MoMA v. MoMaCha: a Trademark Attorney’s Perspective

The Museum of Modern Art (MoMA) is suing MoMaCha, a Manhattan-based coffee shop , art gallery, and gift shop, for trademark infringement. MoMA has filed an Opposition against MoMaCha’s federal trademark application and a lawsuit against MoMaCha in Manhattan’s federal court.

Does MoMA have a good case against MoMaCha?

I now live in the Lower East Side of Manhattan and I’m opening a new mixed-use gallery, studio, and office space about five blocks from MoMaCha, so this case is relevant to me. I’ve seen all of the hype for MoMaCha in the local press, and I’ve even gone inside the store. I wondered how they had worked out their trademark situation, thinking, “there’s no way somebody would open an art gallery and cafe in Manhattan using MoMA’s name, in a clear reference to the world-famous Manhattan museum, without making some kind of arrangement with MoMA.”

 

Well, I was wrong. Apparently somebody had the arrogance to think they could actually open what is essentially a counterfeit MoMA gift shop without suffering any legal consequences. MoMaCha has said, in the store’s defense, that it isn’t a museum and isn’t competing with MoMA, stating:

“Our platform is a hybrid: matcha bar, flexible exhibition space, and all around community that is organically connected to the arts in countless ways but never have we represented ourselves as having any affiliation to the MoMA, nor are we interested in upholding the responsibility of such,” a rep from MoMaCha told Law 360 (subscription required). “We’re not only working with artists, we’re activating our space with set designers, pastry chefs, schools and all around people who have a story.”

What were they thinking?

MoMaCha’s legal argument is terrible. MoMaCha is directly competing with MoMA. It displays modern art and is using a famous modern art museum’s name to do it. This is an absurdly simple case. The idea that selling coffee and retail goods and exhibiting non-visual art somehow exempts MoMaCha is ludicrous, even ignoring the obvious reality that MoMA and other museums almost always have cafes and gift shops, and frequently have unconventional exhibits of the types described by MoMaCha.

As MoMA noted in its lawsuit, people have already assumed the two establishments are related. Presumably several thousand people, like me, have assumed that this coffeeshop couldn’t exist without some kind of licensing arrangement. MoMaCha will be lucky if the only consequence it endures is having to change its name; MoMA has already suffered from this false association, and MoMaCha can’t claim it wasn’t aware of the existing trademark rights of MoMA.

Quite the opposite: MoMaCha was clearly, undeniably founded with the intent of leaching from the goodwill and brand recognition developed by MoMA over its 88-year history. Two of the store’s three founders, Eric Cahan and Nev Schulman (best known as the filmmaker behind the “Catfish” documentary and television show), are experienced art entrepreneurs and should really know better. Apparently they even received a cease-and-desist letter from MoMA in March before opening, and disregarded it.

What kind of hubris leads people to do something so short-sighted and, arguably, distasteful? It’s not as though they’re a scrappy ma-and-pa store being harassed by a giant, evil corporation like Nestle. I’ve fought countless large bullies on behalf of small businesses, even occasionally winning (See SKINNY COW v SKINNY SQUARES). This is not one of those situations; this is three well-off, experienced businesspeople ripping off the name of a non-profit museum, however big it may be, and forcing it to waste its money on legal fees.

My Unsolicited Legal Opinion

I have to assume MoMaCha’s founders never bothered to talk to an attorney while developing their store. Even a traffic attorney could have told them this was a horrible idea. Presumably they have a lawyer now, and if I were that lawyer, I would advise them to do everything they can to get MoMA to sign a settlement through which MoMaCha agrees to completely change its name and destroy all branded merchandise and signage in exchange for MoMA agreeing not to press for damages.

There is no possible way that MoMaCha can win here. The best possible scenario for this coffeeshop and its founders is that they only have to pay for a rebranding of their store, and not for MoMA’s attorney’s fees and the monetary value of the consumer confusion and dilution of MoMA’s brand caused thus far.

I imagine the MoMaCha founders’ next planned venture is a Manhattan store called Katz’s DelicaTeassen, which sells pastrami sandwiches like the famous Manhattan deli, but is exempt from hundreds of years’ worth of U.S. trademark precedent because it also sells tea.