4 ms·

My understanding is that another company owned the Chili Crunch trademark and took enforcement action against David Chang's company when it started selling prod

My understanding is that another company owned the Chili Crunch trademark and took enforcement action against David Chang's company when it started selling products under that name. As part of the settlement, Chang's company ended up purchasing the trademark. As one of the obligations of owning a trademark is to enforce its use in the marketplace, Chang's lawyers did just that. But after blowback in the press, Chang arranged for the other brands to also use the trademark. Here's a summary from NBC News: https://www.nbcnews.com/news/asian-america/david-chang-momofuku-will-no-longer-enforce-chili-crunch-trademark-rcna147838 https://www.nbcnews.com/news/asian-america/david-chang-momof...

bigstrat2003 2y ago
> As one of the obligations of owning a trademark is to enforce its use in the marketplace, Chang's lawyers did just that. There is no such obligation. Yes, if you don't enforce a trademark you can lose it, but it isn't like you will be subject to fines or something if you don't. This is a ridiculously generic trademark that never should've been granted, and if Chang (or his lawyers) were good, decent people they would've just let it be. The trademark would've lapsed, and everything would've been fine.
- tmoertel 2y ago
  > There is no such obligation. Yes, if you don't enforce a trademark you can lose it... Your second sentence kinda refutes the first, doesn't it? I mean, if your company gets a cease-and-desist demand from the owners of the Chili Crunch trademark, and ends up buying the trademark to continue running your business, it seems like a Pretty Bad Idea to not hold on to that trademark. I know you think the trademark should never have been granted, but the USPTO did grant it, and Chang's company did get a C&D from the grantee. So, if Chang's company ever let that trademark go (e.g., to be "good, decent people," as you suggest), the history of this particular matter suggests that someone else could easily pick the trademark up, and probably would (not everyone is "good, decent people," right?), and would then start sending cease-and-desist demands to extract fees. So I'm having a hard time faulting Chang's lawyers for avoiding the obvious trap.
  - adammarples 2y ago
    If a trademark gets revoked it's gone, it's not like it goes to someone else
    - tmoertel 2y ago
      Are you sure? Consider that one of the common ways that trademarks become "revoked" is that a third party files to have it canceled because they are trying to register the trademark for themselves: > Petitions to cancel based on abandonment may be filed at any time. Often, a petition to cancel due to abandonment is filed because the attacked registration was cited as a basis to refuse a third-party’s later-filed application. In such a case, the Applicant may file a petition to cancel to overcome the refusal to register. If successful, the cited registration will be removed as a bar to the later-filed application. Source: https://www.trademarklitigationguide.com/petition-to-cancel-trademark-for-abandonment/ https://www.trademarklitigationguide.com/petition-to-cancel-... Consider, for example, the somewhat infamous Flappy Bird trademark that was recently picked up by Gametech Holdings, LLC. That firm petitioned the USPTO to cancel the existing registration by Dong Nguyen Ha on the grounds of abandonment. He lost the trademark, and they were able to register it: https://ttabvue.uspto.gov/ttabvue/v?pnam=Dong%20Nguyen%20Ha%20%20 https://ttabvue.uspto.gov/ttabvue/v?pnam=Dong%20Nguyen%20Ha%...

bigstrat2003 2y ago

> As one of the obligations of owning a trademark is to enforce its use in the marketplace, Chang's lawyers did just that. There is no such obligation. Yes, if you don't enforce a trademark you can lose it, but it isn't like you will be subject to fines or something if you don't. This is a ridiculously generic trademark that never should've been granted, and if Chang (or his lawyers) were good, decent people they would've just let it be. The trademark would've lapsed, and everything would've been fine.

tmoertel 2y ago
> There is no such obligation. Yes, if you don't enforce a trademark you can lose it... Your second sentence kinda refutes the first, doesn't it? I mean, if your company gets a cease-and-desist demand from the owners of the Chili Crunch trademark, and ends up buying the trademark to continue running your business, it seems like a Pretty Bad Idea to not hold on to that trademark. I know you think the trademark should never have been granted, but the USPTO did grant it, and Chang's company did get a C&D from the grantee. So, if Chang's company ever let that trademark go (e.g., to be "good, decent people," as you suggest), the history of this particular matter suggests that someone else could easily pick the trademark up, and probably would (not everyone is "good, decent people," right?), and would then start sending cease-and-desist demands to extract fees. So I'm having a hard time faulting Chang's lawyers for avoiding the obvious trap.
- adammarples 2y ago
  If a trademark gets revoked it's gone, it's not like it goes to someone else
  - tmoertel 2y ago
    Are you sure? Consider that one of the common ways that trademarks become "revoked" is that a third party files to have it canceled because they are trying to register the trademark for themselves: > Petitions to cancel based on abandonment may be filed at any time. Often, a petition to cancel due to abandonment is filed because the attacked registration was cited as a basis to refuse a third-party’s later-filed application. In such a case, the Applicant may file a petition to cancel to overcome the refusal to register. If successful, the cited registration will be removed as a bar to the later-filed application. Source: https://www.trademarklitigationguide.com/petition-to-cancel-trademark-for-abandonment/ https://www.trademarklitigationguide.com/petition-to-cancel-... Consider, for example, the somewhat infamous Flappy Bird trademark that was recently picked up by Gametech Holdings, LLC. That firm petitioned the USPTO to cancel the existing registration by Dong Nguyen Ha on the grounds of abandonment. He lost the trademark, and they were able to register it: https://ttabvue.uspto.gov/ttabvue/v?pnam=Dong%20Nguyen%20Ha%20%20 https://ttabvue.uspto.gov/ttabvue/v?pnam=Dong%20Nguyen%20Ha%...