"Chile Crunch" isn't for one company to own

Just because the trademark was granted, doesn't mean it wasn't a mistake

So, I’ve been noticeably absent from this newsletter for almost 1.5 years. Generally, I’ve been wildly depressed during that whole time and for periods preceding it—we even went up in daily dosage of my antidepressants for the first time in years (albeit a small amount: from 10 mg to 20 mg of Celexa)!

In reading The Guardian’s piece on Momofuku sending cease-and-desist letters to small businesses that use the term “Chile Crunch” or “Chili Crunch”. All of which is happening because Momofuku owns the to trademark to “Chile Crunch”. It was astounding to me, so I felt motivated to learn more about the subject and dive deep into why this trademark even exists.

Thank you for the continued paid subscribers—I used the dollars to be able to access certain documents for this particular newsletter edition.

Many wrongs don’t make a right

The original “Chile Crunch” trademark (Serial No. 86474975) should never have been granted.

If we take a look at this trademark’s history, the examining attorney originally refused registration of the trademark in part because the mark was “merely descriptive”. For reference and clarity, the 2015 correspondence states: “A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.”

That same “merely descriptive” logic was applied to Fly By Jing’s 2019 application for Sichuan Chili Crisp (Serial No. 88455809). However, it is worth noting that Fly By Jing’s application received an added level of scrutiny due to the product category’s growth in subsequent years. The examining attorney attached evidence highlighting that “chili crisp” is a common term amongst Chinese condiments and that Sichuan province incorporates chilis in much of its cuisine, making it more descriptive than a unique signifier. This application was subsequently abandoned per the USPTO records; although, Fly By Jing has filed a new application “Sichuan Chili Crisp” (Application Serial No. 98482467) as of last week.

Chile Colonial LLC, the company who originally held the trademark to “Chile Crunch”, filed complaints against Trader Joe’s (Case #: 1:20-cv-02281) and Momofuku’s affiliates, Momo Orchard LLC and Momo Orchard Holdings, Inc (Case #: 1:22-cv-02243) for trademark infringement in 2020 and 2023, respectively. It’s key to note here that the condiment that Chile Colonial sought to protect was a sauce that was rooted in Mexican cuisine, especially when we look to the case against Momofuku.

Trader Joe’s (Case #: 1:20-cv-02281)

The complaint against Trader Joe’s concerns the grocer’s Chili Onion Crunch product, whereby Chile Colonial alleges they were were in talks to sell the condiment to Trader Joe’s; however, after negotiations, the grocer decided not to purchase the condiment due to cost. Chile Colonial alleges that shortly thereafter, Trader Joe’s began to sell a copycat product at its stores. (This practice of Trader Joe’s approaching small businesses only to make a copycat product has been a recurring discussion point).

In response to the initial complaint, Trader Joe’s filed counterclaims against Chile Colonial, contesting the trademark’s validity, noting that none of the following were ever submitted to demonstrate the distinctiveness of this condiment: sales or advertising expenditures; arguments against the descriptive nature of “Chile Crunch”; or affidavits or declarations asserting said company’s iteration of “chile crunch” as a source indicator. In fact, Trader Joe’s counsel compiled a list of 100+ products via Corsearch that used “chili crunch” or “chile crunch” in product name and/or description that were in-market during the time of filing. And yet, no other recorded complaints were lodged in this time period.

What was asked for in the counterclaim was simple: cancellation of the trademark on the basis of it being only descriptive—providing characteristic details of a product—and it being generic—not identifying a source indicator for what the trademark should be protecting.

Let’s not kid ourselves, though: Trader Joe’s was by no means altruistic in its ask to cancel the trademark and allow for a free market and open competition. The case ended up with a settlement that presumably let Trader Joe’s to continue on marketing its product as-is and let Chile Colonial maintain its hold over a wobbly trademark.

Momofuku (Case #: 1:22-cv-02243)

In reading Chile Colonial’s complaint against Momofuku, it’s alleged that Momofuku tried to pass off its condiment as Chile Colonial’s in part because of the nearly identical ingredients of “garlic, salt, a variety of an onion [sic] and chilis” is a disservice to immigrant cultures. While there may have been a stronger argument for the likeness Trader Joe’s Chili Onion Crunch had to Chile Colonia’s product, this same argument applied to this context is overreaching in its attempt to broaden and retrofit the scope into Chile Colonial’s needs. Not to mention, this line of reasoning, while attempting to capture the entire swath of chili and chile crunch sauces, is an offensive reduction of all minorities into a monolith.

The egregiousness truly comes to light when Chile Colonial asserts a “common law” status, meaning that Chile Colonial believes its condiment has a strong enough association with the term “Chile Crunch”, that when someone brings up “Chile Crunch” in a conversation that it would be considered to be synonymous with Chile Colonial’s product. It’s truly appalling to think that one’s company so highly in a growing space that their product not only speaks for Mexican condiments, but also for every culture’s version of such.

The case was dismissed upon reaching a settlemnt in which the trademark for “Chile Crunch” was transferred from Chile Colonial to Momofuku.

OK, but wait: can we cancel a trademark?

Yes, it can be done. Generally, under the paragraph 3 of the Lanham Act (15 U.S. Code § 1064), if a registered trademark becomes a generic name for good or services, it can be petitioned for cancellation. While “Chile Crunch” and its sibling “Chili Crunch” may not been in the daily vernacular of most grocery aisles at the time of trademark application—but the category has grown considerably in the last decade.

As a side note, Yun Hai’s newsletter has a great explanation of how the translations for Chili Crisp have come to be in the North American market, and therefore also underscores how problematic it is to have a descriptive term curb cross-cultural exchange and development.

And also off-topic, I just wanted to share that someone did attempt to trademark “Podcast” in 2005 (Serial No. 78564869), but it was ultimately rejected because it was descriptive and generic. But can you imagine if it was indeed granted? Wowzers.

The most recent example of a trademark cancellation comes from no other than Taco Bell. “Taco Tuesday” was trademarked in 1989 by Taco John’s (in all states except New Jersey). Taco Bell filed a petition with the USPTO last year to have it reversed on the basis of the trademark having become a common phrase. Taco John’s abandoned the trademark in July of that year, followed by Gregory’s Restaurant and Bar, who held the New Jersey rights to the trademark, in October.

Similar to Trader Joe’s, we can’t pretend that Taco Bell had “Taco Tuesday” released into the ether to spread the love of tacos. The motive to be able to use the term freely without any legal risk was key to Taco Bell’s decision to challenge the trademark holders. But it’s demonstrative that there is more benefit in allowing for growth and change in how America consumes and talks about food, as opposed to confining them to an outdated framework.

So when Momofuku acquired the “Chile Crisp” trademark, it should have dismantled it in its entirety. The company would’ve garnered a lot more respect from its peers instead of what it did next.

What is the end goal?

At the end of March, MomoIP LLC filed to trademark “Chili Crunch” (Serial No. 98475401), which would complement its possession of the “chile crunch” trademark. And yes, this application cross-references the existing trademark under the “Related Properties Information” tab.

While the application awaits further correspondence and instruction from the examining attorney, Momofuku can still achieve its goal of squeezing out competition by way of placing a forceful phantom hand on the shoulders of small businesses. From what I’ve read in The Guardian piece, it appears that Momofuku has taken notes from the two complaints brought forth by Chile Colonial and applied the wrong learnings. For Momofuku’s cease-and-desist letter to recognize itself as having developed common law rights to the applied-for “Chili Crunch” trademark is a slap in the face and an attempt to reduce a whole continent to the ethnic aisle that David Chang, himself, despised.

In terms of whether or not to fight the good fight, for businesses that are nowhere near the size of Momofuku or Trader Joe’s, it’s a large gamble to continue to hold and sell a product that may potentially be racking up a damages complaint. Whether or not “chili crunch” is also granted status, it doesn’t matter—the damage will already have been dealt to the companies that have to spend significant dollars on legal consults, new packaging, and marketing and advertising to recoup lost sales. This tactic is one that not only strong-arms smaller businesses into Momofuku’s desired result of gaining and leveraging its now-solidified keyword dominance, but also into common law status by having its competitors fold out of fear of possible legal action, thereby only leaving Momofuku Chili Crunch on physical and virtual shelves.

Trademark or not, the desired outcome is the same: monopolization. And you know what? Homogeneity is not how we make progress in culture or food—it’s such a god damn travesty for a company whose figurehead supposedly championed difference and diversity.