MomoMilk LLC, the owner of trademark registrations to the word mark “MILK BAR” and design marks for a stylized versions of “milk,” has filed a federal lawsuit against Milk Bar, LLC in Illinois. The plaintiff claims that the defendant has infringed on its trademarks based on the defendant’s use of a confusingly similar stylized design mark for “jojo’s milkBAR” in connection with a bar and confectionery it opened in Chicago.
The original MILK BAR, founded by chef Christina Tosi in 2008, has become a popular brand in New York City, Boston, Washington D.C. and other large U.S. cities. Its well-known dessert items include “CRACK PIE,” which was recently renamed “Milk Bar Pie,” Birthday Cake and various Cereal Milk soft serves. Since 2011, its online store has brought in eight-figure revenues, per the Complaint. Further, the brand has brokered deals with apparel-maker Madewell, fitness company SoulCycle and beauty company Glossier.
The Complaint alleges trademark infringement against Chicago-based Milk Bar, LLC despite the plaintiff’s acknowledgment that it has no brick-and-mortar presence in Chicago. The plaintiff states that it has acquired name recognition in the Chicago market and that it is considering opening up a MILK BAR location in Chicago in the future.
MomoMilk, LLC claims that the defendant is simply seeking to trade off of its success. Importantly, it cites to an instance of actual confusion in the Complaint, which should strongly assist the plaintiff as it attempts to prove a likelihood of confusion.
There are many other examples of actual confusion, including the following.
Additionally, the plaintiff points out that the defendant has purposefully capitalized the first letters when advertising that it has become Chicago’s first Milk Bar. That further draws an association with the plaintiff, as the defendant seems to not be characterizing itself as one of many milk bars, but the Milk Bar.
Another strong component of the plaintiff’s claim is that it was able to find an article where the writer noted the similarity of defendant’s name to plaintiff’s name. “The similarity in names may bring comparisons to Milk Bar, the highly acclaimed bakery chain founded by pastry chef extraordinaire Christina Tosi in 2008 in New York,” wrote the author of the piece.
The plaintiff wants a permanent injunction preventing the defendant from using any marks similar to those owned by the plaintiff, destruction of all of defendant’s products that infringe any of MomoMilk’s trademarks and monetary damages, including punitive damages and repayment of attorney’s fees.
Separately, and prior to the institution of the lawsuit, the defendant filed an application with the U.S. Patent and Trademark Office to register the mark “JOJO’S MILK BAR,” disclaiming the words “MILK BAR.” The application was filed on an intent-to-use basis, was never updated to show actual use and was published for opposition on April 2.