Background
The Scotts Company LLC, which licenses the Miracle-Gro brand, sought a preliminary injunction against The Procter & Gamble Company alleging that P&G’s Spruce weed-killer product infringed on and diluted the trade dress of Miracle-Gro packaging. The district court denied the injunction, finding Scotts unlikely to succeed on the merits of its infringement and dilution claims. Scotts appealed, challenging the district court’s analysis of the strength of its mark, the similarity of the marks, and the relatedness of the goods.
The court’s reasoning
The Sixth Circuit reviewed the denial of the preliminary injunction for abuse of discretion. Regarding the likelihood of success on the merits of infringement, the court applied the eight Frisch factors. It held that the strength of the plaintiff’s mark depends on the interplay between conceptual and commercial strength, and Scotts’s mark had limited conceptual strength due to the prevalence of green and yellow combinations in the lawn care industry. The court found the district court correctly assessed the similarity of the marks, noting the overall visual impressions were highly dissimilar despite some shared colors. Regarding relatedness, the court agreed the products were only somewhat related as they were not directly competitive. On the dilution claim, the court assumed without deciding that the heightened similarity standard from Autozone no longer applied. However, it concluded that because the marks were found to be highly dissimilar, the district court’s analysis was sufficient to defeat the dilution claim, as similarity is a necessary predicate for any dilution analysis.
We do not need to resolve the question as to whether the heightened showing of similarity required by Autozone still applies. Instead, we assume without deciding that the similarity requirement is no longer heightened relative to a likelihood-of-confusion analysis.
Opinion at 14
What it means going forward
The ruling reinforces that trade-dress plaintiffs must prove both conceptual and commercial distinctiveness and that a finding of high dissimilarity between packaging can effectively bar both infringement and dilution claims in the Sixth Circuit.