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MoMa TM Not Famous Enough For Infringement, Cafe Claims

MoMa TM Not Famous Enough For Infringement, Cafe Claims

By: Joyce Hanson

Law360 (May 22, 2018, 7:18 PM EDT) — Matcha Japanese tea powder aficionados operating Manhattan’s MoMaCha cafe urged a New York federal judge on Monday to toss the Museum of Modern Art’s claim alleging the cafe dilutes its trademarks, saying MoMa’s infringement suit fails to demonstrate its nickname, word marks and logo are truly famous.

MoMA’s complaint states six claims, including one for trademark dilution under the Lanham Act, but that claim does not plausibly allege the museum’s mark is ”truly famous,” according to MoMaCha. A trademark must be widely recognized by U.S. consumers — think Budweiser beer, Camel cigarettes and Barbie dolls — and the museum fails on this account because it’s essentially a niche brand, the cafe said in a motion to partially dismiss the suit.

“At most, MoMA can plausibly allege only that the MoMA marks have achieved ‘niche fame’ — i.e., that they are recognized by a limited population, such as modern art enthusiasts or New Yorkers — which is insufficient to state a claim for trademark dilution,” MoMaCha said. “Therefore, MoMA has failed to state a claim for trademark dilution, and the complaint should be partially dismissed.”

MoMaCha’s attorney, Christopher B. Spuches of Agentis PLLC, told Law360 in an email Tuesday that the New York federal court last year in Global Brand Holdings LLC v. Church & Dwight Co. referenced a 2006 Lanham Act amendment defining a goods or service’s “famous” mark as being widely recognized by consumers.

“Last year, the court determined that there are few truly famous marks,” Spuches wrote. “MoMA may be a wonderful museum, and its mark may be famous in the eyes of an elite, niche segment of the population. But it’s not Budweiser beer.”

MoMA sued the newly opened Lower East Side cafe on April 17, accusing it of infringing its famous trademarked name and trade dress that date to at least 1967 and appear in exhibition communications, retail goods and its restaurant, The Modern.

Trademark violations cited by the iconic museum, founded in 1929 and known as MoMA for decades, include MoMaCha IP LLC and MoMaCha OP LLC’s purported use of logos that are nearly identical to the ones at the museum in both font and color choice, as well as displays of art that have allegedly led people to believe that the two parties are affiliated since the cafe opened in April.

The museum also claims the cafe owners intentionally chose their name and design to imply association with the museum when they filed U.S. Patent and Trademark Office applications in November to register the mark MOMACHA for cafe beverages and restaurant services, as well as in January to register the mark MOMA, identical to the museum’s, for the same uses.

Defendants’ willful intent here is clear as there is no possibility that they were not aware of MoMA or its famous MOMA mark prior to starting their business earlier this month,” the museum said in its April complaint. “They are blatantly attempting to take advantage of the MOMA marks, which are unquestionably famous within the modern and contemporary art space, to promote their newly launched art gallery and café business.”

The complaint asserts claims of trademark infringement, false designation of origin and trademark dilution under the Lanham Act, saying MoMA has valid registered rights in the MOMA marks from the 1989 filing date for its first application to register them. It also asserts trademark infringement and unfair competition claims under New York common law.

MoMaCha shot back May 14 with an opposition to the museum’s motion for preliminary injunction, asserting that the museum’s mark is “conceptually and visually weak” and citing a 1976 Second Circuit ruling in Abercrombie & Fitch v. Hunting World saying trademarks fall into one of four categories — generic, descriptive, suggestive, and arbitrary or fanciful — with “generic” being the weakest and least protected and “arbitrary” the strongest and most protected.

MoMA risks no injury from MoMaCha because the museum’s marks are “descriptive at most” in terms of its logo when selling artwork reproductions, and it isn’t in the business of preparing MoMA-specific beverages, the cafe said.

“Visually, the MoMA’s marks are nothing more than four letters written in black and white, the colors ordinarily used to convey written words, in a font that is nearly identical to the widely available and commonly used Franklin Gothic font,” MoMaCha said.

Representatives for MoMA did not immediately respond Tuesday to a request for comment.

MoMA is represented by Jamie A. Levitt, Jennifer Lee Taylor and Sabrina A. Larson of Morrison & Foerster LLP.

MoMaCha is represented by Christopher B. Spuches of Agentis PLLC.

The case is The Museum of Modern Art v. MoMaCha IP LLC et al., case number 1:18-cv-03364, in the U.S. District Court for the Southern District of New York.

–Editing by Orlando Lorenzo.

https://www.law360.com/articles/1045961/moma-tm-not-famous-enough-for-infringement-cafe-claims

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