Art Market
MoMA’s Lawsuit against a Matcha Shop, Explained
MOMACHA storefront,  2018. Courtesy of MOMACHA.

MOMACHA storefront,  2018. Courtesy of MOMACHA.

Momacha, a small matcha café on Manhattan’s Lower East Side, is fighting back against a trademark infringement lawsuit brought by the Museum of Modern Art, otherwise known as MoMA. On Monday, the café—whose name was originally styled MoMaCha—moved to dismiss MoMA’s claim of trademark dilution.
The motion came just days after Momacha filed to oppose MoMA’s request that a federal judge prohibit the store from operating under its current name as the case proceeds.
The dispute dates back to April, when MoMA first sued the café in the United States District Court for the Southern District of New York. The museum asserted that the name and use of its distinctive capitalization, font, and its other design elements could confuse customers, possibly causing some to connect the museum (which also runs cafés and restaurants) with the matcha locale, which serves varieties of green tea and also shows art.  
Momacha co-founder Eric Cahan says he wasn’t thinking about the museum when he created Momacha, and that the name was partially inspired by a friend’s child who said “mo” instead of “more.” The plan for Momacha, he says, was to have a nimble café that exhibits and sells original artwork, and reinvents its visual identity each time it puts on a new show (the space is currently exhibiting work by ). He doubts that anyone would be confused.
“We’re, like, a very fun space,” Cahan said. “They’re a stodgy old museum doing crappy exhibitions at this point.”
The MoMA would likely contest that description, just as it has contested Momacha’s use of what the museum says is its famous brand and visual identity, accusing the café of trademark infringement and dilution. The museum claims that Momacha is weakening the uniqueness of its famous brand by employing its trademark without permission. Momacha, in its motion to dismiss filed on Monday, argues that MoMA has failed to show that its mark is famous to the general public, fame being a foundational legal element of trademark dilution.
“You have to be Coca-Cola, you have to be Nike, you have to be Apple—you have to be a mark that is known worldwide,” said Christopher B. Spuches, Momacha’s attorney. “The MoMA mark just isn’t that. It is a black-and-white mark with letters.” Spuches also argues that the museum has not defended its brand, pointing to other art institutions whose names are similar to MoMA’s but have not faced legal action from it, such as SFMOMA in San Francisco.
MOMACHA’s new identity, 2018. Courtesy of MOMACHA.

MOMACHA’s new identity, 2018. Courtesy of MOMACHA.

MOMACHA’s updated storefront, 2018. Courtesy of MOMACHA.

MOMACHA’s updated storefront, 2018. Courtesy of MOMACHA.

The New York museum, which holds numerous federal trademarks involving the word “MoMA,” asserts in court documents that its mark is, indeed, world-famous. Ultimately, whether the museum triumphs on this point will depend on the evidence it puts forward to support its claim.
“We welcome creativity and entrepreneurship in our communities. However, MoMaCha’s name, logo, and design of their promotional materials clearly infringe on our trademark in an effort to confuse the public for their own profit,” said Rob Baker, director of marketing and creative strategy at MoMA, in an emailed statement.
MoMA’s complaint cited one instance of real confusion—an important factor in trademark infringement cases—between the institution and Momacha, in which the museum was contacted by an outside attorney asking about the display of a client’s work at the café. The museum claims in its complaint that this is the first time it has had to file a lawsuit to defend its mark.
How the judge will rule in this case depends, to a large extent, on whether the court finds that there is a likelihood of confusion between MoMA, an art museum that also manages restaurants and cafés, and Momacha, a New York matcha café that exhibits artwork. This analysis will be central to whether the court decides that the museum’s legal brand rights extend to prohibiting Momacha from operating.
“The larger question is: To what extent does the Museum of Modern Art own rights in the MoMA trademark, and how far does that protection extend?” said Andrew Gerber, a lawyer who handles copyright and trademark disputes and is a founding partner at Kushnirsky Gerber PLLC, but is not involved in this case.
The museum followed its initial April 17th complaint with a motion for a preliminary injunction filed three days later, asking a judge to immediately prohibit Momacha, which opened last month, from using an infringing name until the underlying merits of the case can be decided.
In response, the café submitted a brief on May 14th, arguing that an injunction isn’t warranted because, among other reasons, it has taken steps to distance itself further from the museum. Momacha changed its logo design—including font and capitalization—and added a disclaimer to its website, store, and receipts, which asserts that the café has no relationship to any museum.
For now, the possibility of a settlement seems remote. Cahan says his attempts to reach an amicable solution with MoMA—including the addition of an apostrophe or dash to the store’s name to further differentiate it—have been rebuffed. MoMA said it, too, has attempted to reach a settlement without success.
“We reached out to them in good faith and asked them to stop all use of marks essentially identical to ours, but they declined,” Baker said.
Cahan is adamant that he’s not going to completely change his café’s name, despite the possibility of protracted litigation. “I’m not going away because the MoMA wants to bankrupt me with legal fees,” he said. “That’s not going to happen.”
Isaac Kaplan is an Associate Editor at Artsy.