What food and restaurant brands need to know
I love Asian ingredients and feature them heavily in my own cooking. Sesame oil makes everything better and furikake is never a bad call. Give me sesame seeds for texture and soy sauce for saltiness. Looking for spice? I’m reaching for chili oil, gochujang, gochu-garu or sriracha. For extra “umph” pass the oyster sauce or ssamjang. Recipe not working out? You probably forgot the fish sauce, mirin or doenjang.
Okay, maybe you don’t eat as much Asian food as I do. But I’m sure you have your own favorite condiments. From hot sauce to vinegar to ketchup, mustard and mayonnaise, condiments are key to any cuisine. They are the food staples on our weekly grocery list.
Earlier this year, there was public outcry over celebrity chef restaurant Momofuku’s attempt to trademark the term Chili Crunch. The outcry got so bad that Momofuku reversed course and its owner, David Chang, has announced that it will no longer enforce the trademark.
What can food brands and restaurants learn from this? And what does it mean for other companies with their own branded condiments? Read on.
Is your trademark generic?
One of the fundamental rules of trademark law is that you cannot register a trademark that is the generic name of the product you are selling. So if your company sells apples, you cannot trademark the word “Apple”. In contrast, it’s perfectly fine to trademark a term that has nothing to do with the product that you are selling. This is why Apple Inc. was able to trademark the word “Apple” for purposes of selling technology products.
When it comes to condiments, the same rule applies. If you are selling a chili sauce made from a chili paste, vinegar, garlic, sugar, and salt, you cannot trademark the name “sriracha”, because “sriracha” is the generic name for sauces of this type and flavor profile.
Does this mean that your favorite sriracha brands don’t have trademarks? No, because there is a workaround for that. You might recognize the familiar image below:
This is Huy Fong Foods’ trademark for their popular Sriracha Hot Chili Sauce. While it would not have been possible for them to trademark the word “sriracha” alone, they have wisely trademarked their unique label design. Huy Fong Foods also has trademarks for their signature bottle and jar designs, further protecting the branding for their product.
Is Chili Crunch Generic?
Momofuku applied to trademark Chili Crunch on March 29, 2024, which means it will be months before the application is examined by the United States Patent and Trademark Office (USPTO). As of right now, it is unclear whether the company will continue to pursue the application. But even if they did, would it get approved?
There seems to be disagreement around whether Chili Crunch is actually the accepted generic term for the type of product that Momofuku sells. Various terms including chili crisp, chili oil, and crunchy chili sauce may be used to describe this type of product, so Momofuku may have been able to argue its why out of a generic ruling by the USPTO.
But even if they had been able to escape the fatal “generic” ruling, the trademark likely would have been denied for being “merely descriptive”. Essentially, the USPTO will deny registration if the trademark describes an ingredient, quality, characteristic, function, feature, purpose, or use of the product. Since the product contains chilis and the product is crunchy, they were pretty much guaranteed to get a rejection.
But here is where it gets interesting, because Momofuku isn’t represented by just any law firm. The Chili Crunch trademark application was submitted by Kilpatrick Towsend - the same firm that often represents Apple. Suffice to say - these people know what they are doing and no doubt have a plan for getting the trademark approved.
One of the ways to defeat a “merely descriptive” trademark ruling is to show that a trademark has “acquired distinctiveness”. Essentially this means that you’ve been using the trademark long enough (usually at least five years) that the public recognizes it as your trademark. Plenty of trademarks have been registered under this exception, such as American Airlines and Sports Illustrated. Is this the strategy Momofuku is planning to use? We’ll have to wait and see.
Dealing with public backlash
Trademarks tend to be a lightning rod for bad press and no company wants to be known as a dreaded “trademark bully”. With 24 hour news cycles and the unprecedented speed of information sharing via social media, companies are grappling with what this means for legitimate trademark enforcement.
Is Momofuku out of options for protecting its trademark? Not at all. One strategy they could consider is taking the approach of Huy Fong Foods and protecting the design and the label of their chili crunch product. This is an underrated way to product trademarks that may be generic or merely descriptive on their own. This could also help them diffuse public discord by emphasizing that they are protecting their unique product labels and design rather than trying to own a popular term.
There are a lot of ways to protect a trademark. Make sure you are working with a law firm who knows the options and can offer advanced strategy when you need it most.
Thanks for reading the Bevel Law Blog! While this information is hopefully helpful to you, nothing in this blog is intended to be legal advice. Always consult a lawyer before making any legal decisions based on topics in this blog.
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