Mochi Muffins and the Need to Develop Value-Conscious, Emotionally-Intelligent Trademark PortfoliosOctober 6, 2022

After much controversy, a Bay Area bakery has recently voluntarily surrendered its trademark for “mochi muffin.” Third Culture bakery, the self-declared “home of the mochi muffin” came under fire in June after the San Francisco Chronicle published an article accusing the bakery owners of obtaining a trademark for a “common term” and subsequently sending cease-and-desist letters to other businesses demanding that they stop using the phrase. For example, another bakery, CA Bakehouse, allegedly received a cease-and-desist letter and had to market their bakery item as a “mochi cake.” Third Culture has strongly contested criticism that their actions were designed to harm other businesses: “There were no instances where we were threatening anyone’s existence or their business or threatening to shut a small business down through litigation,” they wrote.

The Chronicle article launched an intense wave of social media outrage, particularly in food communities, at the idea of a bakery trademarking a descriptive term and then demanding other businesses stop using it. The bakery’s social media pages were flooded with negative reviews and existing customers began boycotting the business. Some social media users went so far as to uncover mochi muffin recipes predating the Third Culture’s first sales.

Ultimately, Third Culture bakery cut ties with the lawyers it hired to enforce its “mochi muffin” trademark. In a statement posted to social media in June, co-owners Sam Butarbutar and Wenter Shyu said that “[w]hat started as a means to protect ourselves and our livelihoods . . . evolved into something we never intended and ultimately what we were fighting against in the first place. We followed advice and did what we thought was right at the time and we admit we did not consider other factors and nuances that ended up being hurtful and contradicted why we started the bakery in the first place.” In September, the company announced that after “severing ties with all legal folks” they worked directly with the USPTO and  “received confirmation from the USPTO that [the] Surrender of Registration for Cancellation request has been completed and the Mochi Muffin trademark will be officially surrendered in the next coming weeks.”

Third Culture’s story illustrates the reputational risks involved in trademarks. From one perspective, Third Culture did no more than exercise rights that were given to them by an independent federal agency—the U.S. Patent and Trademark Office (USPTO)—whose job it is to assess whether a proposed trademark is too descriptive or likely to be confused with other marks. On the other hand, a critical role of a trademark is to protect a business’ identity and good name: if obtaining or enforcing a trademark would actually undermine that reputation, then the trademark has detrimental or minimal value.

Determining whether a business should pursue or enforce a particular trademark is not always a straightforward decision. It is critically important to understand how the mark is perceived in the marketplace and also the values associated with the mark and business as a whole. For example, Third Culture’s customers perceived the business’ brand as a promoter of social justice issues and a vocal advocate for Asian/Asian-American communities. Enforcement of the “mochi muffin” mark was viewed by the same customers as directly contradicting that messaging.

A review of Third Culture’s trademark portfolio now appears to show an overcorrection: in addition to surrendering the “mochi muffin” trademark, Third Culture appears to have allowed almost all of its other trademark applications to become abandoned. The applications for marks “Mochiyaki,” “Butter Mochi Donut,” “Mochi Brownie,” “Matcha Sparkler,” and “Golden Yogi” were all abandoned in 2020, while the application for the mark “Moffin” was abandoned back in 2018. As of now, it appears the only live trademark owned by the business is the word mark “Third Culture Bakery” (Reg. No. 6325163). While some of the aforementioned marks would likely be subject to the same problems as “Mochi Muffin,” Third Culture—and other businesses plagued by the problem of descriptive or highly suggestive marks—should not abandon their trademark portfolio entirely. Trademarks are an extremely valuable asset, especially for a small company. Small businesses in particular deserve the right to protect their brand(s) and reputation, and several trademark strategies enable a small business to do so in a manner consistent with their values.

This is true for all companies, including small businesses in the food and beverage industry. Firstly, if it would be challenging to entirely rebrand a descriptive mark, a company can consider modifying an otherwise descriptive mark. For example, instead of trademarking “Bagels” a company could obtain a trademark for “Abel’s Bagels” (Ser. No. 97607520). In the case of muffins, “Third Culture’s Mochi Muffin” or some variation thereof could function as an alternative to a trademark for simply “Mochi Muffin.” The additional words not only clearly identify the source of the goods but also do not result in a monopoly on the term “mochi muffin.” Secondly, a company in Third Culture’s position could consider applying for the mark “Mochi Muffin” in stylized form. A stylized mark allows the owner to prevent others from using the same or a similar stylized mark, but not the text itself. A comparable example is the stylized mark “My Mochi” (Reg. No. 6647996) relating to mochi ice cream.

Finally, although not a trademark strategy, companies can consider leveraging their food and beverage recipes as a marketing asset. Specifically, it is common practice to maintain recipes as a trade secret—think for example of the “secret” recipe for KFC chicken. Businesses can let customers know that they have a unique and original recipe that cannot be easily reproduced by others, even those selling similar products. A company can also turn the origin story of a trade secret recipe—which is often a source of pride—into a marketing tool and a way to convey a business’ background to customers.

Ultimately, although there is risk in obtaining and enforcing any trademark, the benefits of building a trademark portfolio vastly outweigh the risks so long as that portfolio is developed in a way that is market-conscious, value-aware, and emotionally intelligent.

Sarah M.D. Luth is an Intellectual Property Attorney in the MVS Biotechnology & Chemical Practice Group. To learn more, visit our MVS website , or contact Sarah directly via email .