OPINION AND ORDER This is a case about two food establishments. One is a fast-food franchise that specializes in Korean corn dogs. The other is a series of sit-down restaurants that serve a more varied menu. But both use the term “Two Hands.” The central issue in this case is whether the use of that mark is likely to cause consumer confusion under all the circumstances. The plaintiff, Two Hands IP LLC, brought this action against the defendants, Two Hands America, Inc. and ABC Corps. 1-100 (collectively, “Two Hands Corn Dog”), for trademark and service mark infringement under the Lanham Act, 15 U.S.C. §1114; unfair competition under the Lanham Act, 15 U.S.C. §1125(a); common law trademark and service mark infringement under New York State law; and unfair competition under New York State law. The plaintiff moves for a preliminary injunction pursuant to Rule 65 of the Federal Rules of Civil Procedure. The plaintiff seeks, among other things, an order enjoining the defendants from using the trademark and service mark “TWO HANDS” and similar variations of that mark. For the reasons explained below, the plaintiff’s motion for a preliminary injunction is denied. I. The following facts constitute the Court’s findings of fact and are undisputed unless otherwise noted. The plaintiff, Two Hands IP LLC, is a holding company for the intellectual property rights relating to Two Hands Group, the owner and operator of a group of sit-down restaurants, cafés, and coffee shops in New York and Texas with the name “Two Hands.” ECF No. 17-1, at 2. Two Hands locations are “community-focused cafés that strive to create nutritious, simple, and delicious food paired with exceptional coffee as well as other non-alcoholic beverages and, at some locations, alcoholic beverages.” Id. at 3. The first Two Hands location opened in June 2014 on Mott Street in New York City, and its success led to the opening of additional locations in New York City, as well as in Austin, Texas. Id. After opening the first Two Hands café, the plaintiff claims to have consistently used the word mark “TWO HANDS.” Id. at 4. In addition to its word mark, the plaintiff is the owner of the following related design mark registered with the United States Patent and Trademark Office (“USPTO”): Id. The mark consists of a black circle with the literal element “TWO HANDS” written in a stylized form in white font. The USPTO issued the registration on March 21, 2017 with the registration number 5,164,155. Id. The registration covers coffee-related goods in Class 30, and restaurant-related services in Class 43. Id. at 4-5. The plaintiff claims that both its word and design marks have “acquired considerable consumer recognition and goodwill, and have become important source indicators that identify the quality goods and services provided by [Two Hands Group].” Id. at 5. In July 2019, the defendants began operating fast-food restaurants specializing in Korean corn dogs by the name of “Two Hands Seoul Fresh Corn Dog,” “Two Hands Corn Dog,” or “Two Hands.” See ECF No. 19, at 2; ECF No. 17-26. Upon opening their first location in California, the defendants began using the following design mark: ECF No. 19, at 2. The mark consists of the literal elements “TWO HANDS” in large orange font; “SEOUL” and “FRESH CORN DOGS” in smaller black font; and two large smiling corn dog characters featuring an orange sauce spread. The defendants filed an application to register the design mark with the USPTO on August 30, 2019, but its application was not granted until March 23, 2021. ECF No. 5
