Sophisticated, Experienced Advocates
Recent Lessons from Trademarks, Viral Fame, and Dee's Nuts
Elliot A. Gee & Matthew J. Dowd
Let’s Get a Trademark Opposition “The Ocky Way”
Ebrahim Mohamed is the owner of a small bodega in Red Hook, Brooklyn—not the type of business one might expect to become embroiled in an expensive trademark dispute. But during the pandemic, Mohamed’s unique phrase “The Ocky Way” became a calling card for his equally unique sandwiches.
Mohamed began uploading TikTok videos of his customers asking for their sandwich to be made “The Ocky Way.” Mohamed would serve up wildly crea ve and behemoth takes on bodega staples, ranging from a chopped cheese on a sweet bun to a steak and cheese on chocolate chip pancakes. The videos quickly went viral.
As his popularity grew, Mohamed’s videos frequently featured celebrities asking for Mohamed to prepare their food “The Ocky Way.” Rappers Quavo and French Montana, thenKnicks star Obi Toppin, Nets star Mikal Bridges, and singer Rubi Rose are just a few of the media stars who got their food “The Ocky Way.” Mohamed’s TikTok account (@rah_money1) currently boasts over five million followers and over ninety-five million likes, while his accounts on other platforms such as Instagram and YouTube also feature similarly large numbers of followers.
Yet, in March 2024, Mohamed found himself on the wrong side of a trademark dispute, now having to oppose a third-party USPTO application to register “The Ocky Way”—the same phrase Mohamed has used for several years. The third-party individual filed his intent-to-use applica on in March 2023, and he may have been one of Mohamed’s customers (based on a YouTube video showing an individual having the applicant’s name ordering a sandwich at Mohamed’s bodega). The third-party application also identified essentially the same goods as Mohamed’s: “beef burger sandwiches,” “sandwich wraps,” and “griddle cake sandwiches.”
“The Ocky Way” dispute seemingly exemplifies a late comer trying to capitalize on a phrase popularized by an ongoing business that was slow to seek registration. Here, it seems that Mohamed will prevail, but he is now playing catch up. On February 23, 2024, Mohamed filed his own application to register the word mark “The Ocky Way”—under § 1(a), actual use— for sandwiches, restaurant services, and clothing.
The delay in filing for a trademark registration appears to have created a headache for Mohamed, with a TTAB fight now pending. His situation serves as a lesson in early trademark protection, especially for those who experience sudden online fame, particularly when the trademark itself is the catalyst of such popularity.
The COVID-19 pandemic revolutionized the Internet marketplace. Platforms such as TikTok and Instagram became a key path to transforming a local business into a national phenomenon. Now, going viral is o en a primary strategy for many small companies—and for good reason. With a single post, an unknown product could become an overnight sensation.
Going viral also creates significant challenges, however, including supply-chain and customer-satisfaction on issues. Worst of all, copycats and counterfeiters can undermine the sudden success.
A trademark is, of course, a highly effective tool to protect consumers from being fooled by counterfeiters. Unfortunately, for many smaller companies—including smaller food and beverage companies—registering a trademark is not a top priority. Managing new-business logistics or new-found Internet fame o en pushes trademark registration to the back burner. That can have repercussions, however, ranging from getting trapped in a legal battle to prove common-law trademark rights, being geographically limited in the use of the mark, or en rely losing the right to use the mark.
In this analysis, we highlight three recent high-profile trademark disputes in the food industry. The disputes illustrate the importance of protecting brands early, especially for any company aiming for viral fame, and underscore the value of intent-to-use applications. They are also teachable moments for companies that might be tempted to overreach and risk being branded a “trademark bully.”
Momofuku Gets Burned by “Chili Crunch”
Another viral marketing lesson comes from the recent imbroglio involving celebrity chef David Chang and his Momofuku restaurants. Chang recently stepped into a spicy situation by trying to capitalize on the pandemic-fueled popularity of chili crisp, or chili crunch, products.
This Asian-styled sauce commonly includes the use of dried chilis steeped in oil and combined with bits of fried garlic, sesame seeds, or other ingredients that give it a distinctive crisp or crunch. Although chili-oil sauces have been used in Chinese cuisine for centuries, the increased popularity of the current variations trace back to the late 1990s when Lao Gan Ma marketed its version as “Spicy Chili Crisp.” Lao Gan Ma apparently never sought trademark registration for “Chili Crisp.”
Chili crisp sauces’ popularity exploded with viral fame during the COVID-19 pandemic, leading to a surge in chili crisp or chili crunch products hitting the market. In 2020, many small companies capitalized on the consumer demand with homemade recipes in small batches, and large culinary brands such as Momofuku also chased the demand.
Unlike Lao Gan Ma, Momofuku has been trademark-active. In 2023, it acquired the “Chile Crunch” mark, registered since 2014 for a crunchy Mexican-style sauce. In March 2024, Momofuku separately applied to register the mark “Chili Crunch.” Soon after, Momofuku’s attorneys sent cease-and-desist letters to several businesses producing chili-oil sauces branded as “chili crunch,” presumably asserting a common-law trademark given the absence of federal registration.
Outrage against Momofuku quickly spread online over what some saw as a powerful company’s a empt to monopolize a commonly used name of a traditional Chinese sauce while simultaneously squeezing out smaller competitors. In response to this backlash, Momofuku almost immediately reversed course.
On April 12, 2024, Chang apologized on his podcast and announced that Momofuku would no longer enforce the “Chili Crunch” mark. Chang’s podcast featured Momofuku CEO Marguerite Mariscal, who expressed Momofuku’s position that the “Chili Crunch” mark should be able “to be used by everyone” and discussed Momofuku’s efforts to “deem the mark generic.” According to Chang, Momofuku’s current plan would not enforce the trademark, and, “by doing so, it’s possible that it becomes a generic term and nobody can own it.”
Thus, for the time being, the conflagration over “Chili Crunch” has been extinguished. The chili-oil companies using this or similar phrases are seemingly no longer targets of Momofuku. Notably, the current “victory” was secured in the court of public opinion, so it remains to be seen if Momofuku will change its current stance. If it does so, Momofuku’s actions might be seen as an admission that the mark is generic under Section 14 of the Lanham Act (15 U.S.C. § 1064(3)).
This dispute is also a poignant lesson on the danger of trademark overreach. Often, companies’ trademark disputes are concerned with consumer awareness, but those companies should also be sure that those same disputes are not tainting the very consumer awareness at issue.
MrBeast Gets Slapped Down by Dee’s Nuts
A third very recent dispute over food-related marks involved a David-and-Goliath battle between a smaller Florida-based peanut company and the online personality Jimmy Donaldson a/k/a MrBeast, the most-subscribed YouTube celebrity with over 250 million subscribers. Here, the “David” company, with the help of a registered mark, was able to stave off MrBeast’s competing candy bar named “Deez Nuts.”
To many, the phrase “deez nuts” is a common playground punchline that first saw mainstream usage when rapper Warren G used the phrase in Dr. Dre’s song Deeez Nuuuts on his 1992 debut album The Chronic. The phrase has been frequently used in songs and television shows, seeing a rise in popularity in 2015-2016 when it became a popular internet meme.
Prior to the phrase’s 2015 resurgence, though, in 2011, a Florida-based company called Dee’s Nuts LLC filed its application to register “Dee’s Nuts” as a mark for processed nuts. Brian Ditore, owner of the company, said he chose the name to honor his grandmother, Adeline D’amore, known as “Mrs. Dee.” According Ditore, Mrs. Dee’s “laughter and belief that life should not be taken too seriously inspired Brian A. Ditore to select a trademark that paid homage to her and her comedic flair.” The mark was registered in September 2012, with an earliest use in commerce of May 3, 2012.13
Enter MrBeast, whose YouTube videos have amassed an astounding 47 billion views. In 2022, MrBeast’s Feastables brand started selling a candy bar branded as Deez Nutz, presumably to capitalize on the viral popularity of the name.
That did not sit well with Ditore of Dee’s Nuts LLC. On August 25, 2023, his company sued Feastables for trademark infringement, alleging confusion between Dee’s Nuts peanuts and MrBeast’s Deez Nutz candy bar. Dee’s Nuts LLC also sought to enjoin the sales of the candy bar. Feastables opposed the injunction, arguing that consumers were unlikely to be confused due in part to frequent third-party use of the phrase “Deez Nuts.”
Feastables pointed to the phrase’s use in hip hop and R&B since the 1990s. It also relied on an Iowa teenager’s attempt to run for president in 2016 under the name “Deez Nuts.” (Mr. Nuts was apparently polling at 9%, behind Donald Trump and Hillary Clinton.
Before the court ruled, the parties reached an undisclosed settlement and agreed to entry of a permanent injunction on, granted in December 2023, officially making MrBeast’s Deez Nutz candy bar a collector’s item.
This David-and-Goliath spat contextualizes the value of early trademark registration. Even though the phrase at issue has been in the public lexicon for decades, Dee’s Nuts LLC’s prompt trademark registration for its nut product enabled it to successfully repel a business threat from a massive potential competitor.
Takeaway Points
Trademark law provides for an expedient process for filing for federal registration, even before a product or service is used in commerce. Any company experiencing viral fame of a product or service should take advantage of the trademark registration. For a company that is planning an online marketing campaign for a soon-to-be-released product or service, the company should consider an intent-to-use application, under Sec on 1(b) of the Lanham Act (15 U.S.C. § 1051(b)). Filing applications early can avoid, or at least minimize, disputes that are likely to arise once the company reaches viral fame.
As the preceding three examples show, trademark protec on is more important than ever, especially with viral products and services. Taking too long to file an application for registration can lead to legal confrontations that would have otherwise been avoidable. Don’t get caught lagging on registering trademarks in the TikTok age. And be careful of overreach, lest one be tarnished as a trademark bully.