On September 28, 2018, Judge Louis L. Stanton, U.S. district judge for the Southern District of New York, issued a preliminary injunction against a café and gallery space previously known as MoMaCha. He ruled that the Museum of Modern Art (MoMA) is likely to succeed on the merits for its claims that the café infringed on its trademark name and logo design and diluted its trademark. The café has since changed its URL, logo, and name to “MAMACHA;” MoMA responded by sending a cease and desist letter to the café’s counsel, asserting that the new name is also in violation of the court order. On October 10, 2018, Judge Stanton denied the tearoom’s motion to dismiss the trademark dilution claim, ruling that the Museum’s name and mark is famous enough to support a dilution claim.
Case Background:
MoMaCha opened its doors on Manhattan’s Lower East Side this past April, promoting itself as a café that sells beverages, including Matcha green tea and CBD lattes, and as a gallery that exhibits and sells modern artwork along with novelty art products. In addition to having MoMA in its name, the café’s logo had similarly capitalized letters and was written in a font nearly identical to that of the Museum’s original, trademark logo. Upon the café’s opening, MoMA brought suit for trademark infringement and dilution. The café responded by changing its logo to all capital letters (MOMACHA) and its font to a more stencil-like one, in addition to adding disclaimers in-store and on its website that it had no affiliation with MoMA; however, it continued to use some cups with the old logo.
Trademark Infringement Claim:
In issuing a preliminary injunction against the café, Judge Stanton ruled that the use of the Museum’s mark would likely cause confusion among the public. The judge first determined that MoMA’s mark is distinctive because it has acquired ‘secondary meaning’ among the public. To support this, he cited “the Museum’s exclusive use of its mark for a significant length of time, its advertising in numerous publications, its unsolicited press coverage,” and the café’s attempt to copy the mark as evidence that people associate the Museum with the mark. Judge Stanton further determined that, while the café’s new logo, as opposed to its old one, is not highly similar to the Museum’s, MoMA has satellite locations, manages cafés and restaurants, and operates design stores throughout Manhattan which all begin with the word ‘MoMA.’ Thus, the Museum’s pervasive network of businesses coupled with MOMACHA’s presentation and marketing is likely to cause consumer confusion. This misconception is furthered by the similarity in services: both the tearoom and Museum “offer café and beverage services in an art gallery setting” and sell items related to the art displayed for the same audience of New York tourists and residents who want to enjoy beverages in a modern art setting. There has even been evidence of actual confusion, with numerous café-goers having posted photos on social media with captions and comments suggesting the belief that the Museum and café are related.
Thoughts:
Given Judge Stanton’s analysis of MoMA’s trademark infringement claim, it is unclear whether the café’s new name and logo would still be infringing on the Museum’s mark if it did not double as an art gallery and exhibition space. While the judge believes the mark is distinctive and a major point of confusion is that all the Museum’s locations start with the word ‘MoMA,’ it is difficult to deduce whether café customers falsely associate it with the Museum due to its name or the experience it provides, or even both. Furthermore, now that MOMACHA has changed its name to MAMACHA, it seems unlikely that the café’s newest name infringes on the Museum’s name and mark. Judge Stanton’s assessment, that the café’s MOMACHA logo, as opposed to its original MoMaCha one, was not highly similar to MoMA’s yet would likely still cause consumer confusion because of the word ‘MOMA,’ does not seem to be implicated now that the café’s name begins with ‘MAMA.’ But only time will tell as this saga continues.
Jackie Zachariadis is a J.D. candidate, 2020, at NYU School of Law.