Momofuku “chili crisp” controversy shows challenges in aggressive trademark enforcement
The website of Asian-American restaurant and culinary brand Momofuku describes the company’s CHILI CRUNCH brand of “spicy-crunchy chili oil” as “our go-to way of adding a flash of heat and texture to our favorite dishes.”
But Momofuku has gotten into its own “flash of heat” of the public relations variety after reportedly sending cease-and-desist letters to six businesses offering similar products also called CHILI CRUNCH. Momofuku has since backed down from its position, leaving us wondering how this might have played out differently.
Momofuku owns a U.S. trademark registration for CHILE CRUNCH, which it acquired from the original owner in 2023. The first owner of the registration was Chile Colonial, which sells a Mexican-inspired CHILE CRUNCH condiment. The registration issued in 2015 and claims acquired distinctiveness. That means that although the words may be descriptive of the product, the owner demonstrated to the USPTO that the mark attained a level of recognition in the public view.
Momofuku founder and chef David Chang has noted that his company acquired the registration after Chile Colonial sent a cease and desist letter to Momofuku.
On March 29, 2024 – just days before its spate of cease-and-desist letters was reported – Momofuku also applied to register CHILI CRUNCH. The application is pending and will not be examined by the USPTO for several months.
After Momofuku sent demand letters to a number of companies selling products using the terms “chili crunch,”, the company was lambasted as a trademark bully. The problem? Companies and consumers claim that “chili crunch” is a descriptive or even generic term and that Momofuku can’t keep others from accurately describing their own spicy condiments.
And now, Momofuku seems to have changed its position to now agree with that assertion. During an April 12 episode of his podcast, Chang began by stating, “I want to apologize to everyone in the [Asian American and Pacific Islander] community who’s been hurt or feels like I’ve marginalized them or put a ceiling on them by our actions.” He also said that the company will not enforce its trademark against third party use of CHILE or CHILI CRUNCH.
We’ve written before about the risks of aggressive trademark enforcement (spoiler alert: it’s often not a good look). But in order for a company to maintain its rights, it must enforce the mark. Allowing other companies to widely use the mark could result in loss of rights, and Momofuku’s CEO Marguerite Mariscal spoke about this “dilemma” during the podcast walking back the earlier stand on the company’s trademark rights.
As with spices, trademarks can be quite nuanced. Time will tell whether Momofuku’s reversal will cool off some of the public relations heat.
If your company needs a sounding board for trademark enforcement issues, contact us.