– Draeke Weseman, Weseman Law Office, PLLC
Recently, Steve wrote a piece about the branding at a Saint Paul Vietnamese restaurant named iPho. Pho is a popular, traditional Vietnamese street food – a simple soup made by combining rice noodles and meat in a large bowl filled with aromatic broth. One of the most enjoyable steps in eating pho is tailoring the soup’s flavor after it’s served, with the addition of fresh basil leaves, bean sprouts, hoisin sauce, and sriracha. In the United States, there is no better-known sriracha than the “rooster sauce” produced by Huy Fong Foods. It’s easy to recognize the bright green caps on Huy Fong Foods’ bright red bottles of sriracha:
I made this sauce for the Asian community. I knew, after the Vietnamese resettled here, that they would want their hot sauce for their pho. But I wanted something that I could sell to more than just the Vietnamese.
The story of Huy Fong Foods’ sriracha is filled with the stuff of the American Dream – an immigrant refugee, a humble American-made product, a multi-million dollar success, and a trip to outer space. Can you spot Huy Fong Foods’ sriracha bottle in this photo?
For the trademark-types and marketing-types that read DuetsBlog, Huy Fong Foods’ story also makes a compelling, ongoing case study.
Sriracha sauce originated in Si Racha, Thailand, a coastal city where locals commonly serve the sauce as a condiment for fresh seafood. Like “champagne” from Champagne, France, the sauce from Si Racha, Thailand simply became known as “sriracha.” But, unlike Champagne, the name “sriracha” has not been carefully protected against affiliation with sauces not made in Si Racha. (For more about the protection of Champagne trademarks, see Timothy Sitzmann’s DuetsBlog piece: The Champagne of Trademark Disputes.)
Without such enforcement, Huy Fong Foods’ founder David Tran was free to call his new American-made sriracha sauce “sriracha” even though, as he later confessed to the New York Times, “I know it’s not a Thai sriracha. It’s my sriracha.” Rather than rename the sauce for branding, Mr. Tran named the company Huy Fong Foods, after the boat that carried him to America as a refugee. He adopted his zodiac sign, the rooster, as the company logo, and placed a bright green cap on top of his clear bottles, filled with bright red sriracha. He simply hoped Vietnamese immigrants would like it enough to add it to their pho and maybe an adventurous American would try it on a slice of pizza or a hot dog. To encourage this wide application, his bottle reads “Sriracha, made from sun-ripened chilies, is ready for use in soups, sauces, pasta, pizza, hot dogs, hamburgers, chow mein or on anything to add a delicious, spicy taste.”
Today, sriracha is used on all those things and more. Like sriracha? Buy yourself a sriracha t-shirt, a pair of sriracha heels, a sriracha cookbook, sriracha lip balm, sriracha socks, a sriracha water bottle, or even sriracha candy canes for your Christmas tree. Fans of sriracha can dress up in sriracha costumes and get sriracha tattoos. You can even watch a documentary about sriracha, funded through Kickstarter. Just note that all of these sriracha products reference sriracha through Huy Fong Foods’ federally registered trade dress and logo.
This widespread association of Huy Fong Foods’ trade dress with a generic concept of “sriracha,” if uncontrolled, is not necessarily a good thing from a trademark perspective. As a fundamental matter of trademark law, the generic word “sriracha” can never become a trademark for Huy Fong Foods’ sriracha. Just read Steve’s post about Subway’s doomed attempts to trademark the generic word “footlong” for its sandwiches here. But the opposite isn’t true: a trademark, including trade dress, can lose its distinctiveness if it’s used too widely, without reference to a single source. Indeed, Huy Fong Foods’ trade dress – its bright green bottle cap – could lose its distinctiveness if it becomes so commonly used that it becomes synonymous with any sriracha, not just Huy Fong Foods’ sriracha.
Now consider the most recent sriracha product: UV Sriracha Vodka.
What you immediately notice, of course, is the bright green bottle top and a bright red bottle. So, is this vodka infused with the sriracha of Huy Fong Foods? In its press release, UV offers the following answer:
UV Sriracha is infused with a proprietary blend of chilis, garlic and vegetables. These flavors honor the traditional sriracha hot sauce, named after Si Racha, Thailand; the city where it was first created. Everyone is craving the wildly popular sriracha, which some claim as the world’s favorite condiment for anything. Snacks, candy and numerous food products are riding the sriracha craze; however UV is the first vodka to satisfy fiery flavor fans.
UV’s answer appears to be “no” – just a “proprietary blend” to “honor the traditional sriracha hot sauce.” But what about the bright green cap atop the bright red bottle? What about Huy Fong Foods’ trade dress?
Based on the little chili image on the UV Sriracha Vodka label, I’m guessing UV’s explanation is that its bottle cap and bottle simply suggest a generic chili. I’m also guessing that means the green bottle top isn’t used with Huy Fong Foods’ permission.
Trademark-types, while UV’s likely explanation and bottle design won’t win any vodka bottle design awards, is it sufficient to avoid a claim of trademark infringement from Huy Fong Foods? Given the fanbase for Huy Fong Foods’ sriracha and its trade dress, should Huy Fong Foods be more assertive in its licensing and enforcement? If not, is Huy Fong Foods’ hot trademark at risk of cooling off?
Marketing-types, what if I told you that Huy Fong Foods sold $60 million worth of sriracha last year without a Facebook page or Twitter account, and without spending a single cent on advertising? Would the trademark-types’ concerns justify a “look for” ad campaign (beyond the company’s simple FAQ page), despite owner David Tran’s fear that advertising of any kind would widen the gap between demand and his ability to supply an uncompromisingly high-quality product? If demand is outpacing supply, would you raise the price, despite Tran’s single guiding business principle to “make a rich man’s sauce at a poor man’s price?” What other solutions might exist?
Finally, what should Huy Fong Foods do about this?
P.S. If you come across some UV Sriracha Vodka – well, you’ve been warned.