MEMORANDUM & ORDER Plaintiff, Backyard Brine, Inc. (hereafter, “Plaintiff” or “Backyard Brine”) commenced this action against The Backyard Food Company, LLC (hereafter, “Defendant” or “Backyard Food”) alleging: (1) trademark infringement pursuant to 15 U.S.C. §114; (2) federal common law trademark infringement pursuant to 15 U.S.C. §1125(a); (3) false designation of origin pursuant to 15 U.S.C. §1125(a); (4) unfair competition pursuant to 15 U.S.C. §1125(a); (5) New York State common law trademark infringement; and (6) New York State common law unfair competition. (See generally Compl., ECF No. 1.) Presently before the Court is Defendant’s Motion to Dismiss (hereafter “Dismissal Motion”, ECF No. 15) seeking dismissal pursuant to Federal Rule of Civil Procedure (hereafter, “Rule”) 12(b)(6). Defendant contends dismissal is required based solely upon the doctrine of laches. (Dismissal Motion at 7.) For the reasons that follow, Defendants’ Dismissal Motion is DENIED. BACKGROUND1 I. Factual Background A. The Parties Plaintiff Backyard Brine is a corporation organized under the laws of New York with its principal place of business in New York. (Compl. 2.) Since at least as early as May 18, 2013, Backyard Brine has used the “Backyard Brine” word, design, and logo marks in connection with its sale of various pickle products, including but not limited to: dill pickle products; pickled cucumbers; pickled jalapenos; pickled vegetables; and spicy pickle products. Backyard Brine advertises and promotes its products throughout the United States. (Id. 6.) Defendant Backyard Food is a New York corporation, with its principal place of business in New York. (Dismissal Support Memo at 9.) Backyard Food was founded in 2013 and sells canned produce, including pickle products, using “The Backyard Food Company” word mark. (Id.; Compl. 11.) Backyard Food has used its mark in association with its goods since August 1, 2013 and in commerce beginning on December 10, 2013. (Dismissal Support Memo at 9.) On July 24 2022, Plaintiff Backyard Brine commenced this trademark infringement action against Defendant Backyard Food based upon Defendant’s use of the “Backyard Food” mark in connection with advertisement, sale, and distribution of pickle products. (See Compl.
1, 11-13.) Plaintiff asserts six causes of action, described supra, against Defendant. (See generally id.) B. Relevant Trademarks and Applications 1. Plaintiff’s Word and Logo Trademark Applications On March 19, 2014, Plaintiff filed trademark applications for “Backyard Brine” word and logo marks with the United States Patent and Trademark Office (hereafter, “USPTO”). (Compl. 15; Def. Ex. F, ECF No. 17-6; Def. Ex. G, ECF No. 17-7.) These applications were made in connection with dill pickle products, pickled cucumbers, pickled jalapenos, pickled vegetables, and spicy pickle products. (Compl. 21; Def. Exs. F-G.) On October 8, 2014, the USPTO published Plaintiff’s “Backyard Brine” mark application for opposition. (Id. 19.) No person or entity, including Defendant, opposed Plaintiff’s application. (Id.) The trademark applications were ultimately approved and registered by the USPTO on January 13, 2015. (Id.) 2. Defendant’s Word and Logo Trademark Applications a) Defendant’s Word Trademark Application On March 31, 2014, just twelve days after Plaintiff filed its trademark applications, Defendant filed a trademark application with the USPTO for the “Backyard Food” word mark in connection with “jellies, jams, dehydrated fruits, pickled products, preserved vegetables, pickle relish, pizza dough, and flavor infused sugar.” (Id. 16.) On July 3, 2014, the USPTO issued an Office Action (hereafter, “Office Action 1″) rejecting Defendant’s application for a “Backyard Food” word mark. (Id. 17.) In Office Action 1, the USPTO stated Defendant’s application could not be granted because of Plaintiff’s previously-filed application for a “Backyard Brine” mark, which, if granted, would likely be confused with Defendant’s proposed “Backyard Food” mark. (Id.) Defendant was given six months to respond to Office Action 1, but did not do so. (Id. 18.) On October 8, 2014, the USPTO published Plaintiff’s “Backyard Brine” mark application for opposition. (Id. 19.) No person or entity, including Defendant, opposed Plaintiff’s application. (Id.) “On January 9, 2015, the USPTO suspended Defendant’s [word] trademark application, subject to the successful registration of the trademark applications for the ['Backyard Brine'] marks.” (Id. 21.) Four days later, on January 13, 2015, the USPTO granted Plaintiff’s application for “Backyard Brine” marks, such that “Backyard Brine” became a federal trademark for dill pickle products, pickled cucumbers, pickled jalapenos, pickled vegetables, and spicy pickle products. (Id.) On March 21, 2018, the USPTO issued another Office Action, (hereafter “Office Action 3″),2 whereby it rejected Defendant’s word mark application because the word mark was likely to be confused with Plaintiff’s existing word mark. (Id. 30.) In particular, the USPTO stated the marks were confusingly similar in appearance “because they are compromised of the identical first term BACKYARD, which is the dominant indicator source of both marks.” (Id. 31.) The USPTO further stated: It is obvious from the identification of goods in the application and registrations that the goods are essentially identical. Specifically, both parties offer pickle products. Pickled vegetables are a type of preserved vegetable, and pickled relish is simply diced/minced pickle products for condiment purposes. Since the goods are identical, it is presumed that they travel in the same channels of trade to the same class of consumers. (Id. 32.) The USPTO additionally noted consumers encountering Plaintiff and Defendant’s respective marks would be reasonably likely to believe their products originated from the same source. (Id. 33.) Defendant again had six months to respond to Office Action 3, but did not do so. (Id. 35.) Following Defendant’s non-response, on October 18, 2018, the USPTO issued an Examiner’s Amendment noting that the portion of Defendant’s word mark application seeking trademark protection for pickle, preserved vegetable, and pickled relish products was deemed abandoned. (Id. 36.) Defendant’s application was permitted to proceed only as it related to jellies and jams, jerky, dehydrated fruits, pizza dough, and flavor infused sugar, and was approved on February 12, 2018. (Id.; see also Def. Ex. D, ECF No. 17-4.) Defendant’s word mark application for those goods was approved and registered on February 12, 2019. (Def. Ex. D.) b) Defendant’s Logo Trademark Application On June 12, 2015, Defendant filed a trademark application for the “Backyard Food” logo in connection with pizza dough and relish products. (Id. at 22.) On June 26, 2015, the USPTO issued an Office Action (hereafter, “Office Action 2″) rejecting Defendant’s application to register the “Backyard Food” logo mark with regard to relish products because of the likelihood of confusion with Plaintiff’s pre-existing “Backyard Brine” marks for pickle products. (Id. 23.) On December 21, 2015, Defendant removed “relish” from the list of goods and services on its application. (Id. 24.) On December 7, 2018, the USPTO deemed Defendant’s logo trademark application to be abandoned. (Id. 38.) C. Party Correspondence: Cease-and-Desist Letters On August 1, 2016, Plaintiff sent a cease-and-desist letter to Defendant asking Defendant to refrain from using the “Backyard Food” word and logo marks in connection with pickle products. (Id. 26.) In the letter, Plaintiff argued that the sound and appearance of the words “Backyard Brine,” which are included in Plaintiff’s word mark and logo, were confusingly similar to Defendant’s “Backyard Food Company” word mark and logo, especially when utilized in connection with pickle products. (Id. 28.) Defendant responded, stating the marks it used were not confusingly similar to Plaintiff’s marks because the logos were different in appearance. (Id. 27.) According to Plaintiff, Defendant’s response did not address Plaintiff’s arguments that the sound and appearance of the words “Backyard Brine” and “The Backyard Food Company” contained in the companies’ respective logos were confusingly similar, nor did it address the fact that the words and logos were being used in connection with the same type of products, i.e., pickle products. (Id.
