How the company acquired the “chile crunch” trademark to begin with — and why it’s sending cease-and-desist letters to small businesses using both spellings of the phrase
Chile crisp — an infused chile oil condiment layered with crispy fried ingredients, with roots in Asian cuisines — is beloved across cultures, inspiring dozens of entrepreneurs to launch their own brands and at least one standalone cookbook. But in the past few weeks, the terms “chili crunch” and “chile crunch,” a variation on chile crisp, has become the subject of an escalating brawl between Momofuku Goods, the grocery arm of David Chang’s empire, and small independent companies using those names, The Guardian first reported.
The result has been for a handful of small independent companies to fight back — the Davids to what they’re saying is Momofuku, the Goliath, with its own Chili Crunch product — by duking it out with lawyers, in the press, and on social media, with plenty of folks weighing in.
In a cease-and-desist letter sent March 18, 2024, Momofuku’s lawyer accuses Malaysian food brand Homiah, maker of Sambal Chili Crunch — called Crispy Sambal prior to 2023 — of infringing on its trademark rights.
Momofuku indeed owns the rights to the term “chile crunch” (spelled with an “e”), which it trademarked in 2023 with the US Patent and Trademark Office, and which Momofuku licenses to others. In late March, Momofuku also filed for a trademark to protect chile crunch in adjacent food areas of chile oil and seasonings — as well as “chili crunch” with an “i.” It now appears to be going after brands with both spellings.
“Momofuku trusts that Homiah did not adopt the CHILI CRUNCH mark in bad faith or with an intent to create confusion,” the cease-and-desist letter reads. “But because trademark law requires brand owners to police use of their trademarks — and because Momofuku is concerned that consumers may actually be confused here — we write to request Homiah’s cooperation.” It demands that Homiah cease the use of the name within 90 days and to agree not to use or apply to register in the future “any marks that incorporate the components of chili crunch or chile crunch.”
Homiah’s founder Michelle Tew says she was “gutted” to receive the letter. “As a minority small business owner, I’ve personally been a strong supporter of Momofuku’s restaurants and products since immigrating to the USA more than a decade ago,” Tew wrote in an email to Eater. “Chili crunch has a history that long predates Momofuku’s product and is culturally common throughout a variety of cuisines from China to Korea to Malaysia, where I grew up,” she wrote, citing the product is based on a family recipe that goes back “at least five generations.” She joins others in their anger over Momofuku trademarking the name for what they see as a category of products, homing in on the semantics of language to stifle other crisps and crunches from small, independent, Asian-owned companies.
The cease and desist letter was one of seven sent to other companies, which includes MìLà , co-founded by Jen Liao, of the popular frozen xiaolongbao company; her product, originally called a chile crisp when her company launched in 2020, is now MìLà Chili Crunch, a rebranded product that’s different from its chile crisp.
Lillian Lin, founder of Yun Hai Chinese Pantry, with a location in Brooklyn that sells chile crisp and other pantry items, was not affected by the cease-and-desist, but like others, she expressed surprise, noting that “the concept of a chili crisp /chili crunch has been around Chinese culture for so long that it is almost surprising that a trademark was granted in the first place.”
Momofuku acquired the “chile crunch” trademark in a roundabout manner: by way of a six-figure legal settlement, according to sources. In 2023, Denver company Chile Colonial LLC, then the holder of the “chile crunch” trademark, had moved toward suing Momofuku for “trademark infringement [and] unfair competition,” The Guardian reported. Chile Colonial owner Susan Hojel, who created a Mexican version of chile crunch that’s been around since 2008, says that before Momofuku bought the trademark by way of a settlement, “I was going broke going after companies that were trying to use the name,” she said. (Today, Hojel uses the name by way of a licensing agreement.)
Maintaining trademarks requires policing its use. “It is very common for trademark owners to register variations of their marks to prevent others from causing confusion with similar marks,” says Daniel Shulman, an expert in IP and trademark law for business law firm Vedder Price. “And if you don’t enforce your rights against others who use your mark or confusing variations of your mark, you can lose your trademark rights altogether because the trademark no longer functions as a distinctive brand identifier. You simply have to do it; it’s part of good trademark practice.”
Hojel had sent cease and desists to big companies like Trader Joe’s in addition to Momofuku before Momofuku acquired the trademark. (Just this week, Taste Cooking reported on Trader Joe’s “questionable business practices that have many food brands crying foul at the company’s blatant and aggressive copycat culture.”) In protecting her trademark, Hojel points out that many infringers are “not small companies,” pointing out she was fighting on behalf of herself and the “little guy.” In 2023, Momofuku Goods brought in $50 million in sales, according to CEO Marguerite Zabar Mariscal. Trader Joe’s brought in $13.3 billion.
But the many folks on social media reacting to the Momofuku news are siding with Homiah and businesses that got the cease-and-desist letters. “I felt pretty incredulous that something like this would happen,” said Liao. “The term has been around for a long time. It’s a pretty staple condiment in the Asian food aisle.” Of the cease-and-desist letter regarding her MìLà Chili Crunch name, “It definitely felt like intimidation tactics.”
Tew has been advised that the trademark “could be opposed in court if someone wanted to do so,” she says. “However, whoever opposes would have to have deep enough pockets to be willing to go to court and pay the associated legal fees.” Her legal team is sending a response saying she will keep the Sambal Chili Crunch name.
Eater has reached out to Momofuku for comment.
from Eater - All https://ift.tt/ZzxeS3F
0 Comments