Injunction granted to MoMA in infringement case against café

A federal district court judge in New York City has ordered a Manhattan café to cease using the name “MOMACHA” on the grounds that it is likely to create trademark confusion with MoMA, the trademarked acronym used by the Museum of Modern Art.

On September 28, Judge Louis L. Stanton of the District Court for the Southern District of New York granted MoMA’s application for an injunction to force the café to stop using the name MOMACHA and related URLs pending the final outcome of the litigation. MoMA filed its request for the order immediately after it first brought its trademark infringement claim against the café on April 17 of this year.

In its initial claim, MoMA argued that the café’s use of Helvetica-like font, distinctive capitalization (MoMA vs. MoMaCha), and similar name would be likely to confuse customers and lead to the misunderstanding that the two entities are affiliated. In his 37-page decision granting the injunction, Judge Stanton agreed with MoMA on every point, ultimately deciding that “[t]he close proximity of the parties’ goods and services is likely to result in the belief that MOMACHA is connected with the museum.”

In U.S. trademark law, the likelihood of causing confusion in the minds of consumers is a common ground for infringement lawsuits.

Following Judge Stanton’s ruling, the café has changed its name to MAMACHA and its URL to mamacha.nyc. Further, New York Times has reported that the website now includes a disclaimer that MAMACHA “has no affiliation with the Museum of Modern Art” and that a spokeswoman stated that the café has ordered new cups with a different logo. However, these moves appear unlikely to lead to a resolution of the underlying dispute. In the same article, the Times reported that, on October 3, MoMA’s lawyers responded with another cease-and-desist letter, claiming that the minor change “merely indicates [the café’s] continued contempt for MoMA’s trademark rights.”

Throughout the litigation, the café’s proprietor, Eric Cahan, has insisted that the name MOMACHA was inspired by a child’s pronunciation of the phrase “more macha” and not by the museum or its branding. Further, in previous court filings opposing the infringement claim, Cahan has asserted that MoMA and its trademarks are not sufficiently well-known worldwide to make out a claim for trademark dilution, and that MoMA has failed to take steps to protect its trademarks from other potentially infringing uses, such as a San Francisco museum’s use of the acronym SFMOMA. MoMA received trademark protection for its acronymic mark in 2003.

MAMACHA, which opened in April 2017 in Manhattan’s trendy Bowery District, offers a number of drinks made with macha – a powdered green-tea extract – as well as lattes, ice cream, and “edible” products infused with marijuana extracts such as CBD and THC.

In addition, the café showcases art and photography on its eye-catching Instagram page. The café’s activities relating to displaying and selling artwork were one of the reasons the court found a likelihood of trademark confusion. Judge Stanton noted that “[b]oth the museum and MOMACHA display modern artwork and offer cafe and beverage services in an art gallery setting . . . [and] they also both sell items in relation to the art they display.” On this basis, according to the judge, it could reasonably be expected that people may assume the two entities are related.

Author: Wes Dutcher-Walls, 2018/2019 Articling Student-at-law