The San Jose bakery renamed its baked goods “mochi cake” after Third Culture Bakery asked CA Bakehouse to stop using the word “mochi muffin.”
CA Bakehouse, a small, family-run bakery in San Jose, had been selling mochi muffins for about two years when the cease and desist letter arrived.
Letter from Berkeley’s Third Culture Bakery asks CA Bakehouse to immediately stop using the term “mochi muffin” or face legal action.Third Culture registered the word as a trademark in 2018.
Kevin Lam, owner of CA Bakehouse, is shocked that not only is he legally threatened but that such a common term — a description of chewy sticky rice snacks baked in a muffin tin — could be trademarked.
“It’s like trademarking plain bread or banana muffins,” Lam said.”We’re just getting started, we’re just a small family business compared to them. So unfortunately, we changed our name.”
Since Third Culture received a federal trademark for its iconic product, bakeries have been quietly working to stop restaurants, bakers and food bloggers across the country from using the word mochi muffins.The Auckland ramen shop received a cease-and-desist letter from Third Culture a few years ago, said co-owner Sam White.A wave of businesses also received letters from Third Culture in April, including a small home baking business in Worcester, Massachusetts.
Nearly everyone contacted quickly complied and rebranded their products — CA Bakehouse now sells “mochi cakes,” for example — fearful of colliding with a relatively large, well-resourced company that sells mochi muffins nationwide. The company launched a brand war.
It raises questions about who can own the culinary dish, a long-running and heated conversation in the restaurant and recipe world.
CA Bakehouse in San Jose renamed Mochi Muffins after receiving a cease and desist letter from Third Culture Bakery.
Wenter Shyu, co-owner of Third Culture, said he realized early on that the bakery should protect its first and most popular product.Third Culture now hires lawyers to oversee trademarks.
“We are not trying to claim any ownership of the word mochi, mochiko or muffin,” he said.”It’s about the single product that started our bakery and made us famous. That’s how we pay our bills and pay our employees. If someone else makes a mochi muffin that looks like ours and (is) selling it , that’s what we’re after.”
Many of the bakers and food bloggers contacted for this story declined to speak publicly, fearing that doing so could lead to legal action by a third culture.A Bay Area business owner who sells mochi muffins said he has been nervously expecting a letter for years.When a San Diego bakery tried to fight back in 2019, Third Culture sued the owner for trademark infringement.
As news of the latest cease-and-desist letter spread among bakers like a network of dessert whispers, anger erupted in a 145,000-member Facebook group called Subtle Asian Baking.Many of its members are bakers and bloggers with their own recipes for mochi muffins, and they are concerned about the precedent of a baked goods TM rooted in the ubiquitous ingredient, glutinous rice flour, which dates back to the first The three cultures existed before.
“We’re a community of Asian baking fanatics. We love grilled mochi,” said Kat Lieu, founder of Subtle Asian Baking.”What if one day we’re afraid to make banana bread or miso cookies? Do we always have to look back and be afraid to stop and stop, or can we continue to be creative and free?”
Mochi muffins are inseparable from the story of the third culture.Co-owner Sam Butarbutar started selling his Indonesian-style muffins to Bay Area coffee shops in 2014.They have become so popular that he and his husband Shyu opened a bakery in Berkeley in 2017.They expanded into Colorado (two locations are now closed) and Walnut Creek, with plans to open two bakeries in San Francisco.Many food bloggers have mochi muffin recipes inspired by third cultures.
Muffins have in many ways become a symbol of a third culture brand: an inclusive company run by an Indonesian and Taiwanese couple that makes sweets inspired by their third culture identities.It’s also very personal: The company was established by Butarbutar and his mother, who made desserts, with whom he cut ties after he came out to his family.
For Third Culture, mochi muffins “are more than a pastry,” their standard cease-and-desist letter reads.”Our retail locations are spaces where many intersections of culture and identity exist and thrive.”
But it has also become an enviable product.According to Shyu, Third Culture sold wholesale mochi muffins to companies that would later create their own versions of baked goods.
“In the beginning, we felt more comfortable, safe and secure with the logo,” Shyu said.”In the food world, if you see a cool idea, you run it online. But … no credit.”
In a small storefront in San Jose, CA Bakehouse sells hundreds of mochi cakes a day in flavors like guava and banana nuts.The owner had to change the name of the dessert on signs, brochures and the bakery’s website – even though the recipe has been at home since Lam was a teenager.Social media posts describe it as their spin on the Vietnamese rice flour cake bánh bò.His mother, who has worked in the baking industry in the Bay Area for more than 20 years, was baffled by the idea that a company could trademark something so common, he said.
The Lim family understands the desire to protect purportedly original works.They claim to be the first American business to sell pandan-flavored South Asian waffles at Le Monde, the family’s previous bakery in San Jose, which opened in 1990.CA Bakehouse positions itself as the “creator of the original green waffle.”
“We’ve been using it for 20 years, but we never thought to trademark it because it’s a common term,” Lam said.
So far, only one business appears to have attempted to oppose the trademark.Stella + Mochi filed a petition in late 2019 to remove Third Culture’s mochi muffin trademark after the Bay Area bakery asked San Diego’s Stella + Mochi to stop using the word, records show.They argue that the term is too general to be trademarked.
According to court records, Third Culture responded with a trademark infringement lawsuit alleging that the San Diego bakery’s use of mochi muffins caused customer confusion and caused “irreparable” damage to Third Culture’s reputation.The lawsuit was settled within months.
Lawyers for Stella + Mochi said the terms of the settlement were confidential and declined to comment.The owner of Stella + Mochi declined to be interviewed, citing a nondisclosure agreement.
“I think people are scared,” said Jenny Hartin, director of communications for the recipe search site Eat Your Books.”You don’t want to cause trouble.”
Legal experts contacted by The Chronicle questioned whether Third Culture’s mochi muffin trademark would survive a court challenge.San Francisco-based intellectual property attorney Robin Gross said the trademark is listed on the U.S. Patent and Trademark Office’s supplemental register rather than the main register, meaning it does not qualify for exclusive protection.The Master Register is reserved for trademarks that are considered distinctive and thus receive more legal protection.
“In my opinion, Third Culture Bakery’s claim will not succeed because its trademark is only descriptive and cannot be granted exclusive rights,” Gross said.”If companies are not allowed to use descriptive words to describe their products, then trademark law goes too far and violates the right to free speech.”
If trademarks show “acquired distinctiveness, meaning their use has fulfilled a belief in the consumer’s mind that only it uses the word ‘mochi muffin’,” Gross said, “it will be a difficult sell. , because other bakeries also use the word.”
Third Culture has applied for trademarks for several other products but has been unable to obtain them, including “mochi brownie”, “butter mochi donut” and “moffin”.Other bakeries have registered trade names or more specific ideas, such as the popular Cronut at New York City bakery Dominique Ansel, or Mochissant at Rolling Out Cafe, a hybrid mochi croissant pastry sold at bakeries in San Francisco.A trademark battle is brewing between a California cocktail company and a Delaware candy company over the rights to a “hot chocolate bomb.”Third Culture, which serves a turmeric matcha latte once dubbed “Golden Yogi,” renamed it after receiving a cease-and-desist letter.
In a world where trendy recipes go viral on social media, Shyu sees trademarks as business common sense.They’re already trademarking future products that haven’t yet appeared on bakery shelves.
Currently, bakers and food bloggers have been warning each other not to promote any kind of mochi dessert.(Mochi doughnuts are so popular right now that social media is flooded with many new bakeries and recipes.) On the Subtle Asian Baking Facebook page, posts suggesting alternative names to avoid legal action—mochimuffs, moffins, mochins— — elicited dozens of comments.
Some Subtle Asian Baking members were particularly disturbed by the cultural implications of the bakery, which appears to have an ingredient, the glutinous rice flour used to make mochi, which has deep roots in many Asian cultures.They debated boycotting third cultures, and some left negative one-star reviews on the bakery’s Yelp page.
“If someone were to trademark something very cultural or meaningful,” such as the Filipino dessert halo halo, “then I wouldn’t be able to make or publish the recipe, and I’d be very frustrated because it’s been in my house for years,” says Bianca Fernandez , who runs a food blog called Bianca in Boston.She recently wiped off any mention of mochi muffins.
Elena Kadvany is a staff writer for the San Francisco Chronicle.Email: elena.kadvany@sfchronicle.com Twitter: @ekadvany
Elena Kadvany will join the San Francisco Chronicle in 2021 as a food reporter.Previously, she was a staff writer for Palo Alto Weekly and its sister publications covering restaurants and education, and founded the Peninsula Foodie restaurant column and newsletter.
Post time: Jul-30-2022