OPINION & ORDER Forrest Gump (portrayed by Tom Hanks): “Mama always had a way of explaining things so I could understand them.”1 * * * Plaintiff Hope Organics LLC (“Hope Organics” or “plaintiff”) moves under Rule 65(a) of the Federal Rules of Civil Procedure for an order to preliminarily enjoin defendant Preggo Leggings LLC (“Preggo” or “defendant”) from using the “MTHR” mark and selling products bearing the “MTHR” mark during the pendency of this action. For the reasons that follow, Hope Organics’ motion for a preliminary injunction is granted. BACKGROUND2 In September 2019, Hope Organics, founded by Hope Smith, launched the MUTHA brand. MUTHA is aimed at self-care for new and expecting mothers. See Krzypow Decl.
4-5, ECF No. 21; Pl. Mem. at 3-4, ECF No. 20. MUTHA began with the MUTHA Body Butter and has since expanded to include body oil, eye cream and face oil. These products are sold on the MUTHA company website as well as in select luxury retail stores, such as Violet Grey and Bergdorf Goodman, among others. Krzypow Decl. 5; Pl. Mem. at 4. To promote the MUTHA brand, Hope Organics invested “tremendous resources” in digital advertisement platforms and social media. Pl. Mem. at 4; see Krzypow Decl. 6. Hope Organics created “unique packaging” for the MUTHA brand featuring all-capital lettering on black and white packaging. Pl. Mem. at 5. Since its launch, the MUTHA brand has sold millions of dollars’ worth of products featuring the MUTHA mark, Krzypow Decl. 8, and has been featured in numerous advertisements, social media platforms and publications, including Vogue, WSJ Magazine, Forbes and Glamour. Pl. Mem. at 4-5; Krzypow Decl., Ex. B. On February 26, 2021, Preggo launched MTHR, a line of skincare products consisting of MTHR Belly Oil and MTHR Belly Cream. Def. Mem. at 5, ECF No. 25; see Okebie-Eichelberger Decl. 55, ECF No. 27. The MTHR products are aimed at reducing the appearance of stretch marks and dark spots and improving skin elasticity before, during and after pregnancy. Okebie-Eichelberger Decl. 33. In 2014, Oyu Okebie-Eichelberger started Preggo as PREGGO LEGGINGS, which provides “fashionable” maternity leggings to pregnant women and new mothers. Id. 17. MTHR is sold online on Preggo’s company website and Nordstrom’s website. Def. Mem. at 4, 22. In June 2020, Okebie-Eichelberger reached out to an independent artist named Hina on Fiverr3 to design the product packaging and labels for the MTHR brand. Okebie-Eichelberger Decl. 40. Okebie-Eichelberger states that “[f]or the design parameters [of the labels], I specified a ‘[m]inimalist styling that exudes high-end price point’ with a black and white color layout.” Id. at 45. After rounds of edits between Okebie-Eichelberger and Hina, the MTHR design was finalized. Id. at 52. On February 22, 2021, Hope Organics sent a cease and desist letter to Preggo, to which Preggo did not respond. See Pl. Mem. at 7; Def. Mem. at 5. On March 19, 2021, Hope Organics commenced this action for trademark infringement, unfair competition and false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. §1125(a), and trademark infringement and unfair competition under New York common law. Compl.
