On September 22, 2022, Third Culture Food Group filed a request with the U.S. Patent and Trademark Office to cancel its registration for MOCHI MUFFIN. The cancellation request followed ongoing negative publicity over Third Culture’s aggressive enforcement against third party uses of MOCHI MUFFIN. Third Culture released a statement on its Instagram account marking “UN-Trademark Day”, noting, “What once served and protected us in the past, does not and will not serve us any longer and we let that sh*t go.”
Walking on eggshells: the history of MOCHI MUFFIN
According to reports about the MOCHI MUFFIN saga, Third Culture originally registered the mark in order to protect itself from its own wholesaler.
Third Culture filed an application to register MOCHI MUFFIN for pastries and bakery goods on March 9, 2018. During the prosecution of the trademark, Third Culture agreed to amend its application from the Principal Register to the Supplemental Register (which is a secondary Register for less distinctive marks) and include a disclaimer of “MUFFIN.” The Supplemental Registration then issued on March 5, 2019. Soon thereafter, Third Culture began sending cease and desist letters to other bakeries that sold items with the same “mochi muffin” name. Backlash ensued.
For example, on November of 2019, Stella + Mochi LLC filed a petition to cancel Third Culture’s MOCHI MUFFIN registration with the Trademark Trial and Appeal Board (“TTAB”). The petition claimed that MOCHI MUFFIN was not eligible for registration because the mark had become generic for the identified goods. Third Culture’s response was to file a trademark infringement lawsuit against Stella + Mochi. The parties settled and MOCHI MUFFIN remained registered, but eventually Third Culture gave in to the public pressure.
How not to eat humble pie
This saga illustrates the challenges of brand protection in the era of social media. Companies want robust protection and are understandably upset when their brands are threatened. But there is a fine line between vigilance and over-aggressive enforcement. Over the years, cease and desist letters and often, cheeky responses by their recipients – have gone viral. And no company wants bad press for enforcing its trademark rights, no matter how valid – or silly – claims to those rights are. Companies (and their lawyers) would do well to assume that any cease and desist letter or response to the same, could be published on social media.
One final word of caution: The Principal Register is the USPTO’s main trademark register, but the Supplemental Register, while providing some important rights, does not provide the same scope of protection. This does not mean a Supplemental Registration can never be used to enforce trademark rights, but it may suggest a closer look and cost-benefit analysis of an aggressive approach.
If your company is concerned about brand protection but doesn’t want to come out looking half-baked, Markery Law is ready to help you rise to the occasion.