Policing trademarks is as important as registering them. Policing requires that you monitor the world of commerce to ensure that others are not using your marks — or confusingly similar marks — and, if so, that you take immediate action against the infringers. There is little point in owning a trademark if you are willing to grant infringers free rein to use your trademark and benefit from its goodwill.
Enforcing the trademarks, however, must be done with care, particularly in this era of social media when messages offending someone’s sensibilities can spread like wildfire and ultimately affect the messenger company’s bottom line. Consider the example of BrewDog, whose lawyers sent a more formal and unsympathetic letter to a small pub with the same name as one of its beers. This resulted in negative press and harm to BrewDog’s reputation as rebels against corporate breweries sought to impugn BrewDog’s reputation on social media. BrewDog backed down in an effort to repair its reputation (oh yes, they also blamed their lawyers). That was several years ago but the lesson is still a good one.
David Chang’s Chili Crunch situation is a case in point. Chang, a “celebrity chef” and founder of Momofuku restaurants and related food goods, applied for ownership of the CHILI CRUNCH trademark for “Condiments; sauces; food flavorings being non-essential oils; chili oil for use as a seasoning or condiment; chili oils being condiments.” The goods and services bear a close resemblance to the common identification of “chili crisp,” which Wikipedia describes as “a type of hot sauce, originating from Chinese cuisine, made with fried chili pepper and other aromatics infused in oil, sometimes with other ingredients. Multiple regional, homemade, and restaurant-original versions exist across China.” Wikipedia cites three synonyms for the hot sauce: Chili crisp, chile crisp, or chili crunch. Chang filed his trademark application with the USPTO on March 29, 2024, and promptly began sending cease-and-desist letters to the myriad of restaurants and food producers that were using the same or a confusingly similar term for “his” chili sauce. Oh, the havoc did he wreak. Here is a sample of some of the reactions recorded by Today:
“This is so uncool,” Kerry Diamond, founder of Cherry Bombe magazine and former coffee shop owner, wrote in an Instagram caption. “Dave was once the little guy.”
Following all the brouhaha, NBC News reported that David Chang issued an apology on his podcast:
“First and foremost, I want to apologize to everyone in the AAPI community who’s been hurt or feels like I’ve marginalized them or put a ceiling on them by our actions,” Chang said. “There’s a lot of chefs that I’m friends with. There’s a lot of people that are upset, customers, and that’s the last thing — literally the last thing — that I wanted to happen.”
He continued, adding, “I spent the greater part of my adult life trying to bring light to Asian food, Asian American food, Asian identity, what it means to be Asian American. I understand why people are upset and I’m truly sorry.”
“Had I known, or Momofuku known, that chili crunch was a tautology, basically the same as chili crisp, we would have never named it chili crunch,” he said.
Chang concludes that Momofuku will no longer continue enforcing the trademark.
So, what went wrong? Was it bad judgment? Yes, one could lay blame on David Chang. He totally misread the importance of the crunchy chili sauce to the Asian food community. The notion that he could monopolize the food genre was an anathema. Is the USPTO to blame? Not really, Chang’s trademark application had not even been examined before his legal team went full bore on enforcing his trademark rights. As of this date, the application is still pending, and, unless Chang abandons it, the USPTO may reject it on grounds that CHILI CRUNCH is generic and not sufficiently distinctive. We will wait and see. Of course, in view of Chang’s apology (and if he abides by it), this will have no consequence.
More to the point, the case underscores how commoditizing a cultural staple under a generic name may lead to accusations of cultural misappropriation, no matter if the appropriator is of Asian heritage. In an article in Trademark Attorney, Curtis Fuller, wrote:
By attempting to monopolize a term deeply rooted in Asian culinary traditions, Chang inadvertently triggered accusations of cultural appropriation and corporate bullying. The condiment has existed in China since at least 1790 when a recipe for a fried chili oil condiment appeared in The Harmonious Cauldron. Today, almost every restaurant in China and Taiwan makes a house chili oil. Tao Huabi began bottling and selling Lao Gan Ma in 1997. The product made her a billionaire and is responsible for the spread of chili crisp’s popularity around the globe.
Bottom line, be careful policing your trademarks and, if you’re not sure, consult a trademark attorney.
— Adam G. Garson, Esq.