Getting Out Of The Kitchen

// The emotional aspect of IP enforcement can never be overstated, especially among the creative types that help drive our economy and society forward. What is true for the IP owners trying to assert their rights is also just as true for those finding themselves the enforcement targets, a dynamic which makes our little slice of the legal profession so interesting and exciting to practice in. And as we have seen before, adding in a little bit of celebrity spice will often help drive an IP enforcement tale into the mainstream media, particularly when the issues involved are connected to branding around familiar products.

In just the latest example, the past week has seen hardcore IP media outlets like the Today show focus in on celebrity chef (and previous star of this column) David Chang’s abortive attempt at assertion of a “Chile Crunch” trademark in connection with his popular Momofuku Chili Crunch chili oil. What probably was thought of as a routine sending of cease and desist letters to comply with the requirement of trademark owners to police their marks took a nasty turn, with allegations of cultural misappropriation and threats of boycott presaging a public apology by Chang in short order.

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As is often the case, the story actually starts a lot earlier. For one, this is not the first time that Momufuku has turned to IP lawyers to help preserve its rights. In 2022, it sent a number of cease and desist letters to a competitor restaurant business, Yuzu Kitchen, based on Yuzu’s use of a peach logo that Momofuku — which translates to “lucky peach” — took offense to. Those letters were followed by a complaint filed in the SDNY, but the case settled before any substantive action took place. Still, my column summarizing a Chang podcast from a year later noted Chang’s expressed “frustration at what he calls the ‘rampant theft’ in the food industry, which he compares to the struggles that fashion houses have in dealing with ‘fast fashion’ competitors like Zara and others.”

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That frustration may have also been informed  by Chang’s experience on the receiving end of IP assertion. Also in 2022, Chang saw Momufuku’s Chili Crunch product, which was launched in 2020, the subject of a trademark lawsuit of its own. Chile Colonial, the owner of a registered “Chile Crunch” mark, filed a District of Colorado lawsuit against Momofuku in late August 2022, only to see Momofuku purchase that mark in settlement in March 2023. A year later, the company filed a trademark application for the “Chili Crunch” mark as well, in parallel with the sending of cease and desist letters to a set of companies selling Chili Crunch products, with the majority of recipients “small brands founded by Asian Americans.”

The backlash was immediate, with Chang finding himself branded a trademark bully, with a lawyer for one of the letter recipients accusing him of “picking on small businesses with a letter campaign hoping they’ll cave because of the financial pressure.” Making matters worse, Chang was accused by his fellow Asian American food purveyors of delivering a “punch in the gut” through his legal action.

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Initially, Momofuku tried to counter the charges by explaining that it had to take action due to the legal requirement that trademark owners police their marks. That explanation, while legally correct, was not well-received by those complaining about the situation. As a result, the company was forced to acknowledge that the “situation has created a painful divide between Momofuku, the AAPI community we care deeply about, and other companies sharing grocery store shelves. But the truth is, we all want the same things: to grow, to succeed and to make America’s pantries and grocery stores a more diverse place.”

Once again, Chang found himself let down by the legal process when it came to IP issues. Not only was he forced to purchase the trademark to protect himself, but he was unable to utilize the mark he purchased to position his company’s interests in a more favorable way from a trademark perspective. Under the circumstances, what I wrote about his IP comments last year rings true — namely, that Chang’s “status as an IP owner has not cooled his frustration at the lack of respect for IP in the food industry […] especially when he sees innovators in other industries rewarded through workable mechanisms for balancing access to IP protected material and the need to foster additional innovation.” At the same time, there should have been at least some expectation on his end that targeting small businesses owned by others sharing his ethnic background might have met a cool reception in the court of public opinion.

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Ultimately, it is hard not to sympathize with a business owner like Chang, who has already been upfront about his struggles in navigating the complex IP legal landscape. Thankfully for him, however, he can afford high-quality legal representation, as well the full menu of legal options available to protect his rights on both the offensive and defensive sides of the IP ledger. For smaller companies in his industry, be they other restaurants or food wholesalers, that same luxury is not available. But as seen in the Chili Crunch conflagration, the power of the public can’t be underestimated — and in fact can act as a great equalizer for those facing aggressive action at the hands of a trademark bully. This will not be the last time an erstwhile trademark enforcer will be bounced out of the kitchen.

Please feel free to send comments or questions to me at [email protected] or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

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Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at [email protected] or follow him on Twitter: @gkroub.

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Biglaw, David Chang, Gaston Kroub, Intellectual Property, Trademark