High Dissimilarity Defeats Preliminary-Injunction Dilution Claims (Even Post-TDRA) and Conceptual Weakness Tempers Commercial Strength in Trade Dress

1. Introduction

The Scotts Co. LLC v. The Procter & Gamble Co. is a Sixth Circuit interlocutory appeal from the denial of a preliminary injunction in a Lanham Act trade-dress dispute. Scotts (Miracle-Gro) sought to enjoin P&G’s “Spruce” weed-killer packaging, alleging (i) trade-dress infringement/false designation and (ii) federal dilution (blurring/tarnishment), along with state-law claims. The district court denied relief, finding Scotts unlikely to succeed on the merits and unpersuaded on irreparable harm, balance of harms, and public interest.

The appeal principally pressed three likelihood-of-confusion issues—strength, similarity, and relatedness—and challenged the district court’s dilution ruling, arguing that the court improperly treated “high dissimilarity” as dispositive under the Trademark Dilution Revision Act of 2006 (“TDRA”).

2. Summary of the Opinion

The Sixth Circuit affirmed. On infringement, the panel held the district court correctly applied the Frisch framework and did not err in concluding that (a) Miracle-Gro’s trade dress was commercially strong but conceptually weakened by widespread green/yellow use in the lawn-and-garden market; (b) Spruce’s overall look created a “highly dissimilar” visual impression despite shared colors; and (c) the goods were only “somewhat related” (plant food vs. non-selective herbicide), placing weight on other factors.

On dilution, the court declined to decide whether Autozone, Inc. v. Tandy Corp.’s heightened similarity requirement survives the TDRA. Assuming arguendo no heightened standard, it nonetheless held that dilution still “definitionally requires similarity,” and the district court’s well-supported finding of “high” dissimilarity was sufficient to deny a preliminary injunction. Any potential misstatement about a heightened similarity standard was deemed harmless.

3. Analysis

3.1 Precedents Cited

A. Standards governing preliminary injunctions and appellate review

  • McGlone v. Bell (abuse-of-discretion review): framed the appellate lens for reviewing denial of preliminary injunctive relief.
  • Golden v. Kelsey-Hayes Co. and Performance Unlimited v. Questar Publishers, Inc.: clarified the mixed standard—legal conclusions reviewed de novo, factual findings for clear error.
  • Winter v. Nat. Res. Def. Council, Inc.: emphasized the “extraordinary remedy” nature of preliminary injunctions and the requirement of a “clear showing.”
  • McNeilly v. Land: placed the burden squarely on the movant to justify preliminary relief.
  • Speech First, Inc. v. Schlissel: supplied the Sixth Circuit’s four-factor preliminary injunction test used by the panel.

B. Trade-dress infringement framework and likelihood of confusion

  • Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc.: provided the three required elements for trade-dress infringement under § 1125(a)—distinctiveness, nonfunctionality, and confusing similarity.
  • Wynn Oil Co. v. Thomas: treated likelihood of confusion as a mixed question and articulated the appellate approach (fact findings vs. legal conclusion).
  • Homeowners Grp., Inc. v. Home Mktg. Specialists and Frisch's Rests., Inc. v. Elby's Big Boy of Steubenville, Inc.: set out the eight “Frisch factors,” the controlling test for likelihood of confusion in the circuit.

C. How to evaluate “strength,” “similarity,” and market context

  • Maker's Mark Distillery, Inc. v. Diageo N. Am.: anchored the “interplay” of conceptual and commercial strength and cautioned that similarity must be assessed by overall impression and consumers’ imperfect recollection.
  • Kibler v. Hall: reinforced the proposition that a mark “cannot be strong unless it is both conceptually and commercially strong,” supporting the panel’s refusal to treat commercial success as dispositive.
  • Progressive Distrib. Servs. v. UPS, Inc.: supported the district court’s reliance on extensive third-party use to weaken conceptual strength.
  • Innovation Ventures, LLC v. N2G Distrib., Inc.: warned against “parsing minute differences,” which Scotts invoked; the panel distinguished this from the permissible act of comparing packaging holistically.
  • Gray v. Meijer, Inc.: explicitly endorsed assessing similarity “by actually comparing” the packages—central to rejecting Scotts’s “improper side-by-side comparison” argument.

D. Relatedness of goods categories

  • Homeowners Grp., Inc. v. Home Mktg. Specialists: provided the three-tier taxonomy (direct competitors; somewhat related; unrelated).
  • Kellogg Co. v. Toucan Golf, Inc.: reinforced that when goods are “somewhat related,” confusion “may or may not” result depending on other factors.

E. Dilution doctrine and the TDRA debate

  • Autozone, Inc. v. Tandy Corp.: supplied the Sixth Circuit’s pre-TDRA dilution test and the statement that similarity for dilution must be “greater” than for confusion.
  • Jet, Inc. v. Sewage Aeration Sys.: quoted in Autozone for the rationale that dilution targets narrow circumstances where high similarity harms a famous mark even absent competition/confusion.
  • Starbucks Corp. v. Wolfe's Borough Coffee, Inc.: cited for the post-TDRA view that “degree of similarity” is a factor rather than a “substantial similarity” threshold.
  • Levi Strauss & Co. v. Abercrombie & Fitch Trading Co.: cited for rejecting “identical or nearly identical” as a statutory requirement, while still treating similarity as the “necessary predicate” for dilution analysis and explaining when an error is not harmless.

3.2 Legal Reasoning

A. The court’s operational focus: likelihood of success at the preliminary-injunction stage

Applying Winter v. Nat. Res. Def. Council, Inc. and Sixth Circuit four-factor doctrine, the panel treated “strong likelihood of success” as the dispositive battleground on appeal. Because the district court’s merits analysis survived, the denial of extraordinary preliminary relief was affirmed.

B. Strength of the trade dress: commercial power does not erase conceptual weakness

The panel adopted the district court’s split assessment: Miracle-Gro’s trade dress had meaningful commercial strength due to long-term promotion, but modest conceptual strength because green/yellow packaging is common in lawn-and-garden products. Relying on Maker's Mark Distillery, Inc. v. Diageo N. Am. and Kibler v. Hall, the court rejected Scotts’s attempt to make commercial success alone determinative. Progressive Distrib. Servs. v. UPS, Inc. supplied the logic for why third-party prevalence reduces source-identifying power: common visuals signal category, not origin.

C. Similarity: holistic comparison is permissible; marketplace memory is the touchstone

Scotts argued the district court committed legal error by engaging in an improper side-by-side comparison. The panel distinguished between forbidden “minute parsing” (Innovation Ventures, LLC v. N2G Distrib., Inc.) and permissible, even preferred, direct package comparison to evaluate overall impression (Gray v. Meijer, Inc.). Critically, the district court articulated the correct “imperfect recollection” standard (quoting Maker's Mark Distillery, Inc. v. Diageo N. Am.) and found that differences in size/shape, color shades, and graphics created distinct overall impressions.

On the factual dispute about color-band ratio, the panel found no clear error: Scotts’s own registration described a one-third green/two-thirds yellow scheme, and Scotts’s expert repeatedly testified that the typical Miracle-Gro presentation follows that ratio. The panel’s reasoning also carried an implicit doctrinal consequence: when a plaintiff relies on specific proportions to distinguish itself from third-party use, it becomes harder to later argue proportions are irrelevant to similarity.

D. Relatedness: “somewhat related” goods do not automatically create confusion

Using the Homeowners Grp., Inc. v. Home Mktg. Specialists taxonomy as operationalized in Kellogg Co. v. Toucan Golf, Inc., the panel upheld the district court’s classification: plant food and non-selective herbicide occupy the same broad retail space but are not direct substitutes. That categorization did not affirmatively increase or decrease confusion by itself, making similarity/strength and other factors decisive.

E. Dilution: the court avoids deciding whether Autozone’s heightened similarity survives, but holds “high dissimilarity” defeats likelihood at this stage

The pivotal doctrinal move is narrow but important. Scotts attacked the district court’s reliance on Autozone, Inc. v. Tandy Corp. on the ground that the TDRA displaced any heightened similarity requirement and replaced it with a multifactor inquiry in 15 U.S.C. § 1125(c)(2)(B). The panel declined to resolve that intra-circuit tension. Instead, it assumed (without deciding) that no heightened similarity applies and still affirmed because:

  • The statutory definition of dilution by blurring requires an “association arising from the similarity” between the junior and famous marks.
  • As emphasized in Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., similarity is the “necessary predicate” for dilution analysis.
  • The district court’s “highly dissimilar” finding—reached under the less stringent confusion standard—left insufficient similarity to support likely blurring or tarnishment on a preliminary record.

The panel further insulated the judgment by applying a harmless-error rationale: unlike the error in Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., the district court’s analysis here was not “permeated” by an impermissible “identical or nearly identical” threshold; it rested on the infringement similarity analysis already applying the ordinary overall-impression approach.

3.3 Impact

  • Practical rule for preliminary injunctions in dilution cases: In the Sixth Circuit, even amid uncertainty about Autozone, Inc. v. Tandy Corp. after the TDRA, a well-supported finding that packaging/trade dress is “highly dissimilar” can be sufficient to deny preliminary injunctive relief on dilution because similarity remains a prerequisite.
  • Strength factor clarified for trade dress: The opinion reinforces that robust marketing spend and sales (commercial strength) does not automatically yield a “strong” mark if the visual vocabulary is common in the category (weak conceptual strength), especially where third-party use is widespread (Progressive Distrib. Servs. v. UPS, Inc.).
  • Similarity analysis guidance: Litigants should expect courts to look at packaging directly. The key is not whether a judge visually compares exhibits, but whether the court evaluates the “overall impression” and consumer memory rather than litigating microscopic differences (Gray v. Meijer, Inc.; Innovation Ventures, LLC v. N2G Distrib., Inc.).
  • Trade-dress definition discipline: Plaintiffs asserting common-law trade dress broader than a registration must manage internal consistency. Reliance on a “typical” proportion or layout as a differentiator can become a double-edged sword when confronting defendants who depart from that proportion.

4. Complex Concepts Simplified

  • Trade dress: The overall look-and-feel of product packaging (colors, shapes, graphics, layout) that can identify a product’s source, even without words.
  • Conceptual vs. commercial strength: “Conceptual” asks how inherently distinctive the look is (is it unique or common in the industry?). “Commercial” asks whether consumers have learned to connect that look with one source (often through sales, advertising, and duration of use).
  • Likelihood of confusion (Frisch factors): A multi-factor, real-world prediction about whether consumers are likely to think the defendant’s product comes from, is sponsored by, or is affiliated with the plaintiff.
  • Dilution by blurring vs. tarnishment: Blurring weakens a famous mark’s uniqueness through association (even if no one is “confused”). Tarnishment harms a famous mark’s reputation through negative association.
  • TDRA’s “degree of similarity” factor: The statute lists similarity as one factor among others, but similarity still must exist to create the required “association arising from the similarity.”
  • Harmless error: Even if a court states an incorrect legal standard, an appellate court can affirm if the outcome would be the same under the correct standard and the incorrect standard did not drive the analysis.

5. Conclusion

The Sixth Circuit’s decision affirms a denial of preliminary injunctive relief where the plaintiff’s trade dress showed strong marketplace presence but limited conceptual distinctiveness in a crowded color scheme, and where the challenged packaging created a materially different overall visual impression. Most notably, the court signaled a pragmatic, threshold-like reality for dilution at the preliminary-injunction stage: regardless of post-TDRA debates over how much similarity is “enough,” a finding of “high” dissimilarity can defeat a dilution bid because similarity remains the predicate for any blurring or tarnishment theory.