U.S. District Judge Louis Stanton recently issued an opinion granting an injunction requested by New York City’s Museum of Modern Art (MoMA). The injunction prevents the operator of an art gallery and café located in close proximity to a MoMA Design Store in New York’s SoHo neighborhood from using a pair of marks that infringe upon MoMA’s own marks. The marks in question in this case are ‘MOMA’ and ‘MOMACHA,’ both of which were filed by MOMACHA, the SoHo café that began operating in April of this year.
The marks were filed with the U.S. Patent and Trademark Office for use in commerce with beverages and restaurant and café services. Although MOMACHA has changed the font used in its original logo, that logo uses a font that “greatly resembles ITC Franklin Gothic Heavy,” a font which served as the basis for a MoMA logo first designed in 2003. MOMACHA continued its use of its old logo on its coffee cups and on its social media accounts.
In seeking the preliminary injunction preventing the use of the MOMA and MOMACHA marks, MoMA argued that it was likely to succeed on the merits of its claims for trademark infringement, unfair competition and trademark dilution. Although MoMA owns numerous registered trademarks, none of them specifically cover beverages. The museum’s ‘MoMA’ mark was considered by the court to be descriptive because it’s an acronym which stands for the museum’s full name but the mark has acquired distinction because it has been used by the museum for nearly 50 years.
In discussing the similarity of the parties’ marks, Judge Stanton found that MOMACHA’s old logo was displayed in the marketplace in a manner likely to cause consumer confusion. The museum’s satellite locations all have names that begin with MoMA and are all located in New York City, which could lead the public to mistakenly presume that MOMACHA is another satellite location of the museum. “That MOMACHA is a café rather than a large museum is unlikely to dispel confusion, as not all of the Museum’s locations are museums or museum-grade facilities, such as the MoMA Design Stores,” Judge Stanton’s opinion reads. The museum and MoMaCha aren’t necessarily in direct competition but both display modern art and offer café and beverage services in an art gallery setting. MOMACHA had argued that its services were completely different because it sells original artwork displayed in the café and MoMA sells prints of museum artwork, but Judge Stanton found this argument unconvincing.
In applying the Polaroid factors for determining the likelihood of confusion, Judge Stanton held that these factors weigh in favor of such a finding. This lead the court to find that MoMA is likely to succeed on the merits of its claims for trademark infringement and unfair competition. The museum also offered sufficient evidence regarding the fame of its mark, giving it a likelihood of succeeding on its trademark dilution claim. MOMACHA had argued that the museum had unclean hands because it was engaging in bad faith litigation to bully the café as a larger entity but the court didn’t find that this was the case. The court did find, however, that MoMA established the fact that it will suffer irreparable harm to its brand and goodwill without the injunction because of the likelihood of consumer confusion.
Representing the defendant MOMACHA in this case is Christopher Spuches, founding partner at Agentis Law. He offered the following comment regarding Judge Stanton’s order on injunction:
“We’re reviewing our options, one of which is to clarify the ruling with respect to use of the domain name. In addition, we’ve changed the name of the brand to MAMACHA. MoMA’s position is that this also infringes on their trademark. They’re claiming trademark rights in all vowels. We can’t be called MAMACHA, we can’t be called MOMACHA, we’re not sure why they’re so interested in our little cafe but they certainly seem intent on shutting us down.”
We’ve also reached out for a comment from counsel representing MoMA in this case but have not received a response as of this time.
Image Source: Deposit Photos.