary seeding mix that takes care of the seed for you, so you can grow thick, beautiful grass ANYWHERE,” including “Dry, sunny areas,” “Dense shade,” and “Even grows on pavement!”; and “premium quality … developed to thrive in virtually every condition—harsh sun, dense shade, and even spreads to repair wear and tear. The result—thicker, beautiful, long lasting grass!”

There was also a graphic purporting to show EZ Seed outperforming ordinary seed, labeled “50% THICKER WITH HALF THE WATER††.” Below the pictures were disclosures: “††Results 32 days after planting; each watered at half the recommended rate for ordinary seed. Results may vary. *Subject to proper care.”

Scotts also offers a “No Quibble Guarantee,” which provides: “If for any reason you, the consumer, are not satisfied after using this product, you are entitled to get your money back. Simply send us the original evidence of purchase and we will mail you a refund check promptly.” 

Home Depot and Lowe’s allegedly used in-store displays containing the same statements and reviewed and approved false and misleading materials for EZ Seed, including ads that bore their respective names/marks.

The plaintiffs, who each resided in New York or California, alleged that they bought EZ Seed in reliance on these representations and that it failed to perform as promised.  They cited studies by “the largest turfgrass development institution in North America” that suggested that EZ Seed failed to grow any grass when given half the amount of water recommended for ordinary seed over a thirty-two day period. One plaintiff sought a refund for four canisters, but Scotts only refunded the purchase price of two canisters.  Plaintiffs sued for violations of the Magnuson-Moss Warranty Act (MMWA), breach of warranty, California’s CLRA, UCL, and FAL, and NY GBL §§ 349 & 350, and related common-law claims.

Plaintiffs argued that the various statements on EZ Seed’s label and ads were written warranties under the MMWA because they promised that EZ seed would “meet a specific level of performance over a specified period of time,” as stated in the statutory definition.  They also alleged that the No Quibble guaranty was a promise to refund under the MMWA. 

The court found that some statements arguably promised a specific level of performance, such as “50% thicker with half the water,” but didn’t provide a specific period of time.  The FTC has interpreted the MMWA to mean that “[a] product information disclosure without a specified time period to which the disclosure relates is … not a written warranty.”  This may seem arbitrary, but a line must be drawn and this is it.  The only representation that came close to including a specific period of time was “50% thicker with half the water,” because directly below those words were images purporting to show EZ Seed having grown significantly more grass than ordinary seed “32 days after planting.” Thus, plaintiffs argue defendants promise that EZ Seed grows 50% thicker with half the water in 32 days.  But the “32 days” language was immediately followed by “each watered at half the recommended rate for ordinary seed. Results may vary.”  Thus, the label expressly cautioned purchasers that they might not get the promised result in 32 days.

The No Quibble guaranty might be a warranty under the MMWA, though.  One plaintiff alleged that she “sought a money-back refund for the four EZ Seed canisters she had purchased pursuant to the Scotts No Quibble Guarantee. However, Scotts refused to honor the No–Quibble Guarantee for two containers of the EZ Seed.” The court would draw the reasonable inference that she properly requested a refund, and Scotts failed to honor her request; that was entirely plausible.  Maybe the facts wouldn’t bear that out, but that was for later.

Turning to the state law warranty claims, the court found that most were merely nonactionable puffery: “WaterSmart”; “Drought tolerant”; “Grows Anywhere! Guaranteed!”; “Makes the Most Of Every Drop”; and “Grows in Tough Conditions! Guaranteed!”  However, some statements could be express warranties under the UCC: (1) EZ Seed grows grass “50% thicker with half the water” compared to “ordinary seed,” and (2) EZ Seed is “developed to thrive in virtually every condition—harsh sun, dense shade, and even spreads to repair wear and tear” and similar statements to the extent they promised that EZ Seed would grow grass in both sunny and shady areas. These statements promised specific, measurable performance, as did the No Quibble guaranty.

The court did not find the claims that EZ Seed was “revolutionary” and “takes care of the seed for you, so you can grow thick, beautiful grass ANYWHERE” actionable.  Apparently the claim that EZ Seed would even grow grass on pavement was exaggerated puffery, though to me the grow anywhere/even on pavement claim sounds exactly like a specific, surprising but possible claim the advertiser would want a buyer to believe in order to bolster its claims about ordinary performance, just like showing a blender pulverizing unexpected ingredients.  This link to an Amazon page shows Scotts using a photo of the product growing on pavement to prove how good it is, and here’s a Scotts on Facebook using a different photo to make the same claim, “EZ Seed is guaranteed to grow grass anywhere! Don’t believe us? Check out this photo, it even grows on pavement.” I’m pretty sure the FTC would consider that non-puffery.

 

Amazon:

Facebook:

Anyway, these warranty claims were only stated against Scotts, not Home Depot or Lowe’s, since they only appeared on EZ Seed’s labeling.  Plaintiffs failed to allege that the other defendants independently made the same promises when selling EZ Seed, as opposed to “merely passively displaying” Scotts’ promises.

Turning to breach of implied warranty, privity is usually required for such claims.  Plaintiffs argued that here, the retailers acted as Scotts’ agent, but the court rejected that theory.  As against the retailers, who argued that plaintiffs didn’t properly allege that EZ Seed failed its essential purpose, the court refused to dismiss the claim.  The purpose of EZ Seed was to grow grass; plaintiffs alleged that it didn’t grow; this was enough to allege that it wasn’t fit for the ordinary purposes for which it was used, and plaintiffs stated an implied warranty of merchantability claim against Home Depot and Lowe's.

The court turned to the California consumer protection statutes.  Again, puffery was not actionable, but some potentially actionable statements remained.  The claim against Scotts survived, but not against the retailers because of failure to plead fraud with particularity: plaintiffs didn’t identify what statements the retailers allegedly made, lumping them together with Scotts.  Plus plaintiffs didn’t plausibly allege that the retailers knew or should have known of the falsity.  (Sigh.)

The New York analysis was different because claims under §§ 349 & 350 aren’t subject to Rule 9’s heightened pleading requirements.  (This is purely historical/path-dependent, as far as I can tell; neither state requires knowledge of falsity for core liability, so application of Rule 9(b) depends on whether courts think terms like “fraudulent” etc. matter more than whether an actual common law fraud type claim is being brought; the court’s not wrong to cite differing precedents from different coasts, but I don’t think there’s an actual rationale underlying that difference.)  Plus, these claims don’t require reliance.  (… Like some of the California claims?)  And New York doesn’t require plaintiffs to plead that defendants knew or should’ve known that the statements were false or misleading. 

So, while the claims based on puffery were dismissed, the claims based on nonpuffery remained, because plaintiffs properly alleged that the challenged statements (1) were directed at consumers, (2) were misleading in a material way, and (3) caused plaintiffs to be injured.  The claims against Lowe’s were dismissed, though, because the only plaintiff who allegedly bought EZ Seed at Lowe’s did so in California.  Given the different pleading standards, though, the claim against Home Depot survived; plaintiffs didn’t have to allege reliance on particular statements made by Home Depot or Home Depot’s knowledge. Instead, they met the low pleading standard “by alleging Home Depot included some or all of the actionable representations in its in-store advertisements and on its website, and the plaintiffs who purchased EZ Seed at Home Depot were injured because the product did not work.”

Copyright preemption in trade dress claims?

Scotts Company LLC v. SBM Life Science Corp., --- F.Supp.3d ----, No. 2:23-cv-1541, 2024 WL 4217446 (S.D. Ohio Sept. 18, 2024)

Scotts makes consumer lawn, garden, pesticide, and insecticide products, including under the “ORTHO” brand. Scotts alleged rights in its red mark, black trade dress, black label, and yellow barrier design that were allegedly infringed by competitor SBM’s competing products. Unsurprisingly, the court accepts those claims on a motion to dismiss, but seems to get the copyright preemption analysis backwards.

Scotts sufficiently alleged fame for dilution purposes.

Ortho red design mark

The allegations were, along with pictures, sufficient to allege a defined, distinctive trade dress:

The distinctive packaging of certain Scotts’ ORTHO control products consists of a unique arrangement of colors, graphic elements, font styles and text, with a black background with some lighter gradations of gray, a prominent placement of a red pentagon containing a brand name in white lettering above horizontal information bars that start on the left side of the label and connect into a circular or arc design that contains an image of green plant material. One information bar is yellowish/gold and the other information bar is silver. A product name is placed between the pentagon design and the information bars.

Ortho black trade dress

This was sufficiently definite; it didn’t include terms like “such as” or “for example,” which can be problematic.

However, coordinate state law claims under the Ohio Deceptive Trade Practices Act were preempted by §301 because the alleged extra element—the fact that the copied matter was put on products and sold on products that compete with Scotts’—didn’t qualitatively distinguish Scotts’ copyright claim from its trade dress claim. “[B]ased on Scotts’ allegations, the source of any likelihood of confusion—the extra element required to advance Scotts’ state-law claims—is the same activity that forms Scotts’ copyright claim,” so it wasn’t qualitatively different. (As TM gets more property-like, this argument may be more attractive to courts; when “confusion” is more notional than real, it seems less like an extra element.)

The court did find a copyright claim based on label similarity plausible. “Each [label has] a primarily black background, lighter gradations of gray, a prominent placement of a red pentagon containing white lettering where the brand name is, and horizontal information bars in yellowish/gold and silver that extend from the left side of the label to a circular image depicting green plant material.”

accused SBM trade dress--I really can't see substantial similarity of protectable expression here; this seems to conflate (c) and TM

The court doesn't separately deal with the copyright claim over the yellow barrier design, which to me clearly falls on the idea side of the idea/expression line:

False advertising: Scotts challenged SBM’s advertising statements that its Brush Killer Product kills brush for up to 12 months, protects for up to 12 months, and provides consumers with up to 365 days of control. Scotts alleged that the products do not provide the advertised protection for up to 12 months or 365 days; that was sufficient to allege falsity. At least the court is equally lenient with TM and false advertising?

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.

TerraCycle settles with Scotts

Scotts and TerraCycle have settled. (Previous reports.) TerraCycle will change its packaging color scheme, stop making superiority or establishment claims about TerraCycle versus Miracle Gro, and wind down its website suedbyscotts.com. The CEO even said, “We also regret certain statements that were made about Scotts in the heat of litigation.” A pretty satisfactory result for Scotts, especially as it ends TerraCycle’s media defense blitz. As Seattle Trademark Lawyer reports, Scotts even got a statement about the fame of its trade dress into the stipulation.

ETA: the settlement specifies the circumstances under which TerraCycle can make establishment/comparative claims: only when it has "at least one well-conducted scientific study, carried out after the Effective Date by an independent person or organization, using generally accepted scientific techniques, and reaching statistically valid conclusions. The full report of any such research, if relied on by TerraCycle to substantiate new comparative advertising claims, shall be published by TerraCycle on the Internet or otherwise made available to Scotts and the consuming public." This is a reasonably flexible limit; it does require more substantiation than some superiority claims would in the absence of a settlement, so Scotts gets something, but not in a way that prevents competition. One deviation from the baseline false advertising law is the requirement of independent testing; internal testing would ordinarily suffice, though of course lack of independence can always affect a factfinder's assessment of the credibility of a test. The other big deviation is that the burden is on TerraCycle, whereas the baseline would require Scotts to show falsity.

On the other side, apparently TerraCycle will continue to employ the people whose livelihoods were threatened by the lawsuit. If TerraCycle’s PR is as good at selling worm poop as it is at getting out the word about this suit, the company will do very well indeed.

Worm poop and the Lanham Act

TerraCycle sells fertilizer made from “worm poop.” Perhaps, then, it is well positioned to make promotional lemonade out of litigation lemons. It’s being sued by Scotts, the market leader in fertilizer, for trade dress infringement/dilution of the Scotts green-and-yellow trade dress and for false advertising. Coverage from Seattle TM Lawyer; TerraCycle's suedbyscotts website; example of columnist on TerraCycle’s side.

A Scotts spokeswoman emphasized the false advertising elements of the case: “‘We don't want to lose sight of the product claims,’ she said. ‘TerraCycle made broad claims that its products are more effective than synthetic chemical fertilizers. And they say industry research confirms this.’ … In its lawsuit, Scotts attacked TerraCycle's use of words and phrases such as ‘most efficient,’ ‘affordable’ and ‘more effective than synthetic chemical fertilizers.’”

From what I can see, the trade dress claims are weak, and may detract from the false advertising claims, which at least deserve consideration on their merits. At a minimum, TerraCycle’s PR seems to have successfully focused public attention on the weakness of the trade dress claims. Yet TerraCycle made establishment claims, and the law is that such claims must be substantiated by sufficiently reliable tests. Scotts could prevail by showing that the tests don’t prove what TerraCycle says they do, or that the better evidence is against TerraCycle’s claims. (Letter that TerraCycle relies on for substantiation here.)

The NYT article on TerraCycle in today’s magazine raises a different trademark issue: TerraCycle packages its products in recycled 20-ounce soda bottles. According to the article, this creates variation in the products’ appearance, since TerraCycle uses multiple bottle types. (TerraCycle’s acceptable bottle policy here. The text refers to “any 20oz Pepsi, Mountain Dew, Dr. Pepper bottle,” though the images of acceptable bottles clearly include distinctively shaped Coke bottles: On this page, mousing over the bottles reveals their origins as Pepsi bottles – except for the Coke bottle, whose logo has been blurred out. One wonders whether there is any history of contact between the Coca-Cola Co. and TerraCycle. And TerraCycle's packaging for its bottle collection program uses a clearly identifiable Pepsi logo -- a possible false endorsement problem?)

In any event, the NYT reports that “[inconsistent packaging] has become part of the brand’s look, and the company is trying to trademark the packaging style.” This raises fascinating questions. [ETA: see comment below for clarification. General-interest reporting often confuses types of IP protection. Still, I think the hypothetical trademark claim is of interest, and even without an affirmative claim of rights there are potential infringement and dilution issues.]

Could repackaging be infringing on the Coke or Pepsi trade dress? The silhouette of the plastic Coke bottle is quite recognizable, though not as iconic as the glass Coke bottle, and Pepsi probably has a fair amount of secondary meaning in its bottles as well. Nonetheless, especially given that a selling point is that the product comes in recycled bottles, it seems unlikely that consumers will be confused about the connection between soda and worm poop. Dilution? Perhaps a harder case for TerraCycle, though in context “worm poop” may be burnishing, not tarnishing – see this NYT article about Diet Coke with Vitamins for a suggestion that Coca-Cola might welcome association with an actual product of nature.

Would it be any defense that recycling bottles is a functional use of those bottles? That is, given that the point of the product is to minimize environmental impact, the quality of the product would be affected (and possibly also the cost of collecting the bottles would be increased) by a prohibition on the reuse of bottles that comprise a large percentage of the available empties. I have been increasingly interested in the idea of contextual functionality – cases in which some uses of a trade dress are functional but others aren’t. Examples include the iPod trade dress, lauded for its ease of use but also sometimes copied only for its source-identifying features, as well as the “ding” sound that Southwest has turned into a brand in its ad campaigns, which is actually the same sound heard on every Boeing plane, whether operated by Southwest or American. I am confident that Southwest can’t use its “ding” registration to force American to retrofit all its Boeing planes, or even to make Boeing change the sound it uses on new planes – but I’m equally confident that American can’t start using “ding” in its ads without a darn good reason. As branding permeates every aspect of production, contextual functionality situations may increase in number.

Setting aside any possible infringement of soda makers’ rights, TerraCycle could perhaps seek trademark protection not for any particular bottle shape, but for the idea of a product line of variable shapes. It seems unlikely that a product line could get trade dress protection in this way. We usually think of trade dress as a consistent presentation, but in the interests of ontological neutrality I will assume that variation can also be a distinctive signal. Still, the very reason behind the variation – eco-friendliness – presents the same functionality concerns that provide TerraCycle with its defense against the big bottlers.

Final note: If TerraCycle does not claim a trademark in its bottle shapes, or even in their variability, it may have a plausible defense to dilution that it isn't using the bottles as a mark for its goods.