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.

 

Ever tried to search for directions on your so-called “smart” phone by the name of your intended destination?   What if it directed you to the museum you searched, but unwittingly not the museum you intended to visit…in the same area?  As if there were not enough things to be afraid of in New Jersey like Snookis or bridge closures, that could very well happen to you in the borough of High Bridge.

This is the historic Solitude House in High Bridge, New Jersey.

 

This is also a historic house in Hampton, New Jersey referred to as Solitude House and operated by Union Forge Heritage Association (“UFHA”).  UFHA owns a federal trademark registration for SOLITUDE HOUSE MUSEUM for “museums.”  Their Facebook page identifies the house as Solitude Heritage Museum.  More on that page in a minute.

As I probably don’t have to tell you, they are not the same house.

Hampton, NJ and High Bridge, NJ are 4.9 miles apart.

The borough filed a trademark application for SOLITUDE HOUSE for services listed as “historic house and museum” claiming a first use date of December 31, 1776. I’m guessing that it wasn’t offering services as a historic house and as a museum as of that first use date, December 31, 1776, nor was it a use in interstate commerce since that requirement comes from the Commerce Clause in the Constitution, which was not ratified in New Jersey until 1787. But I digress.

Prior to filing the application, the borough petitioned to cancel UFHA’s registration through the Trademark Trial & Appeal Board on what appears to be a likelihood of confusion claim and possibly a void ab initio claim regarding UFHA’s right to register the mark, although not plead as such.

Apparently UFHA leased the Solitude House for High Bridge (the first one up there) and operated it as a museum, but their leasing deal ended in 2012 and an agreement to renew was not reached. If the lease agreement did not address ownership rights in any trademarks related to the property, generally the tenant would have all rights in a mark that they created and indicated the tenant as the source of the services. So there’s a tip here to make sure that even lease agreements properly establish ownership of trademark rights.

Back to the Facebook page, UFHA posted the following:

 

“There has not been a Solitude House Museum before or since” – that language implies that they have abandoned the trademark without intention to resume use, which would result in cancellation of the mark.

So, what can you take away from the Solitude House trademark issue? If you are working on a lease where naming rights of a property may ever be an issue, or there’s a name already associated with the property, you should consider adding trademark language to the lease agreement providing for which party would own the trademark. If you’re not working on a lease, this issue might give you some pause about doing a clearance search with an attorney before using a mark. And at the very least the Solitude House might make you consider searching by address and writing down your directions so there’s no chance of “re-routing” you to the wrong place.