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Owners of the Descriptive Mark “Mochi Muffins” Face Public Backlash for Serving Cease and Desist Letters

Owners of the Third Culture Bakery and “Mochi Muffins” mark (Registration No.: 5693777) received public backlash for serving Cease & Desist Letters to small businesses selling mochi muffins.

Third Culture Bakery is a baked goods supplier for coffee shops in the Berkeley area. They decided to pursue the Mochi Muffin trademark after some of their customers threatened to stop business with Third Culture Bakery and begin selling similar bakery items with the same name, Mochi Muffins.

After years of pursuing legal action against businesses using the Mochi Muffins mark, Third Culture Bakery recently received backlash on social media after their actions were illuminated on the popular social media group, Subtle Asian Baking. CA Bakehouse, shared that they received a C&D Letter from Third Culture Bakery and their story inspired bakers and bloggers across the United States to rally behind their cause and fight for everyone’s right to make Mochi Muffins.

Subtle Asian Baking then started a GoFundMe page to raise money to pay for the legal fees for any AAPI bakers that were served Cease and Desist letters for using the Mochi Muffins mark. Customers flooded Third Culture’s Yelp page and social media pages with bad reviews and calls for them to release the mark. As a result, Third Culture’s Yelp page has been shut down and their store number has received many harassing phone calls and messages. But this isn’t the first time a business has tried standing up to Third Culture’s bullying.

In 2019, Stella + Mochi fought to have the “Mochi Muffins” mark canceled in Stella Mochi LLC v Third Culture Food Group (2020), citing that the mark was descriptive and generic.  In 2020, Stella + Mochi withdrew their cancellation and entered into a settlement agreement with Third Culture Bakery, for which the details of the settlement are not public.

Usually, the USPTO is not supposed to approve marks that are merely descriptive. Trademarks are supposed to be identifiers of where a product comes from, to signify a brand and their credibility. Trademarks help customers to distinguish between products and businesses.

The Mochi Muffins mark does not fit any of these standards. Simply put, Mochi Muffins are muffins that are baked with a Mochi, a paste made of mochigome rice that is commonly used in a variety of Japanese desserts. Third Culture Bakery has not claimed any other meaning to this mark, making this mark purely descriptive. This mark is equally as ludicrous as the idea of McDonalds registering a trademark for “Cheeseburgers.”

Though the spotlight has been placed on Third Culture Bakery for enforcing their rights to this mark, we should also look to the USPTO and ask why a mark like this would be registered in the first place. Registering descriptive marks is usually not allowed, being “merely descriptive” is a common reason for a mark to be rejected. But the USPTO seems to allow some to slip through the cracks and become bonafide trademarks. Descriptive marks such as “American Airlines” and ESPN’s “Saturday Night Football” are registered.  Ohio State University recently received approval from the USPTO to trademark the word “The” for clothing items. “The” being the most common words in the English language.

People are often confused by the existence of marks like these, and it should be noted that descriptive marks do not have the same protections as fanciful or unique marks. The USPTO has two types of registers, which provide different protections for different marks. The “Mochi Muffins” mark for example, is protected under the Supplemental Register, which protects descriptive marks to a limited capacity. Being on the Supplemental Register allows a trademark owner to file lawsuits for trademark infringement but makes the owner defend the marks validity. Being on the Supplemental Register also allows owners to prevent third parties from registering similar trademarks. After five years of being on the supplemental register, trademark owners can then reapply to be on the Principal Register.

On the other hand, the Principal Register grants trademark owners more rights in addition to the rights given to marks on the Supplemental Register. Principal Registered marks are presumed to be valid and can achieve incontestable status after 5 years. Owners can also request the US Customs and Border Protection to stop the importation of infringing goods.

The “Mochi Muffins” mark is only on the Supplemental Register, so though Third Culture can serve Cease and Desist Letters and can file lawsuits against businesses, their standing to exclusively use this term will most likely fail if another business were to challenge them in court. This mark is unlikely to survive a court challenge because of how obviously descriptive it is.

Scare tactics like Cease-and-Desist letters are commonly used against small businesses who don’t think they have the resources to invest in a lawsuit. At the Wang IP Law Group, our attorneys are specialized in trademark law and in protecting your businesses rights. Whether you need to file a trademark, or protect your business from bullies with descriptive marks, The Wang IP Law Group can consult you on how to navigate these rules, regulations, and lawsuits.

 

Wang IP Law Group, P.C. is a Los Angeles based full service legal firm that specializes in intellectual property law (patent, trademark, copyright, and licensing agreement), business and commercial litigation, and a wide range of other legal matters including immigration, real estate, and landlord/tenant cases. Our multilingual attorneys represent clients from all over California and internationally from China, Taiwan, Hong Kong, Japan, and Israel.

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