Museum wins injunction against tea shop with similar name – MoMA v. MoMaCha

The purpose of trademark law is to protect consumers from inferior quality products. Trademark law grants the owner of a trademark the exclusive right to brand their products with a trademark. If someone other than the trademark owner brands products with a trademark than that can be considered trademark infringement. However a trademark owner is not granted an absolute monopoly to their trademark. There are limitations to the exclusive rights granted to a trademark owner. Because many trademarks rely on words commonly used in everyday language, a trademark owner cannot enforce his rights if his trademark is legitimately used in a different context.

In order to stop trademark infringement, the senior user, the first business to adopt and use a particular trademark in connection with its goods or services, must prove likelihood of confusion. If consumers look at a product with a trademark are confused about the source of the product that is strong evidence of trademark infringement. For instance two car companies both using the same trademark, it is easy to see how consumers would get confused about who actually produced the car. But in the case of different products like cars and fast food, it is less likely that consumers would be confused about who produced a product.

THE MUSEUM OF MODERN ART v. MOMACHA, 18-cv-03364 (S.D.NY 2017) is a case which illustrates a trademark owner successfully defending its trademark against infringement. The plaintiff in the case is the Museum of Modern Art in New York City. Museum of Modern Art frequently is referred to as MoMA for short. MoMA has been used as the museum’s trademark on virtually all of the museum’s advertising and merchandise since 1967. MoMA is printed in a consistent and deliberate fashion, using the a font based on the ITC Franklin Gothic font. MoMA is an internationally recognized art museum and has more than two million visitors a year. MoMA operates three retail stores in New York City which sell merchandise related to the art which is being displayed at the museum. MoMA has operated a restaurant and cafe in the museum since 1993.

MoMaCha is an art gallery located in New York City, that opened in April 2018. MoMaCha’s location is very close to one of the retails stores operated by MoMA. MoMaCha displays works of art which customers can purchase. In addition to selling the art on its walls, MoMaCha sells novelty products related to art and simple foods and beverages. Products that are branded with MoMaCha use a font which is very similar to the ITC Franklin Gothic font. After opening MoMaCha attempted to register a trademark on MoMaCha and MoMa for restaurant services.

MoMaCha’s trademark application was probably the final straw which forced MoMA to file a trademark infringement lawsuit. In it’s lawsuit MoMA requested a preliminary injunction to stop MoMaCha from using MoMA’s trademark until the court reaches a verdict. It is typically difficult for a plaintiff to get a preliminary injunction because the plaintiff must show a likelihood of success on the merits and that the plaintiff will suffer irreparable harm if the preliminary injunction is not granted.

MoMaCha opposed the preliminary injunction on the grounds that it had changed the font and spacing of MoMaCha on products to make it look less like MoMA’s trademark and that MoMaCha was a contraction of “more matches”, not an attempt to capitalize on the MoMA trademark.

The court granted the preliminary injunction. The court found that even though MoMaCha had changed some signs, it was still selling products with the original version of MoMaCha and using MoMA on social media posts. If a preliminary injunction was not granted the court felt there was nothing stopping the defendant from using the original trademark. The court also found that it was likely the plaintiff would prove consumer confusion at trial.

The trial is not over yet, but given that the court granted the preliminary injunction, it seems that the defendant will have a difficult time winning this case.

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