California Bakery Bullying/Suing Others Over Descriptive ‘Mochi Muffin’ Trademark It Somehow Got

While trademark disputes regularly annoy me for a variety of reasons which I cover on this site, the most annoying ones of all are usually over trademarks that the USPTO never should have granted in the first place. Remember the Square Donuts thing? That mark was descriptive. ESPN's Saturday Night Football" mark? Also descriptive. Or the time a company managed to trademark the term Legal Hackers" as it was the company's name? Yeah, you guessed it: descriptive.

Now, you're not supposed to be able to trademark purely descriptive terms for what should be obvious reasons. If the mark doesn't inform the consumer of a product or service's origin, and instead describes a generic product, that's supposed to be a no-no. And, yet, the USPTO seems to regularly grant them.

Which brings us to mochi muffins. Mochi muffins are popular bakery goods, perhaps invented by the owner of a trademark on mochi muffins", Third Culture Bakery in California. Third Culture has recently been sending threat notices to, and in at least one case has sued, other small bakeries for the crime of making and selling their own mochi muffins.

Since Third Culture secured the federal trademark to its signature item, the bakery has been quietly working to stop restaurants, bakers and food bloggers across the country from using the words mochi muffins. Oakland's Ramen Shop received a cease-and-desist letter from Third Culture several years ago, co-owner Sam White said. In April, a wave of businesses also received letters from Third Culture, including a tiny home-baking operation in Worcester, Mass.

Almost all those contacted quickly complied and renamed their products - CA Bakehouse now sells mochi cakes," for example - afraid of getting into a label battle with a relatively large, well-resourced business that ships its mochi muffins nationwide.

By now, you may be wondering what the problem is here. And that may be because you don't know what a mochi muffin is. It's a muffin made of - wait for it - mochi! And what is mochi? It's a kind of rice paste that is used typically in Japan to make little cakes and other foods, often time during seasonal holidays. So, rewinding, what is a mochi muffin? It's a muffin made of this rice paste ingredient.

And that is, as you will have already guessed, a descriptive phrase that describes the product and is non-distinctive. And yet the USPTO granted the trademark, albeit as a supplemental mark, and Third Culture is out here threatening everyone it can find.

Third Culture co-owner Wenter Shyu said he recognized early on that the bakery should protect its first and most popular product. Third Culture now keeps attorneys on retainer to monitor the trademark.

We're not trying to claim any ownership (of) the word mochi or mochiko or muffin," he said. It relates back to the one singular product that started our bakery and put us on the map. It's how we pay our bills and how we pay our employees. If anyone else makes a mochi muffin that looks like ours and (is) selling it, that's who we go after."

That makes it sound like what Shyu was actually after was a secret recipe and/or trade secret, a la Coca-Cola's recipe. Instead, he got a trademark on a descriptive phrase. And, while everyone appears to be too scared to challenge Third Culture in court, it's doubtful the bully could win if that were to happen.

Legal experts contacted by The Chronicle questioned whether Third Culture's mochi muffin trademark would survive a court challenge. The trademark is listed on the United States Patent and Trademark Office's supplemental rather than principal register, meaning it's not eligible for exclusive protection, said Robin Gross, a San Francisco intellectual property lawyer. The principal register is reserved for trademarks that are considered distinctive and are afforded more legal protections as a result.

It looks to me that Third Culture Bakery is not going to succeed on its claim because its mark is merely descriptive, not something that can attain exclusive rights," Gross said. If companies are not allowed to use the descriptive words that describe their products, then trademark law has gone too far and is infringing on freedom-of-expression rights."

Ding ding ding! And speaking of expression rights, Third Culture has also started getting some public backlash for its bullying efforts. Facebook groups are sharing stories of the bullying, and outrage is building.

I think it is inevitable that someone will challenge Third Culture's mark eventually. And if/when that happens, it should be invalidated. Otherwise, someone out there is going to trademark banana bread".