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What’s Trending in Trademarks: April 2024

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Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about:

David Chang, Momofuku Drops Enforcement of ‘Chile Crunch’ and ‘Chili Crunch’

Celebrity chef David Chang, founder of the Momofuku restaurant and food brand, announced this month that he and his company would no longer continue the controversial enforcement of its trademarks for CHILE CRUNCH and CHILI CRUNCH.

According to NBC News, Momofuku in 2020 started selling “Chili Crunch,” a spicy, crunchy condiment made with chilis, garlic, shallots, and sesame seeds that’s similar to a Chinese condiment called Chili Crisp. In 2023, after receiving a cease-and-desist order from Chile Colonial, which owned the CHILE CRUNCH mark and made a product similar to a Mexican salsa by the same name. Momofuku ended up purchasing the mark and gave Chile Colonial a perpetual license to its name.

That purchase gave Momofuku the responsibility to enforce the CHILE CRUNCH mark or else lose it. Momofuku also filed with the U.S. Patent and Trademark Office to register CHILI CRUNCH, claiming common law rights to the mark.

“When we acquired this mark (CHILE CRUNCH), it then became our job to protect it,” Momofuku CEO Marguerite Mariscal said, via NBC. “The reason we received a cease-and-desist from Chile Colonial is the same exact reason that Momofuku was sending them out, which is if you don’t show the USPTO that you’re routinely defending your mark — and that’s from any size business, large, small — then you’re at risk of losing your trademark.”

According to the Associated Press, Momofuku in March sent seven cease-and-desist letters to companies that were calling their product “Chili Crunch” or “Chile Crunch.” Most of the companies that received the letter were small brands founded by Asian Americans, and several spoke out in The Guardian, sparking a debate about whether anyone should be able to trademark the name of these condiments, inspired by family recipes and cultural traditions.

In his announcement on his podcast, Chang apologized to everyone in the Asian American and Pacific Islander community “who’s been hurt or feels like I’ve marginalized them or put a ceiling on them by our actions.”

“We’re not going to enforce the trademark,” he continued. “And by doing so, it’s possible that it becomes a generic term and nobody can own it.”

Jellyroll v. Jelly Roll

Grammy-nominated country singer Jelly Roll is facing a trademark infringement lawsuit from a Pennsylvania band called Jellyroll that advertises itself as “The Best Wedding Band in Philadelphia.”

On its website, the band says: “Our company is known to be musician friendly, and encourages performers to find their passion, however it is imperative that we avoid confusion for our band JELLYROLL®, who has been on the scene, and trademarked, performing for over 40 years.”

Jellyroll was started by Kurt Titchenell in 1980. The band first obtained its mark in 2010 with a renewal in 2019. Jelly Roll, born Jason Bradley DeFord in 1984, first released music in the early 2000s, according to People, but didn’t adopt his stage name until 2010.
“Prior to the Defendant’s recent rise in notoriety, a search of the name of Jellyroll on most search engines, and particularly Google, returned references to the Plaintiff,” the complaint reads, via Entertainment Weekly. “Now, any such search on Google returns multiple references to Defendant, perhaps as many as 18-20 references before any reference to Plaintiff’s entertainment dance band known as Jellyroll can be found.”

Modelo Loses Appeal to Keep Corona Hard Seltzer off US Shelves

IP Watchdog covered the U.S. Court of Appeals for the Second Circuit’s affirmation of a district court’s denial of summary judgment to Modelo, which had sued sublicensee Constellation Brands of violating terms of a licensing agreement allowing it to sell Modelo beer in the United States by selling hard seltzer products under Modelo’s MODELO and CORONA marks in the United States. The opinion shows the importance of clear definitions when creating a trademark sublicense.

Modelo argued that the sublicense excluded Corona Hard Seltzer because it is not “beer, malt beverages, or versions or combinations” of the two. Modelo defines beer as “a fermented alcoholic beverage brewed from malt and flavored with hops” and malt beverages as “drinks made with malt.” The Second Circuit opinion said Modelo’s contention that a “malt-free, hops-flavorless” beverage like Corona Hard Seltzer cannot be considered a version of either beer or malt beverages is “hard to square with the fact that the Sublicense explicitly allows for ‘non-alcoholic versions”’ of beer and malt beverages, even though Modelo’s dictionary definitions uniformly define ‘beer’ as containing alcohol.”

Other Marks in the News

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