MEMORANDUM DECISION AND ORDER I. INTRODUCTION On September 13, 2023, Plaintiff Flocast, LLC (“Plaintiff”) commenced this action against Defendant Movi Family, LLC (“Defendant”), alleging that Defendant’s Movi Cocoon diaper changing pad (the “Cocoon”) infringes Plaintiff’s U.S. Design Patent No. D714,072 (the “072 Patent”) and uses the alleged trade dress of its Keekaroo Peanut diaper changing pad (the “Keekaroo”). See Dkt. No. 1. Plaintiff seeks injunctive relief and monetary damages for Defendant’s alleged infringement of Plaintiff’s rights to the Keekaroo Trade Dress described herein and the ’072 Patent, advancing claims under both federal and New York State law. Defendant now moves, pursuant to Federal Rule of Civil Procedure 12(b)(6), to dismiss Plaintiff’s claims. See Dkt. Nos. 24, 33. Plaintiff opposes Defendant’s motion. See Dkt. No. 30. On May 17, 2023, the Court held oral argument on the motion. See Dkt. No. 34. II. BACKGROUND A. Factual Background The complaint alleges the facts as follow, which the Court accepts as true for the purposes of deciding this motion. See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). Plaintiff is a limited liability company which sells diaper changing pads, including the Keekaroo. See Dkt. No. 1 at 2. Plaintiff is organized in the state of New York, and has its principal place of business in Dolgeville, New York. See id. at 6. Defendant is a company that sells and markets the Movi Cocoon and is located in Pasadena, California. See id. at
4, 7. On September 9, 2014, the United States Patent and Trademark Office issued the ’072 Patent to Plaintiff. See id. at 14. The rights of the design in the ’072 Patent were duly assigned to Plaintiff. See id. The design in the ’072 Patent includes rounded indents in the middle portion of the changing pad, rounded ends, a top surface that is elevated at one end, and raised edges along the length and one end of the pad. See id. at 15. The ’072 Patent is embodied by the Keekaroo changing pad. See id. at 16. “The ’072 Patent is associated with extremely highquality diaper changing pad products and obtained incredible recognition in the market, including the highest level of JMPA Certification and Babylist Best.” Id. at 17. The complaint incorporates by reference the Patent design, including the below depiction which shows the ’072 Patent design for the bottom of the pad. Dkt. No. 1-1 at 9. The depiction below shows the side design from the ’072 Patent. Dkt. No. 1-1 at 7. The depiction below shows the front of the claimed design and an oval indicating the placement of a logo. Dkt. No. 1-1 at 5. Plaintiff also promotes its Keekaroo Trade Dress “in connection with the sales of its Keekaroo Peanut changing pad.” Dkt. No. 1 at 18. The Keekaroo Trade Dress “has come to be associated exclusively with Plaintiff” and has “acquired distinctiveness and secondary meaning because of Plaintiff’s extensive advertising” and product reviews. See id. at 3. Plaintiff claims that the Keekaroo Trade Dress is commercially successful, that Plaintiff is regarded as “one of the premier manufacturers of changing pads,” and that the Keekaroo Trade Dress represents “high quality, integrity, authenticity, and good will in the United States and is associated exclusively with Plaintiff.” Id. at 20. Plaintiff has “spent a considerable sum on promoting” and advertising the Keekaroo Trade Dress across multiple platforms. Id. at 24. The Keekaroo Trade Dress “is renowned in the relevant market as a result of the extensive advertising, promotion, and sales over the past decade” and “is distinctive since it has acquired secondary meaning among the relevant public and audience for diaper changing pads, as seen by the volume of Plaintiff’s sales and advertising, as well as the length of time Plaintiff has been the exclusive seller of products featuring” the Keekaroo Trade Dress. Id. at
