When enforcing IP rights, it’s important to keep the potential PR consequences in mind.
Especially when the trade mark is weak sauce to begin with.
David Chang, famed restaurateur and the face behind the Momofuku brand, has had to make an embarrassing u-turn after some heavy handed enforcement tactics backfired.
It was at this moment, he realised he Momofuku’d up.
The history of the CHILE CRUNCH trade mark
In 2022, Momofuku was sued for infringement in respect of a trade mark registration for CHILE CRUNCH. After presumably a decent settlement payment, Momofuku’s IP holding company acquired the rights to a trade mark registration for CHILE CRUNCH in the US.
It’s fairly questionable trade mark to begin with (chile being an alternative spelling for chilli, crunch being a plainly descriptive term for condiments) - but the US trade mark office moves in mysterious ways. Examination is a subjective process, and examiners can make mistakes.
Following the assignment of CHILE CRUNCH, Momofuku recently doubled down and applied to register “CHILI CRUNCH”. This application has only recently been filed, which means it’s not something that Momofuku can currently rely upon to enforce their IP rights.
Enforcement begins
Nevertheless, CHILE and CHILI are similar enough. Someone could infringe "CHILE CRUNCH by using "chili crunch". Additionally, in order to get “CHILI CRUNCH” registered, Momofuku would need to convince the examiner that it’s not a generic term. That's hard to do if there are a bunch of traders using the term already.
So Momofuku used one of America’s leading IP firms to send aggressive cease and desist letters to predominantly mum and dad purveyors of condiments which use the term CHILI CRUNCH.
Cultural heritage - a spicy ingredient
If, like me, you’ve gobbled down your fair share of Lao Gan Ma (despite the searing judgement from the lady on the jar), you’ll know that Momofuku didn’t invent the concept of an oil-based condiment containing crunchy chili bits. The origin of chili crisp (as it’s more commonly known) dates back centuries.
The problem with having a trade mark registration over something that has cultural heritage is fairly self evident.
Although “chili crisp” is the typical English name for the condiment, “chili crunch” is similar enough for people to think that Momofuku are claiming ownership over something that they didn’t create, and that anyone should be able to use.
The backlash of Momofuku’s enforcement action - from the recipients of the cease and desist letters, the media, fellow chefs and restaurateurs, and social media commentators, was about as spicy as you’d expect.
The recipe for a viral PR disaster
The problem here stems from a combination of factors:
The trade mark has a cultural heritage. One of the recipients of a cease and desist letter claims that “crisp” and “crunch” are alternative translations of the same word in Mandarin. They’re certainly similar in English when talking about the features of a condiment - I’d even suggest that “crisp” is more distinctive than “crunch”.
The trade mark is weak. It’s descriptive - it, quite literally, does what it says on the jar. The same backlash wouldn’t arise if we were talking about the enforcement of the Momofuku trade mark. In fact, every jar of Momofuku’s chili crunch has the Momofuku trade mark on it - if it didn’t, you wouldn’t have a clue who made it. It doesn’t function well as a trade mark.
Momofuku were burned by the prior enforcement action. I’d guess that they weren’t even planning on registering “CHILI CRISP” - until they were sued. Once they obtained ownership of the CHILE CRISP mark, presumably at financial cost, there’s an inherent desire to maintain (and maybe even expand) those rights. Enforcement is an important element of protecting your trade mark rights.
The alleged infringers aren’t major corporations. Nobody batted an eyelid when Momofuku was sued. Mum and dad businesses are much more emotionally connected to their business than large corporations. The fact that the recipients of the cease and desist letters are sympathetic characters means that the media are more likely to pick it up, and people on social media are more likely to go ballistic.
Lessons learned
The lesson here is that it’s important to consider the non-legal consequences of enforcing a trade mark. A classic thought experiment to test this, is what would it look like if your letter ended up on the front page of the newspaper? Or perhaps a more modern version - what’s the chance this might go viral?
While it’s not particularly common for this kind of PR disaster to result from trade mark enforcement - it’s certainly not the first time it’s happened. Strategic thinking is essential before you embark on any kind of enforcement action.
The outcome here is that the value of owning the registration has evaporated.
I’d also be very surprised if “CHILI CRUNCH” is able to be registered, even if Momofuku chose to pursue it.
Perhaps this is ultimately the right outcome - it shows that the value of a trade mark doesn’t just depend on whether it exists on the register or not.