By Lisa Kava

There has been much ado about mochi for two New York City dessert shops in the midst of a legal battle. Mochidoki an ice cream company founded in 2015, with stores on the Upper East Side and in Soho, is suing Mochi Dolci, an Upper West Side café, for trademark infringement. Mochi Dolci, which opened in August 2022 at 222 West 79th Street, was founded by Upper West Siders Leo and Aoommie Cutone. The lawsuit claims that the two names are “nearly identical” and “likely to cause confusion.”

Mochi,  a Japanese sticky dessert is a “chewy rice cake molded from steamed mochigome, the short-grained sticky rice typically found in Asia,” as described in the complaint. Mochidoki serves mochi ice cream, Mochi Dolci serves mochi donuts. Both cafes serve  boba tea, bubble tea drinks made with milk or fruit juice with tapioca or fruit pearls at the bottom.

On June 8, 2022, Cutone made a presentation to the Business & Consumer Issues Committee of Manhattan Community Board 7, regarding his plans to open Mochi Dolci.

Claudio LoCascio, President and CEO of Mochidoki, attended the meeting with concern. “We heard about this new store opening with a name nearly identical to ours,” LoCascio told West Side Rag in a phone interview. “We reached out right away to inform them that we have a trademark on the name. We felt the names were very similar and would confuse people.”

On June 9, a lawyer representing Mochidoki (aka Gordon Desserts) sent a letter to Mochi Dolci’s lawyer asking that Cutone use a different name. The letter stated:

“MOCHI DOLCI is nearly identical to our client’s MOCHIDOKI, sharing a nearly identical spelling. When used in the café, food, and dessert space, the commercial impression is identical and your use of MOCHI DOLCI is likely to cause confusion, or to cause mistake, or to deceive Mochidoki and the Mochidoki services or to deceive, as to the affiliation, connection, or association of your company’s goods and services with Mochidoki and the Mochidoki services described above. Accordingly, this proposed use of the MOCHI DOLCI mark would be trademark infringement, potentially entitling Mochidoki to damages and injunctive relief.”

On July 5, Mochi Dolci’s lawyer responded as follows:

“DOLCI and DOKI do not share nearly identical spelling. Two of the five letters in DOLCI are not contained in DOKI. The two words do not share a common language. MOCHI DOLCI  is two words where MOCHIDOKI is one. The pronunciation of the two words is distinctly different.”

Subsequent letters went back and forth between the lawyers throughout the fall of 2022, but an agreement was not reached. Mochidoki filed a lawsuit against Mochi Dolci on December 16, 2022.

Leo Cutone told West Side Rag that he was unaware of Mochidoki when his family created the name. “Mochi means sweets in Japanese and dolci means sweets in Italian, so the name combined our family heritages. We conducted a trademark search and did not find one instance in the register. We found 700 other businesses with the word mochi,” he told the Rag. “Did Mochidoki pick us to sue because we are a small family business? They have some nerve demanding that we change our name, especially since they are not the boss of us, and do not own the word mochi. We don’t even make mochi ice cream,” he exclaimed.

“I have no idea if they knew of our name but it doesn’t matter,” LoCascio told the Rag. “The name is almost identical to ours and causes confusion.” LoCascio also notes that the use of the word “mochi” is not in question. His attorney’s stated, “To be clear, our client is not claiming exclusive rights in the word, ‘mochi.’ However, the use of this word with cafes, food, or dessert products or use with the “dolci” suffix clearly runs afoul of Mochidoki’s longstanding exclusive rights.”

LoCascio maintains that legal action could have been avoided had Cutone cooperated upfront.

“We made them aware of it well before they opened, and at that point it would be have been easy to change. They were not willing to engage in conversation and opened the restaurant anyway,” LoCascio told the Rag.

Cutone initially told West Side Rag that he was contacted by Mochidoki for the first time in October 2022, after Mochi Dolci already opened. We asked Cutone about the June 9 letter. “We never received that letter until October,” he said. WSR then asked Cutone how his lawyers were able to respond on July 5 if he was unaware of the June letter. “I must have gotten confused on the timeline,” he said.

LoCascio says he does not have a vendetta against Cutone, rather he wants to protect the company he has worked to build. “We have nothing against Mochi Dolci. We are a small business, too, and have been investing heavily in our brand. We have intentions to grow. It is possible that we would even open on the Upper West Side. It would be easy for a consumer to get confused by the names.” Mochidoki sold mochi ice cream online and to supermarkets and restaurants before opening their Upper East Side store in 2021 and Soho store in 2022. The company plans to open in Los Angeles in 2023.

But Cutone believes he is being bullied.  “He is suing us because we are small. If I capitulate they will use this precedent and sue someone else,” he told the Rag. Cutone has started an online petition claiming Mochidoki is a “trademark bully.”

Both sides insisted in emails to WSR that they wish to settle the matter “amicably.”

“We have been in touch with Mr. Cutone since last June, and raised their name as a concern well before the store opened,” David Boag, Mochidoki’s lawyer wrote. “Mochidoki is excited at the success of its two cafe locations, which have allowed it to connect with customers in a different way. Unfortunately, there is a high risk of customer confusion where another party has chosen a nearly identical name for nearly identical services. We are in discussions with Defendants and hope to reach an amicable resolution.”

“Mochi Dolci respects the intellectual property of others and believes its use and registration of the mark Mochi Dolci in connection with boba tea beverages and donut shop and restaurant services currently offered exclusively through its West 79th Street establishment in New York does not infringe the Mochidoki mark,” Jonathan Berschadsky, Cutone’s current lawyer wrote. “The request that Mochi Dolci cease use of the Mochi Dolci mark far exceeds the breadth of its trademark rights. Nevertheless, we are trying to work this out amicably with Mochidoki and hope to put this behind us soon.”