Bakery Gives Up the Mochi Muffin Trademark

In Berkeley, CA, Third Culture Bakery recently released its trademark on the baked good “mochi muffin.” The bakery’s legal representation had sent cease-and-desist letters to several other bakeries in the area that served mochi muffins.

Public backlash via social media and online reviews (like Yelp) motivated the bakery to step down. The main point of contention: A mochi muffin is simply a type of baked good – like a blueberry or bran muffin – not a singular creation that can be owned by one bakery.

A Descriptive Trademark Granted

The root of the problem is that Third Culture Bakery was granted a trademark that simply describes their product. “Why?” is a question for the USPTO, one we cannot answer here. It means that any other bakery selling a similar item would almost be “trapped” into infringement territory simply through describing their bakery goods.

To be fair, the trademark was not granted in the Principal Register for trademarks.

Principal Register vs. Supplemental? Register

These registers categorize the different distinctive values of trademarks. For instance, major marks that come to mind instantly when you hear the company name certainly belong on the principal register – perhaps the McDonald’s golden arches, the Target sign, or the Apple computer logo. They are distinct marks that denote a singular business clearly and easily.

The supplemental register, on the other hand, exists for marks that are not distinct enough to gain that traction or power. This usually means that they are more descriptive in nature. If you started a shoe brand and called the shoes “comfortable footwear,” you might have a real problem getting that registered as anything more than supplemental, if that.

Why even grant supplemental registration for a trademark? It does provide some limited protections, like injunctive relief, if the supplement trademark owner can actually win a litigation case against an infringer. Because the mark is weak to start, this is a big “IF.”

Trademark vs. Trade Secret

One article about this incident suggested that Third Culture Bakery may have actually been seeking trade secret protection. There is a case for this.

Third Culture Bakery stated their reasons for moving to secure a supplemental trademark registration was to protect the most popular, lucrative baked good in their business. They simply did not want other bakeries to make the same product and cut into their market.

Indeed, perhaps taking the steps to make their specific mochi muffin recipe a trade secret would have provided the shield they needed. Perhaps they will consider this as a next step when the controversy has died down.?

Remember the Value of Distinct Trademarks

All in all, let this case serve as a reminder: When you are registering a trademark for your business, make it as specific, unique, and memorable as possible. Look up the different types of trademark strengths – fanciful, arbitrary, suggestive, descriptive, and generic – and aim for the first two qualities if at all possible. It is worth taking the extra time at the beginning of your business to create a mark that will last and serve its purpose as a source identifier while providing commercial distinction and protection.

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