After community backlash, celeb chef David Chang will no longer enforce ‘chili crunch’ trademark

Celebrity chef David Chang says he will no longer enforce the trademark for his chili crunch condiment. 

The reversal comes after days of criticism, as some said his company, Momofuku, had attempted to bully business owners from selling their own version of the peppery potion with Chinese roots.

The company had sent cease-and-desist letters to various businesses that also sold products branded “chili crunch,” saying they were violating its pending trademark on the term.

“The past week, we have heard the feedback from our community and now understand that the term ‘chili crunch’ carries broader meaning for many,” a Momofuku spokesperson told The Washington Post late Friday. “We have no interest in ‘owning’ a culture’s terminology and we will not be enforcing the trademark going forward.” 

Chang earned fame with his Momofuku restaurants, including several that used to operate in Toronto, and his appearances on food-related television programs. But his brand recently expanded into selling packaged goods — many of them slightly upscale takes on Asian pantry classics, like instant noodles and chili crunch. 

Business owners and cultural commentators accused Chang of engaging in trademark bullying, especially against smaller, fellow Asian mom-and-pop businesses, in laying claim to the well-known condiment.

Michelle Tew recently received a cease-and-desist letter for her company Homiah’s chili crunch condiment. 

“When I read through it, I think I felt a sense of betrayal, to be honest,” Tew, who is based in New York, told Day 6‘s Brent Bambury in an interview taped before Momofuku announced the backtrack.

Tew told CBC she was “pleased to hear” of the company’s decision to stop enforcing the trademark. 

But she disagrees with its choice to continue owning it, and instead urged it to retire it completely. (Momofuku also bought the rights to “chile crunch” — with an “e” — last year, from a Denver company that used it for a Mexican-style chili condiment. It then filed to trademark”chili crunch” — with an “i” — on March 29.)

“The terms … are generic descriptions of a foundational part of Asian [and] Asian American culinary tradition that have been passed down through generations. I am grateful that the community have spoken loudly in support of this fact,” she said.

Momofuku’s chili crunch is advertised as a mixture of oil, chili flakes and other ingredients like garlic and shallots. It’s Chang’s take on the long-standing Chinese chili oil that is arguably better known as chili crisp.

Small glass containers of chili crisp can often be found in Chinese noodle shops, next to other common condiments like soy sauce and rice vinegar. One of the oldest brands, Lao Gan Ma, is often credited with popularizing the sauce in the West in the 1980s.

Tew’s version is called Sambal Chili Crunch. It’s inspired by Indonesian sambal chili paste and has ties to the Straits Chinese, who immigrated to places like Singapore and the Malaysian state of Penang.

“It was specific to something my grandmother made, but also, it was just taken for granted. It’s just kind of part of the fabric of the culture,” said Tew.

Businesses, communities crunch back

Reaction to the news of the cease-and-desist letters came fast and furiously over the past week.

Canadian actor Simu Liu also waded into the discourse, challenging Momofuku to a “blind taste test” of chili crunch products between Momofuku and MìLà. Liu is the chief content officer for MìLà, which also sells noodles and frozen soup dumplings.

Jannine Rane sells a chili crisp product called Hakka-ish for her Toronto-based company Zing Pantry shortcuts. She called the move gatekeeping and anti-competitive. She said similar non-Asian products also exist, like South American salsa macha and Italian chili oil.

“It’s like a big mustard company deciding one day to go around sending cease and desist letters to anyone that’s using the term ‘grainy mustard,'” Rane told Metro Morning’s David Common.

The art of protecting trademarks

While Momofuku said they won’t enforce the trademark, its statement to the Post didn’t say it would abandon it altogether.

Ken Clark, an intellectual property lawyer with Toronto-based law firm Aird and Berlis, said the company may want to hold onto it to prevent another business claiming it for its own down the line.

“Having the registration is a good shield also, even if not used as a sword, as it would prevent third parties from telling them that they can’t use their [trademark], as having a registration means by definition you are permitted to use that trademark,” he said.

If it ever wanted to enforce the trademark, the big test for Momofuku would be to prove multiple chili crunch products on the market create consumer confusion — that is, how likely people would be to buy another company’s jar labelled “chili crunch,” thinking it’s Momofuku’s offering instead.

“If you apply for Peanut Butter-branded peanut butter, they’ll reject you,” Clark said.

Fly By Jing, another popular sauce maker in the U.S., filed to trademark “Sichuan chili crisp” in 2019, but was rejected because the U.S. Patent and Trademark Office said the term was descriptive. (Fly by Jing’s founder is also an investor in Tew’s Homiah.)

Abandoning the “chili crunch” trademark would force it to discard “chile crunch,” as well — “which they paid good money for, no doubt,” Clark said.

IP lawyer Elizabeth Dipchand said the cease-and-desist letter as Tew had described it in the press sounded rather “heavy-handed” and could have benefitted from a more diplomatic approach.

She pointed to a 2021 cease-and-desist letter that Netflix sent to the maker of an unlicensed Stranger Things bar pop-up. The letter went viral online because of its baked-in humour and references to the show — even though it was functionally still a C&D.� 

“The human connection has got to be first and foremost. And that’s not always something that lawyers are necessarily good at,” she said.

Source