There’s been a major update in the trademark infringement lawsuit brought by the Museum of Modern Art (“MoMA”) against the cafe and art gallery, MoMaCha in New York City.

MoMA’s motion for a preliminary injunction was recently granted by Judge Louis Stanton of the Southern District of New York. As we discussed previously, the infringement allegations by MoMA were compelling, and it appears the court agrees that MoMA is likely to succeed on its claims, based primarily on the similarity of the marks and the relatedness of the parties’ goods/services in the same city (both parties display works of art along with offering cafe services). The court was particularly persuaded by the similarity of the vertical use of “MoMaCha,” as seen on the coffee cup above, with MoMA’s similar vertical use on the museum building signage above. (See Order at p. 18.)

The court’s preliminary injunction bars MoMaCha from continuing to use its name, logo, and the momacha.com domain name, at least while the legal proceedings are pending. As of today, the previous website, www.momacha.com is no longer accessible.

Instead, it appears that MoMaCha has already rebranded to a slightly different name, by changing one letter: MaMaCha, with a new website already available here: www.mamacha.nyc

Unfortunately, that probably won’t be sufficient to satisfy MoMA’s trademark infringement concerns. Indeed, the New York Times reported that MoMA has already sent a letter to “MaMaCha” regarding the new name and demanding that they cease use. The demand letter closes by stating:

Changing the ‘O’ in MOMACHA to an ‘A’ merely indicates your clients’ continued contempt for MoMA’s trademark rights. Your clients’ decision to change to a mark of such an infringing nature will be done at their peril.

As discussed in my last post, in the midst of trademark infringement allegations, extra caution is warranted. Just as one should be cautious with business expansion under an alleged infringing mark to mitigate damages, extra care is also warranted in selecting a new or modified mark (whether voluntarily or by court order) to avoid similar or further infringement claims, as there will be extra scrutiny and potentially over-aggressive enforcement by the opponent in the present dispute.

And as a practical matter, if one has to expend the effort and resources to re-brand, it may be more cost-effective to make a more significant, lower-risk change, rather than pushing boundaries with a minor change that may again be challenged, instigating further litigation expense, and requiring another re-brand. In many cases, simply changing one letter may not sufficient. Based on these developments thus far, I’m sure there will be interesting updates to come, so stay tuned.

Earlier this year, the Museum of Modern Art in New York City, known as “MoMA,” sued a cafe and art gallery, MoMaCha, also located in New York City, asserting claims of trademark infringement, trademark dilution, and unfair competition. As discussed in my post a couple months ago, although MoMaCha has some well-founded arguments and defenses, the allegations of the complaint are compelling, based on the similarity of the marks and the relatedness of the parties’ goods/services that are offered in the same city. MoMA’s motion for a preliminary injunction, filed in the Southern District of New York, is still pending. The case is The Museum of Modern Art v. MoMaCha IP LLC et al., No. 18-cv-03364-LLS (S.D.N.Y.)

Despite the threat of MoMA’s claims and motion for preliminary injunction, MoMaCha has announced plans to expand to three additional locations in New York City. This type of significant expansion — growing from one to four locations — is a bold move in light of MoMA’s claims, even if MoMaCha is feeling confident in the merits of its arguments and defenses. In particular, damages for trademark infringement under 15 U.S.C. 1117(a) can consist of all the defendant’s profits from its sales of goods/services under the infringing mark, which can add up quickly. Adding three more locations could mean a quadrupling of such potential damages, depending on their profit streams. Furthermore, damages can be tripled under Section 1117(a) based on the circumstances of the case. Therefore, a pending infringement claim can warrant a conservative approach to a defendant’s business expansion — or even limiting the use of the claimed infringing mark — until the dispute is resolved, to mitigate the risk of damages.

Nevertheless, it is possible that MoMaCha might be following this conservative approach. Despite their announcement several months ago to expand to three locations, and coverage of that expansion in the media including articles linked above, after a quick Google search I’m not seeing that any new locations have actually opened, but any New Yorkers out there, let me know if you’ve seen more MoMaCha’s opening up. Stay tuned for updates.

The Museum of Modern Art in New York City, commonly known as “MoMA,” has sued a cafe and art gallery, MoMaCha, also located in New York City. A couple months ago, MoMA filed a complaint in federal court against MoMaCha, asserting claims of trademark infringement, trademark dilution, and unfair competition. A few days after filing the complaint, MoMA also filed a motion for a preliminary injunction. The case is The Museum of Modern Art v. MoMaCha IP LLC et al., No. 18-cv-03364-LLS (S.D.N.Y.)

MoMaCha’s cafe and art gallery offers matcha green tea along with displays of modern and contemporary art. Similarly, MoMA is a museum that displays works of art, and also offers cafe services, in the same area of New York City. The complaint asserts that the parties’ marks are “extremely similar” because they both share the “MOMA” letters, they are both displayed in black-and-white text, and have similar capitalization, in that the “o” is lowercase and the second “M” is uppercase. Shown below are the parties’ stylized/design marks.In response to MoMA’s motion for preliminary injunction, MoMaCha argued that its name is not similar in look or meaning to MoMA’s name; rather, it is a combination of the words “mo” and “matcha” tea, creatively suggesting “more tea.” Furthermore, after the filing of the lawsuit, MoMaCha asserted that it would reduce any possibility of confusion by changing the style of its name to be all capital letters, “MOMACHA,” and by adding a disclaimer to its doors, menus, and website stating, “We have no affiliation with the Museum of Modern Art or any Museum.” (Their current website already shows these changes.) Additionally, MoMaCha argues that MoMA’s mark is weak and therefore entitled to only narrow protection, because it is simply “four letters written in black and white” which are nearly identical to “the commonly used Franklin Gothic font.”

MoMaCha’s arguments, and its voluntary re-design and disclaimer, are creative. But courts have held that disclaimers are not necessarily sufficient to avoid a likelihood of confusion–and sometimes disclaimers can even add to confusion. MoMA might have a difficult time winning a preliminary injunction, based on the high standards that are applicable. Nevertheless, the allegations of the complaint are compelling, based on the similarity of the marks and the relatedness of the parties’ goods/services that are offered in the same city.

How do you think this one will turn out? The briefing on MoMA’s preliminary injunction motion was completed last week. The court denied MoMA’s request for an oral argument, so a decision could be issued at any time, perhaps within the next month or two. Stay tuned for updates.