Seattle Trademark Lawyer

The Scotts Company and its parent, OMS Investments, Inc., have settled their trade dress and false advertising dispute with TerraCycle, Inc., the parties announced today. (STL’s May 16 post about the case here.) Scotts sells the MIRACLE-GRO line of plant food; TerraCycle sells plant food under its own name. Both use green and yellow packaging.

TerraCycle will drop its green-and-yellow packaging (left);
Scotts will drop its lawsuit.

As part of the Sept. 15 settlement, Scotts dismissed the case it filed in the District of New Jersey. In exchange, TerraCycle, while not admitting liability, agreed to phase out all use of specified trade dress, any trade dress that is confusingly similar with Scotts’ MIRACLE-GRO trade dress, and any trade dress that is confusingly similar to Scotts’ “green and yellow” trade dress.

TerraCycle also agreed to take down its “Sued by Scotts” Web site within three months. The site received prominent media attention during the litigation, including from the New York Times and Wall Street Journal.

Interestingly, and perhaps disturbingly, the Stipulated Order of Dismissal not only dismisses the case, but it also finds: “The following marks are valid, enforceable, fully subsisting, inherently distinctive, strong, famous and have acquired secondary meaning in the marketplace within the meaning of the Lanham Act, as amended, 15 U.S.C. § 1051 et seq.: (i) the MIRACLE-GRO Trade Dress, as exemplified in Exhibit B hereto; and (ii) the Green and Yellow Trade Dress, subject of Trademark Registration No. 2,139,929, attached as Exhibit C hereto.”

I suppose this seemingly gratuitous language is ok if, in signing the parties’ stipulation, the court really meant to find that Scotts’ trade dress is “valid, enforceable, fully subsisting, inherently distinctive, strong, famous and have acquired secondary meaning.” But if all the court meant to do was dismiss the case, or to find that the parties had agreed between themselves that the subject trade dress was “valid, enforceable, fully subsisting, inherently distinctive, strong, famous and have acquired secondary meaning,” this language is misleading. 

The case cite is OMS Investments, Inc. v. TerraCycle, Inc., No. 07-1064 (D. N.J.).

Full disclosure: I am defending an opposition proceeding brought by OMS Investments, Inc. (though it’s not a trade dress case). Maybe that makes me overly-sensitive. You be the judge.