After a windstorm of controversy, celebrity chef David Chang announced on April 12 that his Momofuku brand would stop enforcing its trademark rights against other chili crunch/crisp companies, effectively abandoning those rights. This reversal came a mere eight days after The Guardian and other news outlets reported that Momofuku sent cease-and-desist letters asserting its rights in its CHILE CRUNCH and CHILI CRUNCH trademarks against other chili condiment businesses. Companies selling Asian-American foodstuffs (e.g., Homiah and MìLà) reacted to the letters by observing that the term “chili crunch” has long been commonplace in Asian cuisines.
But before diving into this spicy controversy, some background on the basics of trademark enforcement in the United States would be helpful. First, a trademark owner has a duty to enforce its marks. Second, failure to enforce one’s rights can lead to a weakening of the trademark or even a full loss of rights in the mark. For example, a failure to enforce one’s rights might allow the trademark to become an unenforceable generic mark (e.g., aspirin and escalator) or a weak, descriptive trademark. Relatedly, infringers sometimes point to the existence of similar third-party trademarks as evidence that an asserted trademark is weak and therefore not infringed. Additionally, delay in enforcement encourages infringers to allege the brand owner waited too long to enforce its rights and is therefore barred by the “laches” defense.
This story actually begins with a Colorado-based company called Chile Colonial (“Colonial”). Colonial registered and owned the CHILE CRUNCH mark prior to Momofuku. And, interestingly, Colonial’s ownership of the mark involved some legal controversy of its own. In 2020, after releasing a product using the terms “chili” and “crunch,” Trader Joe’s sought to have the Trademark Office cancel Colonial’s mark, arguing that the mark was descriptive and generic in response to a lawsuit filed by Colonial. Ultimately, Trader Joe’s settled with Colonial, and Trader Joe’s changed the name of its product to “crunchy chili onion.”
As the Guardian noted, after Colonial’s assertion of its rights against Momofuku, the parties reached a settlement in which Momofuku acquired the CHILE CRUNCH registration from Colonial. Thereafter, Momofuku continued Colonial’s practice of sending cease-and-desist letters to preserve the rights in its newly acquired registration. Momofuku subsequently filed an application to register the mark CHILLI CRUNCH.
In response to its cease-and-desist letters, Momofuku endured an onslaught of public criticism after the recipients shared their letters on social media and with mainstream media outlets. The recipients argued that Momofuku obtained and was trying to assert rights in a generic term and common product that is frequently used by the AAPI community. Although Momofuku’s registration for CHILE CRUNCH is incontestable (meaning the registration has been properly maintained for five years) and cannot be challenged on descriptiveness grounds, it could still be challenged on grounds of genericness.
But establishing that the CHILE CRUNCH and CHILI CRUNCH marks are generic does not come without cost and could subject a challenger to potential litigation. That may be why the recipients of Momofuku’s letters used public pressure and social media to force Momofuku to abandon its enforcement strategy. This story serves as a cautionary tale that rights owners need to balance the legal requirement to enforce their trademarks with considerations outside of trademark law that could impact their business.
And if this story sounds familiar, you might recall the public also aided in the charge to liberate the term “Taco Tuesday” from concurrent federal registrations owned by Gregory’s Restaurant and Bar, which owned the mark in New Jersey, and Taco John’s, which owned the mark in the remaining 49 states. Gregory’s and Taco John’s secured their registrations in 2009, though they alleged use of TACO TUESDAY since 1979.
Ultimately Gregory’s and Taco John’s gave into public pressure and voluntarily canceled the registrations in 2023, allowing anyone to use TACO TUESDAY for restaurant promotions.
Momofuku’s application for the mark CHILI CRUNCH is still awaiting initial examination by the USPTO but may not be reviewed for at least six months. The original registration for CHILE CRUNCH is still live on the USPTO’s registry, but Momofuku will need to decide by April 2026 whether it will maintain this registration. Until then, it could still oppose others from obtaining a registration for marks that include CHILE CRUNCH or CHILI CRUNCH. For example, less than two weeks after Momofuku announced the reversal of its enforcement strategy, a Philippines company name Daddy Mikks Corp. filed for a logo that includes the words DADDY MIKKS CHILLI CRUNCH CHILLI GARLIC BITS with a disclaimer of the words CHILLI CRUNCH and CHILLI GARLIC BITS. As this saga evolves, it will be interesting to see just how much the heat turns up.
Alexander Zeng and Brandon Hupka are associates, and Jonathan Hyman is a partner, at Knobbe Martens. Knobbe Martens is one of America’s largest intellectual property and technology law firms, and a recognized leader in the field of trademark law. The firm provides strategic trademark, branding and brand protection, and false advertising counseling and litigation services for major brands across numerous industries, including in the food and beverage space. For any questions regarding this article or to discuss Knobbe Martens’ brand protection and enforcement services, please contact Alexander (alexander.zeng@knobbe.com), Brandon (brandon.hupka@knobbe.com) or Jonathan (jonathan.hyman@knobbe.com).
