DECISION AND ORDERINTRODUCTION Plaintiff 199 Delaware Avenue, Inc. (“Plaintiff”) moves for a preliminary injunction prohibiting Defendants Lake Effect Artisan Ice Cream, Lake Effect Ice Cream Hertel LLC, Lake Effect Ice Cream LLC, Lake Effect Ice Cream Wholesale LLC, and Lake Effect Canal Street LLC (collectively “Defendants”) from “[a]dvertising, soliciting, marketing, selling, offering for sale or otherwise using the ‘LAKE EFFECT DINER’ word and design mark, and any confusingly similar variation thereof, including but not limited to ‘LAKE EFFECT ICE CREAM’ and ‘LAKE EFFECT ARTISAN ICE CREAM’ in connection with services for providing food and drink, namely, restaurant, coffee shop service, ice cream shop service, banquet-style serving of food and drinks, and catering and take-out restaurant services during the pendency of this action[.]” (Dkt. 7 at 2). For the reasons discussed below, Plaintiff’s motion is denied.FACTUAL AND PROCEDURAL BACKGROUNDS. Tucker Curtin (“Curtin”) is the owner of Plaintiff. (Dkt. 7-2 at 1). Since December 24, 2002, Plaintiff has been the holder of a fictitious name certificate for the name “Lake Effect Diner.” (Dkt. 7-2 at 2; Dkt. 7-15 at 8). The Lake Effect Diner is located on Main Street in Buffalo, New York, and serves 25 flavors of milkshakes, ice cream, and vegan ice cream, among other food items. (Dkt. 7-2 at
6, 11).On December 19, 2006, Plaintiff registered the service mark for the words “LAKE EFFECT DINER,” in combination with an associated design logo (the “Mark”), on the Principal Register of the United States Patent and Trademark Office (the “USPTO”). (Id. at 15 and Ex. C). On April 13, 2012, the USPTO acknowledged and accepted Plaintiff’s statement of incontestability regarding the Mark. (Dkt. 7-6 at 2).Erik Bernardi (“Bernardi”) and Jason Wulf (“Wulf”) are the co-owners of Lake Effect Artisan Ice Cream.1 (Dkt. 17-14 at 5). Beginning in 2007, Bernardi and Wulf began making ice cream out of their homes. (Id. at 6). On March 4, 2008, Bernardi and Wulf registered Lake Effect Ice Cream LLC. (Id. at 9). Lake Effect Artisan Ice Cream was launched to the public on June 28, 2008, in Lockport, New York. (Id. at 12). Later that year, grocery stores in both Lockport and East Amherst, New York, began selling Lake Effect Artisan Ice Cream. (Id. at 14).Bernardi states in a sworn declaration that in 2009, he and Wulf met Curtin at a music festival where both Lake Effect Artisan Ice Cream and the Lake Effect Diner were food vendors. (Id. at 16 and Ex. F).2 Lake Effect Artisan Ice Cream and the Lake Effect Diner were two of only eight food vendors at the festival and served refreshments in close proximity to one another. (Id.).In 2009 and 2010, additional grocery stores and restaurants, including in Buffalo, began selling or featuring Lake Effect Artisan Ice Cream. (Id. at 17). In 2011, Lake Effect Artisan Ice Cream won the Best of WNY Buffalo Spree Award for “Best Ice Cream,” and the Lake Effect Diner won the Best of WNY Buffalo Spree Award for “Most Kid Friendly.” (Id. at 19).Bernardi and Wulf opened a Lake Effect Artisan Ice Cream “scoop shop” in Lockport, New York, in June 2011. (Id. at 20 and Ex. K). On December 12, 2012, Bernardi and Wulf formed Lake Effect Canal Street, LLC, and in 2013, they moved into a location on Canal Street in Lockport, which is used as both a scoop shop and a location to manufacture ice cream. (Id. at 21 and Ex. L).In the summer of 2012, Bernardi and Wulf entered into an agreement with Ingeri Eaton, the owner of Eaton Chocolate, a chocolate and ice cream shop that was then located at 1856 Hertel Avenue in Buffalo. (Id. at 22). From the summer of 2012 until it closed in July 2014, Eaton Chocolate served Lake Effect Artisan Ice Cream and prominently advertised that fact, both at its retail location and on social media. (Id.).Bernardi states in his declaration that in approximately 2013 or 2014, Curtin approached Bernardi and Wulf with a business proposal for Lake Effect Artisan Ice Cream to rent space at Dug’s Dive, a restaurant in downtown Buffalo owned by Curtin. (Id. at 24). Plaintiff has not rebutted this statement by Bernardi. The proposal ultimately was not accepted and Dug’s Dive closed in 2015. (Id.).In May 2017, Bernardi and Wulf opened a Lake Effect Artisan Ice Cream scoop shop at 1900 Hertel Avenue in Buffalo, approximately 500 feet from the former location of Eaton Chocolate. (Id. at 29).On August 18, 2017, Plaintiff’s counsel sent a cease-and-desist letter to Bernardi and Wulf. (Dkt. 7-17). The parties thereafter engaged in settlement negotiations through May 2018. (Dkt. 21-3 at
