Terracycle is going to be mistaken for Scotts Miracle-Gro like Betty White is going to be mistaken for Shaquille O'Neill.
Yet, the big company is suing the very little company claiming consumers will mix up the two bottles. Uh...huh! Here's the story from the website Terracycle put up, suedbyscotts.com:
The Scotts Miracle-Gro Company, a $2.2 billion assets giant which has at least a 59% share of the relevant market, has sued tiny TerraCycle, Inc., an inner-city company founded by college students to create an eco-friendly business. TerraCycle manufactures all-natural garden products by feeding organic waste to worms and bottling the resulting worm poop compost tea as ready-to use plant food in soda bottles collected by schools and other charities across North America. TerraCycle is located in the Urban Enterprise Zone of Trenton, New Jersey.
Scotts claims that the two companies' products look similar and will confuse customers because some TerraCycle plant foods have a green and yellow label with a circle and a picture of flowers and vegetables on it.
Yeah, right...like the Terracycle bottle that has the big cartoon lettering, "WORM POOP" at the top. Which makes me want to buy it immediately, despite the fact that I try to avoid getting close to nature (even the kind in my yard) at all cost, and get itchy when I'm too far from concrete for more than five minutes.
Scotts also objects that TerraCycle says its plant food is as good or better than "a leading synthetic plant food" and is refusing Scotts' demands that TerraCycle hand over its scientific tests conducted at the Rutgers University EcoComplex to Scotts' scientists and lawyers. Scotts refuses to turn its tests over to TerraCycle.
TerraCycle's Answer with Affirmative Defenses and Counterclaims has denied Scotts’ claims that TerraCycle’s advertising is untrue or that consumers will be confused by TerraCycle packaging. TerraCycle alleges that Scotts' trademark and trade dress claims are being used to maintain its monopoly power when it already has a market share estimated to be between 59% and 85% in published reports. TerraCycle alleges that Scotts has abandoned, misused and/or mutilated its green and yellow box trademark registration and should therefore be cancelled and that Scotts’ claims are barred by the doctrine of unclean hands (Amy: I just love these legal terms!).
TerraCycle's filing includes examples of numerous competitive garden products packaged in green and yellow and of Miracle-Gro®'s use of other color schemes in its packaging.
More about the suit at the site.
P.S. Got any really old packages of Miracle-Gro laying around? They write at the Terracycle site:
We need evidence (in color, indicating the source and date) that companies other than Miracle-Gro sold plant food or other fertilizer products in packages which were predominantly green and yellow in the period from January 1, 1990 to April 1, 1996. This would include Scotts' products before the two companies merged on May 19, 1995. Possible sources: advertisements in old gardening magazines, books and catalogs; state Department of Agriculture fertilizer registration label files.
If you don't like litigious bullies and want to help in some way, there's more information on how to do that at the link above. At the very least, pass the word on, pass the link on, and/or blog it yourself!
Posted by aalkon at May 24, 2007 9:56 AM
Not defending what Scotts is doing on its face, but only trying to explain its strategy:
In trademark law, it's been established that in order to retain the full effect of your trademark protection, you have to vigorously defend ALL potential infringements, no matter how trivial. Regardless of how ridiculous this action looks, and how much bad PR Scotts picks up because of it, if it didn't bring action, it would be easier for the next (legitimate) infringer to claim that Scotts didn't do all it could to protect the trademark.
Silly, but that's the way it operates. Of course, the final result (as with much litigation) is that the lawyers just get richer, sometimes on the backs of good causes like Terracycle. It'll be this way as long as we have lawyers making the rules for lawyers.
Posted by: cpabroker at May 24, 2007 6:35 AM
I actually understand the need to defend trademarks, but I have a package of Ortho Snail Killer here and it's yellow and green. Perhaps Ortho is too big a trademark violator for them to go after?
Posted by: Amy Alkon at May 24, 2007 6:45 AM
Yeah, strange how that works. Just like the mere threat of litigation is often enough to force one's rival to capitulate, the threat of a rival with deep pockets can be enough to discourage litigation.
I wouldn't be surprised if Scotts is using Terracycle as a test case to bolster its trademark bona fides, knowing that there's no risk there of messy counter-actions, etc., as there might be by going after Ortho.
Not fair, but it's the way the game is played.
Posted by: cpabroker at May 24, 2007 7:21 AM
Vigoro is at least smart enough to use yellow and green packaging instead of green and yellow packaging.
Thanks for turning me on to terracycle. I'm too lazy of a gardener to wait the 24 hours that would be required to make my own compost tea.
Posted by: smurfy at May 24, 2007 10:43 AM
Here's a link to TerraCycle's appearance on BBC World News regarding the lawsuit with Scotts Miracle-Gro.. check it out!
Posted by: TerraCycle at June 12, 2007 7:42 AM
Thanks so much. Good luck...I was the one who sent the link to Overlawyered.
Here's the link:
Posted by: Amy Alkon at June 12, 2007 8:04 AM
hey guys, check out this awesome story BBC World News did about TerraCycle and the current lawsuit with Scott's.
Posted by: Terracycle at June 12, 2007 8:35 AM
Scotts and TerraCycle settled the case. TerraCycle admits that it doesn't work as well as Miracle-Gro. I'm shocked!!!
Posted by: Mike at September 23, 2007 6:18 PM