By: Joyce Hanson
Law360 (May 15, 2018, 5:56 PM EDT) — A Manhattan cafe is fighting a trademark lawsuit brought against it by the Museum of Modern Art in New York federal court, arguing Monday that MoMA’s bid to stop the cafe from using similar marks fails to show the museum will be irreparably injured or consumers will be confused by their use.
MoMaCha, a cafe that primarily sells an Asian powdered green beverage known as “matcha,” prominently disclaims any affiliation with MoMA at many points along the customer experience at the cafe’s Lower East Side location as well as on its website, according to MoMaCha’s opposition to the museum’s motion for preliminary injunction.
“In order to show a likelihood of success on the merits of the trademark infringement and unfair competition claims, as is sufficient to obtain a preliminary injunction, MoMA must show a likelihood of consumer confusion, and MoMA has not made and cannot make this showing,” MoMaCha said.
The cafe asserted that the museum’s mark is “conceptually and visually weak,” then went on to cite 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. “Moreover, the visual elements and content of MoMA’s marks are the same or strikingly similar to those of other marks used by contemporary art museums throughout the country,” including the San Francisco Museum of Modern Art and the Museum of Contemporary Art North Miami.
The museum’s April 20 preliminary injunction bid stems from its April 17 complaint accusing the cafe 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.
The lawsuit lists various MoMA uses of its trademark and logo since 1967, saying the museum has taken all the right steps to protect its famous mark, including applying for USPTO trademark rights and registering its ownership of multimedia software, dining facilities, and three stores selling goods such as jewelry and books that use the MoMA name.
The museum claims online sources show that MoMaCha plans to present contemporary art installations at its gallery and cafe and that it intends to open two or three more art cafes in New York City this year, also to be called MoMaCha. Currently, according to the complaint, the new business’ website and social media presence on sites like Facebook, Instagram and Twitter are all promoting the allegedly infringing MoMaCha name.
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. The museum claims it has used the marks in the United States since at least 1967, predating by 40 years the cafe and gallery’s first use of the MoMaCha marks. It also asserts trademark infringement and unfair competition claims under New York common law.
MoMaCha’s attorney, Christopher B. Spuches of Agentis PLLC, told Law360 in an email Tuesday that MoMaCha has “bent over backwards at considerable cost” to accommodate the museum’s concerns. Yet MoMA is proceeding full speed ahead with expensive lawyers on both coasts to crush the 450-square-foot tea shop, according to him.
“MoMA hasn’t just failed to show the likelihood of consumer confusion, they have failed to show ANY customer confusion,” Spuches wrote. “To suggest that a person buying matcha tea from a small tea shop called MoMaCha is going to be confused that the tea shop is affiliated with the Museum of Modern Art is preposterous. In addition, the trade name MOMA has been used by many businesses, including other museums, shoes and wine.”
Representatives for MoMA did not immediately respond Tuesday to a request for further 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.