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.

Suspended high above Chelsea Market in New York City are these eye-catching ads for OWYN:

That’s a new brand for me, I’m unsure how to pronounce it (Own, Owen or Oh Win), but OWYN apparently stands for Only What You Need — for dietary supplement protein products that “use nutritious, plant-based ingredients and leave out inflammatory animal products and allergens.”

Meanwhile, another kind of suspension has occured deep within the bowels of the USPTO, where the OWYN federal trademark application is presently suspended, because of a prior-filed pending intent-to-use application for EWYN, covering overlapping goods, including dietary supplements.

Fortunately for OWYN, it had filed an even earlier intent-to-use application for the spelled-out mark OWYN ONLY WHAT YOU NEED, beating the EWYN filing date by six months, giving OWYN the ability/leverage to file a Notice of Opposition against registration of the blocking EWYN application.

Actually though, had the OWYN application been filed when the earlier OWYN ONLY WHAT YOU NEED application was, the suspension and ITU log jam at the USPTO could have been avoided.

As it stands now, the OWYN application is suspended pending the outcome of the prior-filed EWYN application, which in turn is suspended pending the outcome of the opposition against it, which is suspended while the parties attempt to settle the conflict and discuss likelihood of confusion.

In the Opposition, OWYN contends there is likelihood of confusion between EWYN and OWYN ONLY WHAT YOU NEED, which is a bit dangerous to allege. If it loses that argument, it won’t be able to knock out the blocking EWYN application, making it difficult to then convincingly say there is no likelihood of confusion between the more similar OWYN and EWYN marks, for the same goods.

Working backwards, and as a practical matter, unless the parties are able to reach an agreement as to peaceful coexistence, the OWYN application likely will remain suspended unless and until the prior-filed EWYN application is knocked out of the way or otherwise abandoned.

This train of suspensions is a good reminder to file all pertinent intent-to-use applications sooner than later, once a bona fide intention exists to make commercial use of the mark in commerce.

It also illustrates how important intent-to-use application filing dates can be in determining priority, especially when there is a long period of time that elapses before actual use is made.

On a lighter and less technical note, and for any Lord of the Rings fans out there, do any of the marks in this discussion remind you of EOWYN (pronounced A-O-WIN)?

How, if at all, might you rely on the existence of EOWYN to argue either side of the likelihood of confusion argument between EWYN and OWYN?

Shopping with my daughter this past weekend on the Avenue des Champs-Élysées in Paris, on the way to the Arc de triomphe, we spotted this shop selling  “I ♥ Paris” merchandise:

What do you make of this one, Tim, does it look familiar?

I’m thinking Mike Masnick of Techdirt, given his trademark bullying perspective on the subject, would be happy to see the Milton Glaser designed logo considered an informational genre, and part of the public domain.

A pair of French lawyers have noted that “the ability of the ‘I ♥’ sign to fulfill the essential function of guaranteeing a trademark’s origin is a question that remains to be answered.”

Could the same question be raised here in the United States, New York?

Spring break brings my family to Las Vegas this year; when we made the plans, we never anticipated leaving behind better weather in Minneapolis, especially this time of year. Oh, well. At least it isn’t slowing down our hiking adventures in the amazing Red Rock Canyon area.

Meanwhile, closer to the strip and all the over-the-top commercial activity, one of the notable trends on steroids here in Vegas is the frequent use of lower case branding and visual identity — I’ll be sure to share some photos on this subject  later on. Until then, please remember these oldies, but goodies on the subject:

  1. lower case branding & visual identity
  2. i am ben
  3. Mayo Clinic Logo loses lower case visual identity

Since I’m largely unavailable and figuratively fishing in Vegas at the moment, if you’re looking for some fresh content on the nuances of trademark law, I’d encourage you to check out John Welch’s post today on the TTABlog. In his typically capable fashion, he reports on an appeal of a very interesting likelihood of confusion case involving federal registration of the automobile tire marks MILANZA, POTENZA, and TURANZA.

I remember being surprised a couple of years ago when the USPTO’s Trademark Trial and Appeal Board found MILANZA unlikely to be confused with Bridgestone’s prior POTENZA and TURANZA marks. As John reports, the Court of Appeals for the Federal Circuit just reversed that decision, with this little gem and sober reminder for our naming consultant readership:

“There is a heavy burden on the newcomer to avoid consumer confusion as to products and their source. *** This court has cautioned that there is ‘no excuse for even approaching the well-known trademark of a competitor.’ *** This caution applies here; the prior user is entitled to the traditional protections of its marks of trade, as against newcomers choosing a confusingly similar mark for the same goods.”

Last, as I close out this potpourri post, I’d like to thank Marsha Ajhar of Hartman Craven and Katherine Brown of IBM, for their grand hospitality and the very kind invitation to speak last week at the International Intellectual Property Society’s monthly meeting in New York City, where we had a great discussion on trademark enforcement strategies and avoiding the social media shame-wagon in the context of trademark bullying.

— Karen Brennan, Attorney

The Tavern on the Green dispute came to a swift end, for the time being. U.S. District Court Judge Miriam Cedarbaum granted summary judgment in favor of the City of New York, ordering cancellation of LeRoy’s federal trademark registration for the TAVERN ON THE GREEN mark in connection with restaurant services on the basis of fraud. (See opinion here.)  On May 6, 2010, LeRoy filed an appeal.  For a detailed background on this case, see my prior blog posts here and here.

By way of brief background from the opinion, the Tavern on the Green restaurant opened in 1934.  In 1973, LeRoy Adventures entered into a license agreement with the City of New York to operate the Tavern on the Green restaurant in Central Park.  After losing a bid to renew the restaurant lease to another party last year, LeRoy and the City of New York were disputing ownership of the valuable TAVERN ON THE GREEN trademark.

The license agreement between LeRoy and the City provided for certain approval and oversight by the City and included a provision wherein the licensee could change the name of the restaurant upon written approval. The agreement was later revised, giving more control to the City and removing the name change provision.

In 1978, LeRoy filed a federal trademark application for the TAVERN ON THE GREEN mark in connection with restaurant services claiming a date of first use of August 31, 1976 – the date LeRoy reopened the restaurant after renovations were complete.  As part of the application, LeRoy signed a declaration of exclusive ownership of the mark (noting that to the best of his knowledge and belief, no other party had a right to use the mark).  The City’s fraud claim is based on the fact that  LeRoy signed the declaration and did not disclose the license agreement with the City or acknowledge his status as a licensee.

The City claimed it was not aware of the federal registration until 2006, at which time it requested that LeRoy assign all rights to the City. LeRoy declined, disputing the City’s claim of ownership of the mark. LeRoy filed a second federal trademark application for the TAVERN ON THE GREEN mark in 2007 in connection with “cooking oils, salad dressing and dipping oils.”  While the City filed two extensions of time to oppose the application, it did not oppose and the application registered in 2008.

The City prevailed in its fraud claim.  The Court ordered cancellation of the registration after finding that LeRoy’s failure to disclose the license agreement was a deliberate and material omission regarding another’s right to use the mark, justifying cancellation.  The Court noted that LeRoy “adduced no facts which would permit a reasonable fact finder to conclude that LeRoy’s conduct was anything but a deliberate attempt to mislead the PTO.”  The Court held that by entering into the agreement, LeRoy acknowledged the City’s right to the trade name “Tavern on the Green” and, accordingly, found that the undisputed facts established that LeRoy deliberately attempted to mislead the PTO about his status as a licensee.

Without knowing the facts apart from those in the opinion, I was left with some questions as the finding of fraud in this situation.

Last year, the Federal Circuit held that fraud in procuring a trademark registration occurs when an applicant knowingly makes a false, material representation of fact in connection with his application.” (See In re Bose available here.)  An “intent to deceive, however difficult to prove, is an indispensable element in the analysis” which must be proven by clear and convincing evidence by the party claiming fraud. (Id.

The Court appears to place the burden of proving intent on the registrant, LeRoy, rather than the party seeking cancellation.  The opinion does not discuss any evidence as to an intent to deceive, but rather the absence of any evidence to the contrary submitted by LeRoy.  The opinion also suggests that LeRoy did not believe that the agreement dealt with trademark rights in the name (suggesting an argument made by LeRoy that the license agreement was not a “trademark license agreement”).  Thus, it appears LeRoy argued that he believed he was the owner of the mark at the time the application was filed (no intent to deceive the PTO).  In addition, the fact that LeRoy made similar claims of ownership in 2006 when the City sent him a letter requesting the assignment of the registration supports the notion that he believed he owned the mark.

As noted, Leroy has filed an appeal and, once again, we will have to wait and see what happens.

— Karen Brennan, Attorney

 

If you have been following the bankruptcy of the Tavern on the Green, you have most likely heard about the controversy surrounding the famous trademark.

There are a few parties claiming ownership of the Tavern on the Green trademark, recently appraised at $19 million according to the New York Times. The current licensee, the LeRoy family, has run the restaurant since 1974 when they turned a former sheep barn into a magnificent restaurant known around the world by name.  Warner LeRoy licensed the space from the City of New York under the name Tavern on the Green Limited Partnership.  Mr. LeRoy filed federal trademark applications for the name which registered with the PTO in 1981.  The Tavern’s gross revenues in 2007 were $38 million, making it the second highest-grossing independently owned restaurant in the United States (according to Wikipedia).

Apparently, in August 2009, the LeRoy family lost a bidding war for a new 25-year contract with the New York City Department of Parks and Recreation to Dean J. Poll, who runs The Central Park Boathouse.  However, on September 9, 2009, months before the LeRoy’s license expired, they filed for Chapter 11 bankruptcy  with 452 listed creditors leading to the current controversy over the Tavern on the Green trademark.

The second party claiming ownership of the trademark is New York City.  According the another article, the City asserted ownership of the trademark at the bankruptcy proceedings claiming rights dating back to the original opening of the restaurant in 1934.  Apparently, as a back-up plan the City has registered the name Tavern in the Park with New York State.

Based upon the limited facts available, it is very difficult to determine who has the better claim to ownership of the Tavern on the Green mark.  The creditors certainly hope the LeRoy family prevails but, if so, will the mark survive?  It will be interesting to watch.

As I was riding to the airport this past weekend in the back of a New York City cab, I was struck by a video that was playing on the in-seat TV. The video showed a barge (or some other type of boat, I don’t claim a wealth of nautical knowledge) unloading subway cars into the ocean. The volume was turned down, so I was unable to hear the audio. I naturally assumed that the video was a breaking story about some unsavory character that had been caught red-handed improperly disposing of city trash. However, when the video wrapped up, a go-green logo popped up. It turns out that this “ocean dumping” was actually being marketed as environmentally-friendly reef building.

I had a couple reactions.  First, I was amazed that somehow, someone had convinced us that dumping trash in the ocean was not only okay, but was something to be applauded. (Disclaimer: I’m not passing judgment on the merits of trash dumping generally, or subway car dumping specifically.)  Second, I reflected on the importance of a complete message. Had I not caught the closing graphic, I would have entirely missed the actual message being conveyed. Or worse, I could have gotten the wrong message. Instead of this or this, I saw this. It made me realize that evaluating potential misinterpretations of your message is almost as important as communicating the message in the first place.