Mo’ Tea + Mo’ Drama brews between MoMa and MoMaCha

Mo’ Tea + Mo’ Drama brews between The Museum of Modern Art (MoMa) and boutique art cafe, MoMaCha — both located on Manhattan’s Lower East Side.

The lawsuit: MoMa sued MoMaCha cafe in the U.S. District Court for the Southern District of New York for trademark infringement, dilution and unfair competition. The fine art, history and cultural museum has cafes and restaurants inside of their establishment. MoMa claims that their name, capitalization, font and other design elements are well-known and distinctive. MoMa believes that MoMaCha could confuse consumers who would presumably associate their cafe with the museum. That would be a big no-no. Though the styling has a few differences, MoMaCha’s overall aesthetic is quite similar to the museum’s visual branding. In trademark world, whether there is a likelihood of confusion is determined by an analysis of the many “DuPont Factors” including the similarity of the marks and relatedness of the goods and services.

Dominant case law asks this question: Even without a side-by-side comparison would consumers see the two trademarks and think they are associated?

[Photo: Exhibit A]

[Photo: Exhibit B]

Looking at exhibits A and B, could a connection be made between the two entities? Moreso, could a consumer reasonably conclude that MoMaCha is a MoMa-owned business? Probably, yes.  

Here’s the rebuttal (the short version): The co-founder of MoMaCha says that the museum was the furthest thing from mind when naming the cafe. He also says that it was inspired by his friend’s child who says “mo” instead of “more.” Additionally, the cafe’s model is art-infused (with the exhibiting and selling of original artwork). The unique aspect is that it switches up its logo whenever a new art show is exhibited.

So, here’s what MoMaCha did: MoMa changed its colors and font; changed the stylization of their brand name from MoMaCha to Momacha and their logo; and posted a sign and disclaimer across the store, customer receipts, and their website (explicitly stating the cafe had no affiliation with the museum). 

You would think that just maybe the parties would settle after the changes. But, #nah. It’s a compelling case involving similar marks and related goods and services that are offered…in the same city.

Current Situation: In April 2018, MoMa filed a motion for a preliminary injunction in the Southern District of New York. The injunction is still pending a resolution. But to loop you in on what this means, if issued, a preliminary injunction would mean that MoMaCha has to cease certain business activities while the court decides the trademark infringement issue. An unresolved trademark infringement claim can hinder a defendant’s business expansion–or even limit the use of the alleged, infringing mark — until the dispute is resolved.

MoMa has work to do on its part also. Elements that must be proven to a judge are:

1. there is no adequate remedy other than an injunction
2. irreparable harm will take place if the injunction is denied
3. it is more likely than not that the moving party will prevail on the underlying merits when the matter goes to trial
4. the benefit to the party hoping for an injunction outweighs the opposing party’s burden
5. the moving party’s right to the relief sought is clear.

But, wait. There’s just a little bit mo’ (see what we did there?)

Clearly unbothered by the lawsuit, MoMaCha announced plans to expand to three additional locations in NYC.

Suit Repercussions:  Under 15 U.S.C. 1117(a), damages for trademark infringement can include the defendant’s profits from its sales of goods and services. And with the art-infused cafe expanding the business, damages could be increased if they don’t get a “W”.

We hope that the parties are able to sort this out without it dragging on too long, and getting too costly. Trust CGL to keep you in the loop with this case.

It is important to fully vet your new trademark with an attorney before launching it. It’s also important to assess the risks and potential legal costs of rolling out a new trademark that potentially infringes on a prior trademark before you invest in it. The attorneys at Creative Genius Law can assist you with various trademark matters including developing your trademark strategy, trademark prosecution, and trademark defense. Submit an intake here to schedule an initial conversation. 

INITIAL LAWSUIT

MoMa Complaint

 

PRELIMINARY INJUNCTION

MOMA Injunction

Summary by Toya Cross. Legal analysis by attorney Patrice Perkins.