339 F. Supp. 3d 361
S.D.N.Y.2018Background
- Plaintiff Museum of Modern Art (MoMA) operates exhibitions, retail (MoMA Design Stores), restaurants/cafés, and extensive branded programs and publications; it has long-used the MoMA/MOMA mark and owns multiple trademark registrations.
- Defendants MOMACHA IP LLC and MOMACHA OP LLC operate a Lower East Side café/gallery called MOMACHA (originally stylized "MoMaCha") and run momacha.com; they sold art, merchandise, and beverages and used logos resembling MoMA’s look.
- MoMA sued and moved for a preliminary injunction enjoining MOMACHA from using/displaying/promoting the MOMA or MOMACHA marks and the momacha.com domain pending litigation.
- MOMACHA changed its logo after suit and added disclaimers of affiliation, but continued to use its old logo on some items and social media; it also filed trademark applications for MOMACHA and MOMA.
- The court analyzed likelihood of confusion under the Polaroid factors, trademark dilution (fame), irreparable harm, unclean hands defense, and the balance of hardships, and granted the preliminary injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of consumer confusion (infringement/unfair competition) | MoMA: marks are strong/famous; MOMACHA’s old logo closely resembles MoMA’s font, styling, capitalization, and presentation causing confusion. | MOMACHA: changed logo and disclaimers remove confusion; different business type and intent; no surveys show confusion. | Court: Likelihood of confusion found (Polaroid factors weigh for MoMA); both old and new logos considered because old logo still used. |
| Trademark dilution (fame) | MoMA: mark is nationally famous and distinctive from long use, registrations, publicity, large audience and sales. | MOMACHA: mark not sufficiently famous. | Court: MoMA’s mark is famous; MoMA likely to succeed on dilution claim. |
| Irreparable harm | MoMA: ongoing use creates loss of control over reputation and goodwill not remediable by money; instances of confusion support presumption. | MOMACHA: harms to defendant are monetary and compensable. | Court: Irreparable harm established; presumption applies upon likelihood of confusion. |
| Balance of hardships & equitable defenses (unclean hands) | MoMA: injunction necessary to prevent further harm; equitable relief proper. | MOMACHA: injunction would impose substantial business costs and MoMA is bullying (unclean hands). | Court: Hardships tip to MoMA (defendant’s costs are quantifiable); no unclean hands shown. |
Key Cases Cited
- Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70 (2d Cir. 1979) (standard for preliminary injunction: irreparable harm plus likelihood of success or serious questions and hardship balance).
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (factors for likelihood of confusion analysis).
- Gruner + Jahr USA Publ’g v. Meredith Corp., 991 F.2d 1072 (2d Cir. 1993) (plaintiff must show mark entitled to protection and likelihood of confusion).
- W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d 567 (2d Cir. 1993) (actual confusion and related goods analysis).
- Virgin Enters. Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003) (actual consumer confusion strongly probative).
- Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2d Cir. 1999) (elements of trademark dilution claim).
- Weight Watchers Int’l, Inc. v. Luigino’s, Inc., 423 F.3d 137 (2d Cir. 2005) (presumption of irreparable injury upon showing likelihood of confusion).
- Lang v. Retirement Living Publ’g Co., 949 F.2d 576 (2d Cir. 1991) (assessment of mark distinctiveness and related Polaroid factors).