MoMA and New York City Shut Down Trademark Infringing Eateries on the Same Day

Disputes over restaurant trademarks are not exactly rare. However, we couldn’t help noticing that on September 28, 2018, injunctions issued hours apart in two restaurant name disputes involving high profile New York marks.

City of New York v. Tavern on the Green

The iconic Tavern on the Green restaurant in Central Park is owned by the City of New York, but has been operated by concessionaires since it opened in 1934. In 1978, one of those concessionaires filed a federal trademark application for TAVERN ON THE GREEN for restaurant services. A Court found that the application contained a number of false and misleading in a number of respects, including its failure to disclose that the mark was only licensed – not owned – by the applicant. These falsehoods went unnoticed at the time, but they came to the fore decades later in the context of the concessionaire’s bankruptcy petition. In 2010, the Southern District of New York ordered the registration canceled, but then rescinded that order and instead had ownership of the registration transferred to the City.

A successor concessionaire emerged from the bankruptcy and, in 2011, entered into a new agreement with the City under which it could keep using the mark for restaurants outside New York, and for other products such as cooking oil, as long as it did not (among other things) trade on the goodwill of the original Central Park location.  The parties both used the mark until 2017, when the City filed a new suit alleging that the concessionaire was breaching the agreement by making repeated references to “Central Park” and allusions to the “culinary experience of New York City’s famous restaurant.”

On September 28, 2018, the Southern District of New York granted summary judgment for the City on its breach of contract and trademark claims. The Court has yet to determine the scope of the injunction or the City’s entitlement to damages, and the City’s state law claims are still pending.

Museum of Modern Art v. MOMACHA IP

Even before you could eat at Tavern on the Green, you could see paintings at New York’s Museum of Modern Art, which first opened its doors in 1929. The museum has been known worldwide as the “MoMA” for about fifty years, and has offered restaurant and café services under that name since 1993. It registered the MOMA trademark in 2003.

In April 2018, an entity called MoMaCha opened a café on Manhattan’s Lower East Side. MoMaCha displayed its name using a font and color scheme similar to that used by the museum, and even featured a modern art gallery on the premises. MoMA was in court before the end of the month, asking for an injunction against MoMaCha’s alleged infringement.

On September 28, 2018, the Southern District of New York granted the museum’s request for a preliminary injunction after a review of the Polaroid likelihood of confusion factors. The Court found that the MOMA mark was strong (notwithstanding the existence of the SFMOMA and MoCA museum marks) because it had acquired secondary meaning and because it was arbitrary, at least as to café services. The parties’ respective marks were similar and so were their services: both parties displayed art and offered café services in New York City. MoMaCha’s attempts to argue that the parties operated in unrelated spheres were not helped by its own social media accounts, which used hashtags like #modernart and #museum in association with its name.

The museum was also able to point to multiple anecdotal instances of actual confusion, including one consumer who opined that trying the new MoMaCha latte would be a great excuse to visit the museum. Another incident was even more to the point: a consumer posted a Yelp! review for MoMaCha stating: “thought it was affiliated with the moma.”

MoMaCha argued that a preliminary injunction was inappropriate because, after the lawsuit was filed, it had changed its logo to a new style (resembling a stencil pattern) and started using all capital letters, and because it now accompanied the logo with a disclaimer. The Court was unmoved by this argument because MoMaCha was still using the original style on social media, because the new style also bore similarities to the MoMA mark, and because there was no evidence that the disclaimers had eliminated consumer confusion.

The preliminary injunction prohibits MoMaCha from displaying the name “MoMaCha” or otherwise exploiting the MOMA mark, and from using the domain name, during the pendency of the proceedings.

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