MoFo has helped the Museum of Modern Art (MoMA) block a cafe from using the mark MoMaCha.
If that sounds confusing, well, that’s part of the problem U.S. District Judge Louis Stanton of the Southern District of New York was trying to resolve last week by issuing a preliminary injunction.
New York’s MoMA became concerned last spring when a company calling itself MoMaCha opened an art gallery and cafe on the Lower East Side within a few blocks of MoMA’s design store.
MoMA accused MoMaCha of using a confusingly similar name and font. The museum also noted that MoMaCha serves beverages infused with cannabidiol, decorated with a foam marijuana leaf—something that is not on the menu at MoMA. Nevertheless, one social media user posted a photo of the drink and described it as “great excuse” to visit MoMA.
MoMA brought aboard a Morrison & Foerster team that included partners Jennifer Lee Taylor and Jamie Levitt, plus associates Sabrina Larson and Madeleine Gully.
MoMA argued that MoMaCha had simply taken its famous mark and appended “cha,” a word for tea. MoMaCha said the name actually is a play on More Matcha, a reference to green tea. MoMaCha also argued that it has displayed disclaimers on its doors and website saying it’s not affiliated with the museum. It says the museum came to the court with unclean hands because it’s a large entity trying to “bully” MoMaCha and cripple its business.
Stanton brushed the latter claim aside. “There is no showing that the museum has unclean hands or has pursued this litigation in bad faith,” he wrote in a 37-page order.
Rather, he wrote, “It is more likely than not that MoMaCha intentionally copied the museum’s mark in bad faith when it adopted its old logo. As discussed above, the marks are strikingly similar and almost identical in terms of the font style, coloring, and capitalization.”
MoMA proved that its marks are descriptive and have acquired secondary meaning through publication in media ranging from The New York Times to Art in America. Although San Francisco calls its modern art museum SFMOMA, and North Miami’s Museum of Contemporary Art goes by MoCA, those museums are in different cities, which reduces the likelihood of confusion, Stanton wrote.
MoMA “is strong and distinctive, and identifies its goods as coming from the museum,” Stanton wrote. “As a result, the use of a similar mark on a product from a different source is likely to confuse consumers into associating the product with the museum.”
Social media posts about MoMaCha that used the hashtags “#museum,” “#gallery,” “#newyorkart,” and “#modernart” could have added to that confusion, Stanton added.
All of this added up to an injunction blocking MoMaCha from using or displaying the MoMaCha mark, and shutting down its website momacha.com. (It now redirects to a skeleton site at momacha.nyc.)
MoMaCha was represented by Christopher Spuches of Agentis PLLC. He told artnet.com that, “We respect the court’s decision, but respectfully disagree that MoMaCha and its products infringe on any of MoMA’s intellectual property.”