throbber
Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 1 of 34 PAGEID #: 1
`
`UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF OHIO
`EASTERN DIVISION
`
`
`
`THE SCOTTS COMPANY LLC, and
`OMS INVESTMENTS, INC.,
`
`
`
`
`
`
`Plaintiffs,
`
`v.
`
`
`GTX TURF FARMS LP, ANDREW
`TOBIAS, and BRYAN FOSTER,
`
`
`
`
`Defendants.
`
`Case No. 2:22-cv-538
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`COMPLAINT
`
`Plaintiffs, The Scotts Company LLC and OMS Investments, Inc. (collectively
`
`“ScottsMiracle-Gro” or “Plaintiffs”), for their Complaint against Defendants, GTX Turf Farms
`
`LP, Andrew Tobias, and Bryan Foster (collectively “Defendants”), allege and states as follows:
`
`Nature of the Case
`
`1.
`
`Headquartered in central Ohio for over 150 years, ScottsMiracle-Gro is the world’s
`
`largest marketer of branded consumer lawn and garden products. ScottsMiracle-Gro has developed
`
`and owns some of the industry’s most widely recognized brands including its famous MIRACLE-
`
`GRO mark and ALL-IN-ONE PARTICLES mark. ScottsMiracle-Gro has extensively used its
`
`famous, registered, and incontestable MIRACLE-GRO mark on and in connection with consumer
`
`lawn and garden products for over seventy years. ScottsMiracle-Gro has also extensively used its
`
`well-known, registered, and incontestable ALL-IN-ONE PARTICLES mark in connection with
`
`lawn care products containing fertilizer for over twenty years.
`
`2.
`
`Defendants directly compete against ScottsMiracle-Gro in the manufacture,
`
`distribution, promotion and sale of lawn care products, and manufacture and sell grass seed and
`
`
`
`1
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 2 of 34 PAGEID #: 2
`
`lawn fertilizer products under the MIRACLE GRASS, GROTRAX, and ALL IN ONE marks.
`
`Defendants market and sell products bearing the MIRACLE GRASS, GROTRAX and ALL IN
`
`ONE marks at various retail outlets, including the same retail outlets where ScottsMiracle-Gro
`
`markets and sells its products under the MIRACLE-GRO and ALL-IN-ONE PARTICLES marks.
`
`3.
`
`As detailed below, Defendants’ conduct constitutes infringement and dilution of
`
`ScottsMiracle-Gro’s trademark rights and unfair competition. Defendants’ unlawful conduct is
`
`knowing, intentional, and designed to trade on the reputation and goodwill that ScottsMiracle-Gro
`
`has developed through years of successful promotion and sales of its superior products and on the
`
`reputation of Scotts’ MIRACLE-GRO, GRO, GRO-formative, and ALL-IN-ONE PARTICLES
`
`marks here at issue.
`
`4.
`
`ScottsMiracle-Gro has been, and is likely to continue to be, injured by Defendants’
`
`unlawful conduct, and will suffer irreparable harm unless and until Defendants are enjoined from
`
`using the MIRACLE GRASS, GROTRAX and ALL IN ONE marks in connection with
`
`Defendants’ products in the United States.
`
`The Parties
`
`5.
`
`The Scotts Company LLC is an Ohio limited liability company with its principal
`
`place of business at 14111 Scottslawn Road, Marysville, Ohio 43041, and is the licensee of various
`
`intellectual property assets owned by OMS Investments, Inc., including the MIRACLE-GRO
`
`Marks and ALL-IN-ONE PARTICLES marks that are being willfully infringed by Defendants.
`
`6.
`
`OMS Investments is a Delaware corporation with an office at 10250 Constellation
`
`Blvd., Suite 2800, Los Angeles, California, 90067, and is an affiliate of the The Scotts Company,
`
`LLC.
`
`
`
`2
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 3 of 34 PAGEID #: 3
`
`7.
`
`Defendant GTX Turf Farms LP (“GTX”) is a Delaware limited partnership with a
`
`place of business as 99 Aero Camino, Unit # B, Goleta, California 93117.
`
`8.
`
`Defendant Andrew Tobias is a California resident who resides at 121 W De La
`
`Guerra Street, Suite A, Santa Barbara, California 93101, and upon information and belief, is a
`
`partner in GTX.
`
`9.
`
`Defendant Bryan Foster is a California resident who resides at 121 W De La Guerra
`
`St, Suite A, Santa Barbara, California 93101, and upon information and belief, is a partner in GTX.
`
`10.
`
`On information and belief, Defendants, through their agents, representatives, or
`
`affiliates, have done, and are doing, business in the Southern District of Ohio, and have engaged
`
`in acts and/or omissions within this District. The foregoing acts and/or omissions are causing
`
`ScottsMiracle-Gro to suffer injury, including but not limited to injury within this District.
`
`Jurisdiction and Venue
`
`11.
`
`This Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. §
`
`1121 and 28 U.S.C. §§ 1331, 1332, 1338(a)-(b), and 1367.
`
`12.
`
`This Court has subject matter jurisdiction over Counts I, II, VIII, and IX of this
`
`Complaint pursuant to 28 U.S.C. §§ 1331 and 1338(a) because these counts present a Federal
`
`question under the following provisions of the United States Code:
`
`a. Counts I and VII (Trademark Infringement) - 15 U.S.C. § 1114;
`
`b. Counts II and VIII (Federal Unfair Competition) - 15 U.S.C. § 1125(a);
`
`c. Count III (Federal Trademark Dilution) - 15 U.S.C. § 1125(c); and
`
`d. Count VI (Cancellation of United States Registration) - 15 U.S.C. § 1119.
`
`13.
`
`This Court has supplemental jurisdiction over the remaining Counts pursuant to 28
`
`U.S.C. § 1367 because they form part of the same case or controversy as Scotts’ federal claims.
`
`
`
`3
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 4 of 34 PAGEID #: 4
`
`14.
`
`This Court has personal jurisdiction over Defendants under Ohio Revised Code §
`
`2307.382 because, among other things, Defendants transact business in Ohio, contract to supply
`
`goods in Ohio, and have caused tortious injury by acts in Ohio. Defendants ship goods bearing the
`
`infringing MIRACLE GRASS, GROTRAX, and ALL-IN-ONE marks throughout the United
`
`States and to stores located in this District with the expectation that products will be sold in this
`
`District. By distributing and selling their infringing products in Ohio and this District, Defendants
`
`purposefully direct activities in this District that relate to and give rise to the claims alleged in this
`
`Complaint.
`
`15.
`
`Venue is proper in this District pursuant to 28 U.S.C. § 1391 and Local Rule 82.1
`
`because a substantial part of the events giving rise to ScottsMiracle-Gro’s claims occurred in this
`
`District and Defendants are subject to personal jurisdiction in this District.
`
`Background Facts
`
`ScottsMiracle-Gro’s Famous MIRACLE-GRO Mark and Products
`
`16.
`
`Throughout its over 150 year history, ScottsMiracle-Gro has become the world’s
`
`largest marketer of branded consumer lawn and garden products, and has developed and
`
`maintained a national reputation for high quality lawn and garden products. ScottsMiracle-Gro
`
`owns some of the industry’s most widely recognized brands including its famous MIRACLE-GRO
`
`mark.
`
`17.
`
`ScottsMiracle-Gro has been, and is now, extensively engaged in the business of
`
`marketing and selling in United States commerce various lawn and garden goods and services
`
`(collectively the “MIRACLE-GRO Products”) under the MIRACLE-GRO marks, which include
`
`the MIRACLE-GRO word mark, MIRACLE-GRO word plus design mark and numerous GRO
`
`and GRO-formative marks.
`
`
`
`4
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 5 of 34 PAGEID #: 5
`
`18.
`
`ScottsMiracle-Gro, through its predecessors-in-interest, first used the MIRACLE-
`
`GRO word mark in United States interstate commerce in connection with the MIRACLE-GRO
`
`Products at least as early as 1951, and has used the mark in United States interstate commerce
`
`continuously since that date.
`
`19.
`
`ScottsMiracle-Gro advertises and sells the MIRACLE-GRO Products under the
`
`MIRACLE-GRO marks throughout the United States, including in retail stores in this judicial
`
`district. ScottsMiracle-Gro also markets the MIRACLE-GRO Products under the MIRACLE-
`
`GRO marks throughout the United States via the Internet, including on its websites accessible at
`
`www.miraclegro.com, www.scotts.com,
`
`and www.scottsmiraclegro.com
`
`and
`
`through
`
`Amazon.com.
`
`20.
`
`ScottsMiracle-Gro also heavily markets the MIRACLE-GRO Products under the
`
`MIRACLE-GRO marks on social media platforms including the following:
`
`Facebook (https://www.facebook.com/MiracleGro/)
`
`Instagram (https://www.instagram.com/miraclegro)
`
`YouTube (https://www.youtube.com/user/MiracleGroGardens)
`
`Pinterest (https://www.pinterest.com/miraclegro/)
`
`Twitter (https://twitter.com/miraclegro).
`
`21.
`
`ScottsMiracle-Gro has invested extraordinary resources developing, advertising,
`
`promoting and marketing the MIRACLE-GRO Products under the MIRACLE-GRO marks
`
`throughout the United States and establishing the marks in the minds of consumers as the source
`
`of high-quality goods offered by ScottsMiracle-Gro. As a result, and in addition to its registered
`
`rights described below, ScottsMiracle-Gro enjoys extremely strong common law trademark rights
`
`in the MIRACLE-GRO marks, embodying invaluable goodwill.
`
`
`
`5
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 6 of 34 PAGEID #: 6
`
`22.
`
`ScottsMiracle-Gro prominently and extensively uses the MIRACLE-GRO marks
`
`directly on packaging for the MIRACLE-GRO Products and in nationwide advertising and
`
`promotional materials for the Products, including but not limited to television, print
`
`advertisements, brochures, and the Internet.
`
`23.
`
`The MIRACLE-GRO marks are inherently distinctive, and have become favorably
`
`known among consumers as used in connection with the MIRACLE-GRO Products, and have
`
`become an invaluable symbol of the source of goods bearing the MIRACLE-GRO marks, of the
`
`high quality of goods bearing the marks, and of the goodwill associated with the marks.
`
`24.
`
`As a result of ScottsMiracle-Gro’s extensive investment in the MIRACLE-GRO
`
`marks, as well as widespread publicity and recognition, the MIRACLE-GRO marks are famous
`
`under Section 43(a) of the Lanham Act, U.S.C. § 1125(c).
`
`25.
`
`In addition to ScottsMiracle-Gro’s extensive and longstanding common law
`
`trademark rights in the MIRACLE-GRO marks, OMS Investments, Inc. owns the following United
`
`States Federal trademark registrations for the marks, among others (the “Registered MIRACLE-
`
`GRO Marks”) (common law and registered MIRACLE-GRO, GRO and GRO-formative
`
`trademarks collectively referred to hereinafter as “MIRACLE-GRO Marks”):
`
`Trademark
`
`MIRACLE-GRO
`
`MIRACLE-GRO
`
`MIRACLE-GRO
`POUR & FEED
`
`Application
`Number
`(Application
`Date)
`
`72/046,856
`2/28/1958
`
`73/283,281
`10/24/1980
`
`75/751,306
`6/29/1999
`
`Registration
`Number
`(Registration
`Date)
`
`668,868
`10/28/1958
`
`1,223,038
`1/11/1983
`
`2,601,682
`7/30/2002
`
`Goods
`
`Int’l Class 1: Water soluble plant food
`
`Int’l Class 1: Fertilizer in the form of
`spikes for trees and shrubs
`
`Int’l Class 1: Fertilizer for home and
`garden use
`
`
`
`6
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 7 of 34 PAGEID #: 7
`
`Trademark
`
`MIRACLE-GRO
`GARDEN WEED
`PREVENTER
`
`Application
`Number
`(Application
`Date)
`
`76/027,638
`4/14/2000
`
`Registration
`Number
`(Registration
`Date)
`
`2,618,699
`9/10/2002
`
`76/496,455
`3/4/2003
`
`2,820,953
`3/9/2004
`
`
`
`
`
`
`
`76/496,458
`3/4/2003
`
`2,822,655
`3/16/2004
`
`76/496,457
`3/4/2003
`
`3,233,837
`4/24/2007
`
`
`
`7
`
`Goods
`
`Int’l Class 1: Fertilizers for domestic use
`
`Int’l Class 5: Herbicides for domestic
`use
`
`Int’l Class 1: Fertilizers for domestic
`use; plant food; garden soil; potting mix;
`seed starter mix for domestic use; root
`stimulating hormone that converts plant
`cells to stem cells
`
`Int’l Class 1: Herbicides for domestic
`use
`
`Int’l Class 21: Garden feeders, namely
`containers designed to hold plant food
`and are used to feed and water plants
`
`Int’l Class 31: Sphagnum peat moss
`
`Int’l Class 1: Fertilizers for domestic
`use; plant food; garden soil; potting mix;
`seed starter mix for domestic use; root
`stimulating hormone that converts plant
`cells to stem cells
`
`Int’l Class 5: Herbicides for domestic
`use
`
`Int’l Class 21: Garden feeders, namely
`containers designed to hold plant food
`and are used to feed and water plants
`
`Int’l Class 31: Sphagnum peat moss
`
`Int’l Class 1: Charcoal for horticultural
`purposes and for use as a soil
`conditioner; perlite for horticultural
`purposes and for use as a soil conditioner
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 8 of 34 PAGEID #: 8
`
`Trademark
`
`MIRACLE-GRO
`
`EXPAND 'N
`GRO
`
`Application
`Number
`(Application
`Date)
`
`77/775,762
`7/7/2009
`
`77/907,119
`1/7/2010
`
`Registration
`Number
`(Registration
`Date)
`
`4,026,583
`9/13/2011
`
`4,049,881
`11/1/2011
`
`MIRACLE-GRO
`
`85/688,831
`7/27/2012
`
`4,289,146
`2/12/2013
`
`MIRACLE-GRO
`
`85/679,456
`7/17/2012
`
`4,301,017
`3/12/2013
`
`MIRACLE-GRO
`
`85/688,870
`7/27/2012
`
`4,301,405
`3/12/2013
`
`85/688,948
`7/27/2012
`
`4,301,406
`3/12/2013
`
`85/689,170
`7/27/2012
`
`4,301,408
`3/12/2013
`
`
`
`
`
`GRO ABLES
`
`85/979,126
`1/9/2012
`
`4,348,201
`6/4/2013
`
`
`
`8
`
`Goods
`
`Int’l Class 31: Flower, vegetable and
`plant seeds for domestic use
`
`Int’l Class 1: Potting soil; planting soil;
`growing media for plants; soil
`amendments and conditioners; plant
`food; fertilizers
`
`Int’l Class 21: Fertilizer and plant food
`mixers and sprayers attached to garden
`hoses; pots for plants and flowers;
`containers for plants and flowers
`
`Int’l Class 1: Fertilizer, growing media
`for plants, soil conditioners for domestic
`and horticultural use, soil amendments,
`garden soil, planting soil, potting soil,
`potting mix, root stimulating hormone
`for plants, leaf shine
`
`Int’l Class 31: Live plants; peat moss;
`planting and gardening kits for indoor
`and outdoor planting comprised
`primarily of pots and growing containers
`and growing media and also including
`seeds for fruit, seeds for vegetables,
`seeds for herbs, seeds for flowers, and
`live plants, soil, mulch and fertilizer
`
`Int’l Class 1: Growing media for plants,
`soil amendments, soil conditioners for
`domestic and horticultural use, planting
`soil, potting soil, leaf shine
`
`Int’l Class 1: Growing media for plants,
`soil amendments, soil conditioners for
`domestic and horticultural use, planting
`soil, potting soil, leaf shine
`
`Int’l Class 21: Biodegradable pots and
`household containers for plants and
`seeds; planting and gardening kits
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 9 of 34 PAGEID #: 9
`
`Trademark
`
`Application
`Number
`(Application
`Date)
`
`Registration
`Number
`(Registration
`Date)
`
`Goods
`
`comprised primarily of pots and
`household containers for plants and
`seeds and also including seeds, plants,
`growing media, soil, and fertilizer
`
`Int’l Class 31: Planting and gardening
`kits comprised primarily of seeds for
`vegetables, seeds for herbs, and also
`including growing media, soil, mulch,
`fertilizer, and pots and containers;
`mulch, seeds, namely, seeds for
`vegetables, seeds for herbs; gardening
`kits for indoor and outdoor planting
`comprised primarily of seeds for
`vegetables, seeds for herbs, and also
`including growing media, soil, mulch
`and fertilizer
`
`Int’l Class 21: Pots for plants and
`flowers; containers for plants and
`flowers
`
`Int’l Class 11: Gardening appliance
`systems for hydroponic and horticultural
`propagation systems for use in growing
`plants, namely, gardening irrigation
`systems comprising environmentally
`controlled chambers capable of
`providing water, plant nutrients, and
`light
`
`Int’l Class 6: Plant supports and related
`accessories for lawn and garden use,
`namely, metal poles, metal stakes, metal
`hoops, metal rings
`
`Int’l Class 20: Plant supports and related
`accessories for lawn and garden use,
`namely, non-metal stakes, non-metal
`poles, non-metal hoops, non-metal rings
`
`GRO ABLES
`
`85/979,156
`1/9/2012
`
`4,348,204
`6/4/2013
`
`85/980,284
`8/7/2012
`
`4,462,833
`1/7/2014
`
`85/981,788
`4/17/2013
`
`4,540,389
`5/27/2014
`
`85/982,313
`1/28/2013
`
`4,606,783
`9/16/2014
`
`
`
`
`
`
`
`
`
`9
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 10 of 34 PAGEID #: 10
`
`Trademark
`
`Application
`Number
`(Application
`Date)
`
`Registration
`Number
`(Registration
`Date)
`
`Goods
`
`MIRACLE-GRO
`
`85/982,327
`1/28/2013
`
`4,606,786
`9/16/2014
`
`85/983,171
`12/12/2012
`
`4,717,153
`4/7/2015
`
`
`
`MIRACLE-GRO
`
`85/983,504
`12/12/2012
`
`4,717,173
`4/7/2015
`
`
`Int’l Class 22: Plant supports and related
`accessories for lawn and garden use,
`namely, plastic, jute, soft wire, nylon
`ties, twine
`
`Int’l Class 6: Plant supports and related
`accessories for lawn and garden use,
`namely, metal poles, metal stakes, metal
`hoops, metal rings
`
`Int’l Class 20: Plant supports and related
`accessories for lawn and garden use,
`namely, non-metal stakes, non-metal
`poles, non-metal hoops, non-metal rings
`
`Int’l Class 22: Plant supports and related
`accessories for lawn and garden use,
`namely, plastic, jute, soft wire, and nylon
`ties, twine
`
`Int’l Class 8: Non-powered lawn and
`garden tools and equipment, namely
`shears, cultivators, pruners, hedge
`trimmers, saws, loppers, garden scissors,
`trowels, hori hori knives, snips,
`transplanters, weeders, scoopers
`
`Int’l Class 8: Non-powered lawn and
`garden tools and equipment, namely
`shears, cultivators, pruners, hedge
`trimmers, saws, loppers, garden scissors,
`trowels, hori hori knives, snips,
`transplanters, weeders, scoopers
`
`85/833,618
`1/24/2013
`
`5,054,888
`10/4/2016
`
`Int’l Class 9: Watering accessories,
`namely watering timers
`
`
`
`
`
`10
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 11 of 34 PAGEID #: 11
`
`Trademark
`
`Application
`Number
`(Application
`Date)
`
`85/833,632
`1/28/2013
`
`Registration
`Number
`(Registration
`Date)
`
`Goods
`
`5,054,889
`10/4/2016
`
`Int’l Class 19: Non-metal fencing for
`lawn and garden use
`
`87/976,280
`8/9/2016
`
`5,366,525
`12/26/2017
`
`
`
`
`
`GRO
`
`87/977,099
`8/3/2017
`
`5,466,430
`5/8/2018
`
`Int’l Class 21: Watering accessories,
`namely, hose nozzles, sprayer wands for
`garden hoses, and replacement parts and
`fittings therefor, in the nature of
`couplings and fittings, and spigot
`extension products
`
`Int’l Class 9: Electronic irrigation
`controllers; electronic sensors for
`irrigation uses; electronic sensors
`connectable to electronic irrigation
`controllers; electronic controllers and
`sensors for irrigation, and sprinkler uses
`and systems; electronic weather
`measurement sensors; sensors for
`monitoring temperature, humidity,
`moisture and sunlight; electronic plant
`moisture sensors; downloadable
`computer software applications in the
`nature of mobile applications allowing
`users to remotely monitor, control, and
`receive updates and notifications from
`computer hardware devices; electronic
`apparatus, computer firmware, and
`computer software, all for use in
`accessing, monitoring and controlling
`domestic, commercial and horticultural
`irrigation systems and moisture sensors.
`
`Int’l 11: Sprinklers; non-metal drip
`irrigation systems for lawn and garden
`use.
`
`
`
`11
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 12 of 34 PAGEID #: 12
`
`Trademark
`
`
`
`EARTHGRO
`
`EARTHGRO
`
`Application
`Number
`(Application
`Date)
`
`86/984,135
`2/19/2015
`
`Registration
`Number
`(Registration
`Date)
`
`5,586,670
`10/16/2018
`
`73/548,581
`7/17/1985
`
`73/548,582
`7/17/1985
`
`1,378,337
`1/14/1986
`
`1,378,721
`1/21/1986
`
`74/248,033
`2/20/1992
`
`1,723,116
`10/13/1992
`
`Goods
`
`Int’l Class 21: Raised garden beds,
`namely, raised containers for planting
`contained gardens
`
`Int’l Class 31: top soil and peat humus
`
`Int’l Class 1: cow manure, composted
`cow manure, dehydrated cow manure,
`potting soil
`
`Int’l Class 1: natural organic and mineral
`fertilizer for lawn and garden use, cow
`manure, composted cow manure,
`dehydrated cow manure, potting soil and
`humus
`
`
`
`
`
`74/248,367
`2/21/1992
`
`1,726,060
`10/13/1992
`
`Int’l Class 31: top soil
`
`EARTHGRO
`
`87/660,692
`10/26/2017
`
`5,547,463
`8/21/2018
`
`Int’l Class 2: colorants for use on mulch
`
`Int’l Class 31: mulch
`
`26.
`
`These registrations are valid, subsisting, and in full force and effect. True and
`
`correct copies of documents retrieved from the United States Patent and Trademark Office’s online
`
`Trademark Status & Document Retrieval database (“TSDR”) evidencing the current status and
`
`OMS Investments, Inc.’s ownership of the Registered MIRACLE-GRO Marks are attached hereto
`
`as Exhibit A.
`
`27.
`
`Notably, United States Trademark Registration Nos. 668,868; 1,223,038;
`
`1,378,337; 1,378,721; 1,723,116; 1,726,060; 2,601,682; 2,618,699; 2,820,953; 2,822,655;
`
`3,233,837; 4,026,583; 4,289,146; 4,301,408; 4,301,017; 4,301,405; 4,301,406; and 4,348,204 have
`
`
`
`12
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 13 of 34 PAGEID #: 13
`
`achieved incontestable status pursuant to 15 U.S.C. § 1065. Accordingly, these registrations
`
`provide conclusive evidence of the validity of the registered MIRACLE-GRO marks, OMS
`
`Investments, Inc.’s ownership of the registered trademarks, and OMS Investments, Inc.’s exclusive
`
`right to use the registered trademarks in connection with the goods specified in the certificates of
`
`registration for the trademarks. 15 U.S.C. § 1115(b).
`
`28.
`
`In addition to ScottsMiracle-Gro’s common law trademark rights based on its 1951
`
`first use of the MIRACLE-GRO mark in United States interstate commerce, ScottsMiracle-Gro
`
`has a presumption of nationwide exclusive rights to use the MIRACLE-GRO mark dating back
`
`more than sixty years, to October 28, 1958, the registration date of United States Trademark
`
`Registration No. 668,868. 15 U.S.C. §§ 1057(b) and 1072.
`
`ScottsMiracle-Gro’s ALL-IN-ONE PARTICLES Products and Trademark
`
`29.
`
`ScottsMiracle-Gro has been, and is now, extensively engaged in the business of
`
`manufacturing, marketing and selling, in interstate commerce, lawn care products containing
`
`fertilizer under the ALL-IN-ONE PARTICLES trademark.
`
`30.
`
`ScottsMiracle-Gro first used the ALL-IN-ONE PARTICLES mark in United States
`
`interstate commerce in connection with ScottsMiracle-Gro’s products at least as early as
`
`September 8, 1999 and has used the mark in United States interstate commerce continuously since
`
`that date.
`
`31.
`
`ScottsMiracle-Gro advertises and sells its products under the ALL-IN-ONE
`
`PARTICLES mark throughout the United States, including in retail stores in this District.
`
`ScottsMiracle-Gro also markets its products under the ALL-IN-ONE PARTICLES mark
`
`throughout
`
`the United States via
`
`the
`
`Internet,
`
`including
`
`through
`
`its website at
`
`https://www.scotts.com.
`
`
`
`13
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 14 of 34 PAGEID #: 14
`
`32.
`
`ScottsMiracle-Gro has invested substantial resources developing, advertising,
`
`promoting and marketing its products under the ALL-IN-ONE PARTICLES mark throughout the
`
`United States and establishing the mark in the minds of consumers as a source indicator of the
`
`high-quality goods offered by ScottsMiracle-Gro. As a result, ScottsMiracle-Gro enjoys extremely
`
`strong common law trademark rights in the ALL-IN-ONE PARTICLES mark, embodying
`
`invaluable goodwill.
`
`33.
`
`ScottsMiracle-Gro prominently uses the ALL-IN-ONE PARTICLES mark directly
`
`on packaging for its products and in nationwide advertising and promotional materials for the
`
`products, including but not limited to print advertisements, brochures, and the Internet.
`
`34.
`
`ScottsMiracle-Gro’s ALL-IN-ONE PARTICLES mark is inherently distinctive. In
`
`addition, ScottsMiracle-Gro’s ALL-IN-ONE PARTICLES mark has become favorably known
`
`among consumers as used in connection with ScottsMiracle-Gro’s products, and has become a
`
`valuable symbol of the source of goods bearing the ALL-IN-ONE PARTICLES mark, of the high
`
`quality of goods bearing the mark, and of the goodwill associated with the mark.
`
`35.
`
`In addition to ScottsMiracle-Gro’s common law trademark rights, OMS
`
`Investments, Inc. owns a long-standing federal trademark registration for the ALL-IN-ONE
`
`PARTICLES word mark and a federal trademark registration for a word-plus-design mark as
`
`identified below:
`
`Mark
`
`Registration No. &
`Date
`
`
`ALL-IN-ONE
`PARTICLES
`
`2,459,228
`June 12, 2001
`
`
`
`Goods
`
`Int’l Class 01: fertilizers for
`domestic and commercial use
`
`Date of First
`Use
`
`September 8,
`1999
`
`
`14
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 15 of 34 PAGEID #: 15
`
`Mark
`
`ALL-IN-ONE
`PARTICLES and
`Design
`
`
`Registration No. &
`Date
`
`
`Date of First
`Use
`
`5,851,560
`
`May 31, 2018
`
`Goods
`
`Int’l Class 01: fertilizers for
`domestic and commercial use
`
`36.
`
`True and correct copies of documents retrieved from the United States Patent and
`
`Trademark Office’s online Trademark Status & Document Retrieval database (“TSDR”)
`
`evidencing the current status and OMS Investments, Inc.’s ownership of the United States
`
`Trademark registrations for the ALL-IN-ONE PARTICLES mark are attached as Exhibit B. The
`
`registrations are valid, subsisting, and in full force and effect.
`
`37.
`
`Notably, OMS Investments, Inc.’s United States Trademark Registration No.
`
`2,459,228 for the ALL-IN-ONE PARTICLES mark has achieved incontestable status pursuant to
`
`15 U.S.C. § 1065. Accordingly, the registration constitutes conclusive evidence of the validity of
`
`the registered ALL-IN-ONE PARTICLES mark, OMS Investments, Inc.’s ownership of the
`
`registered trademark, and OMS Investments, Inc.’s exclusive right to use the registered trademark
`
`in connection with the goods specified in the certificate of registration. 15 U.S.C. § 1115(b).
`
`38.
`
`In addition to ScottsMiracle-Gro’s common law rights based on its use of the ALL-
`
`IN-ONE PARTICLES mark in United States interstate commerce, it has a presumption of
`
`nationwide exclusive rights to use the ALL-IN-ONE PARTICLES mark dating back more than
`
`twenty years to October 14, 1999, the registration date of ScottsMiracle-Gro s United States
`
`Trademark Registration for the mark (Reg. No. 2,459,228). 15 U.S.C. §§ 1057(b) and 1072.
`
`
`
`
`
`Defendants’ Infringing Acts
`
`15
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 16 of 34 PAGEID #: 16
`
`39.
`
`Notwithstanding ScottsMiracle-Gro’s nationwide prior common law and registered
`
`trademark rights in its MIRACLE-GRO Marks and the ALL-IN-ONE PARTICLES mark,
`
`Defendants are marketing and selling lawn and garden products (“Defendants’ Products”) under
`
`the MIRACLE GRASS, GROTRAX, and ALL-IN-ONE marks (collectively “Defendants’
`
`Marks”) as depicted below and at Exhibit C.
`
`
`
`40.
`
`Defendants’ products are identical, nearly identical and/or closely related to the
`
`products that ScottsMiracle-Gro marketed and sold well-prior to Defendants’ infringing activities
`
`and that ScottsMiracle-Gro continues to market and sell under the MIRACLE-GRO Marks and
`
`the ALL-IN-ONE PARTICLES mark.
`
`41.
`
`Defendants market and sell Defendants’ Products under Defendants’ Marks in the
`
`same the trade channels through which ScottsMiracle-Gro offers its products under the
`
`MIRACLE-GRO Marks and the ALL-IN-ONE PARTICLES mark, or that are highly similar
`
`thereto, and to consumers that are identical to or that overlap with ScottsMiracle-Gro’s consumers.
`
`
`
`16
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 17 of 34 PAGEID #: 17
`
`42.
`
`Upon information and belief, Defendants are using Defendants’ Marks with actual
`
`and constructive knowledge of ScottsMiracle-Gro’s MIRACLE-GRO Marks and ALL-IN-ONE
`
`PARTICLES mark, and with an intent to capitalize on ScottsMiracle-Gro’s reputation and
`
`goodwill, to confuse and deceive consumers, and to unfairly compete with ScottsMiracle-Gro.
`
`43.
`
`ScottsMiracle-Gro has never authorized,
`
`licensed, or otherwise endorsed
`
`Defendants and/or Defendants’ use of Defendants’ Marks.
`
`44.
`
`Notwithstanding ScottsMiracle-Gro’s prior common law and registered trademark
`
`rights in and to the MIRACLE-GRO Marks Defendants Mr. Tobias and Mr. Foster made the
`
`following trademark filings (collectively the “GROTRAX Filings”) with the United States Patent
`
`and Trademark Office (the “USPTO”):
`
`Application
`Number
`(Application
`Date)
`
`87/589,689
`8/30/2017
`
`88/607,181
`9/6/2019
`
`Trademark
`
`GROTRAX
`
`GROTRAX, THE
`BEST THING TO
`HAPPEN SINCE
`GRASS SEED!
`
`
`GROTRAX, THE
`BEST THING TO
`HAPPEN TO GRASS,
`SINCE GRASS SEED
`
`
`88/943,868
`6/2/2020
`
`Registration
`Number
`(Registration
`Date)
`
`5,587,685
`10/16/2018;
`Cancellation
`proceeding
`pending
`
`Trademark Trial
`and Appeal
`Board sustained
`OMS’
`opposition and
`refused
`registration
`
`Abandoned
`
`Goods
`
`Int’l Class 31: Seed bed units
`consisting of a biodegradable roll
`containing grass seed and a
`tackifying agent
`
`Int’l Class 31: Mixture consisting of
`grass seed, mulch and fertilizer sold
`as a unit to repair lawns
`
`
`Int’l Class 31: Mixture consisting of
`grass seed, mulch and fertilizer sold
`as a unit to repair lawns
`
`
`
`
`
`17
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 18 of 34 PAGEID #: 18
`
`45.
`
`On October 16, 2018, the USPTO issued registration no. 5,587,685 for the
`
`GROTRAX mark that was the subject of Defendants’ application Serial No. 87/589,689 (the
`
`“GROTRAX Registration”).
`
`46.
`
`On June 1, 2020, ScottsMiracle-Gro timely filed with the Trademark Trial and
`
`Appeal Board of the USPTO (the “TTAB”) a Notice of Opposition against the Mr. Tobias’ and
`
`Mr. Foster’s application to register the mark GROTRAX THE BEST THING TO HAPPEN
`
`SINCE GRACE SEED! (Ser. No. 88/607,181) (the “Opposed Application”) on the grounds that
`
`registration of the applied-for mark is likely to cause confusion with and dilute the MIRACLE-
`
`GRO Marks.
`
`47.
`
`On March 25, 2021, Mr. Tobias and Mr. Foster filed with the TTAB a Notice of
`
`Withdrawal of the Opposed Application. Accordingly, on March 29, 2021, because ScottsMiracle-
`
`Gro did not consent to Mr. Tobias’ and Mr. Foster’s withdrawal of the Opposed Application, the
`
`TTAB entered judgment against Mr. Tobias and Mr. Foster, sustained ScottsMiracle-Gro’s
`
`opposition to the Opposed Application, and terminated the opposition proceeding.
`
`48.
`
`On April 21, 2021, ScottsMiracle-Gro filed with the TTAB a Petition to Cancel Mr.
`
`Tobias’ and Mr. Foster’s registration for the GROTRAX mark (Reg. No. 5,587,685) on the
`
`grounds that continued registration of the mark is likely to cause confusion with and dilute the
`
`MIRACLE-GRO Marks.
`
`49.
`
`On August 24, 2021, Mr. Tobias and Mr. Foster recorded a document with the
`
`USPTO that purports to assign their rights to the GROTRAX mark and their registration for the
`
`mark (Reg. No. 5,587,685) to Defendant GTX.
`
`50.
`
`On January 10, 2022, after receiving Plaintiffs’ objections, Defendants failed to file
`
`a Statement of Use or a request for an extension of time to file a Statement of Use in connection
`
`
`
`18
`
`

`

`Case: 2:22-cv-00538-EAS-CMV Doc #: 1 Filed: 02/09/22 Page: 19 of 34 PAGEID #: 19
`
`with application Ser. No. 88/943,868 for the mark GROTRAX, THE BEST THING TO HAPPEN
`
`TO GRASS, SINCE GRASS SEED, and the USPTO issued a Notice of Abandonment for the
`
`application.
`
`51.
`
`Upon information and belief, Defendants’ use of Defendants’ Marks in connection
`
`with the sale and marketing of Defendants’ Products in interstate commerce, including in Ohio in
`
`this Judicial District, has caused, and is likely to cause, confusion, mistake, and deception among
`
`the relevant purchasing public. Consumers and the trade will likely believe that Defendants’
`
`Products are associated with, or connected with, or approved or authorized by ScottsMiracle-Gro,
`
`or that Defendants’ Products originate from the same source as ScottsMiracle-Gro’s products,
`
`when that is not the case.
`
`52.
`
`Defendants’ registration of the GROTRAX mark (Reg. No. 5,587,685) is likely to
`
`cause, confusion, mistake, and deception among the relevant purchasing public. Consumers and
`
`the trade will likely mistakenly believe that Defendants’ Products, including but not limited to the
`
`products recited in the GROTRAX Registration, are associated with, or connected with, or
`
`approved or authorized by ScottsMiracle-Gro, or that Defendants’ Products originate from the
`
`same source as ScottsMiracle-Gro’s products, when that is not the case.
`
`53.
`
`Any such confusion would result in injury and have a direct impact on
`
`ScottsMiracle-Gro’s reputation and its ability to market its own products and services under its
`
`MIRACLE-GRO Marks and ALL-IN-ONE PARTICLES mark.
`
`54.
`
`In addition, any defect, objection, or fault found with Defendants’ Products would
`
`negatively impact and seriously injure the reputation and goo

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