Suspicious Twin of an Old Brand Name, in Chinatown

The new store, with the old name, on Mott St. (Photo via Sing Tao Daily)

[The following is a condensed version of the story that appeared on Feb. 2 in Sing Tao Daily by April Xu.]

Fong Inn Too, a snack shop that sold tofu products in Chinatown for more than 80 years, had many fans. And they miss the shop since it closed for good early last year. So when they saw a store bearing “宏安,” the Chinese name of Fong Inn Too, had “reopened” early April at its old location at 46 Mott St., they were thrilled. But Paul Eng, the owner of Fong Inn Too, said the new shop has nothing to do with his family business, and he was enraged by the infringement of the trademark of “宏安.”

At the end of January 2017, Fong Inn Too announced that it had decided to close the snack shop and sell the building where the shop was located because the owner was aging. In June, a red banner was put on in front of 46 Mott St. with a line in yellow saying in Chinese “ ‘宏安’ is coming back to Chinatown.” But in English text, the name of the shop was printed as “Fong On NYC.” Early this month, Fong On opened at 46 Mott St. with the same Chinese name “宏安” to sell snacks like soy milk, white sugar cakes and brown sugar cakes, a menu similar to the one available at the original Fong Inn Too.

Eng said that Fong Inn Too signifies more than a trademark for his family. It was the original name of his grandfather who came to the U.S. in the 1930s from Toy Shan, China. In 1933, the grandfather created Fong Inn Too to sell traditional snacks. Eng said it was not easy to make these snacks. Family members often had to rise at 4 a.m. to prepare, and they worked six days a week like that year after year. “My grandfather, my parents, my brother and I had been working so hard over 80 years to build this brand name. My mother had been running the shop until she was hospitalized,” said Eng. “How can we tolerate other people taking [the name] to make quick money?”

Christian Liedtke, Eng’s attorney, said the family reached a “gentleman’s agreement” with the buyer when they sold the building of 46 Mott St. last year that requires the new owner remove the Chinese characters “宏安” and all related signs from the building. According to the record of the U.S. Patent and Trademark Office, Eng registered both “宏安” and “Fong On” on July 18, 2017. He said the trademarks were registered about 30 years ago. He only renewed them last summer. After they found the new shop was using the same Chinese name, Eng sent a “cease and desist letter” a week ago to the new owner of the property requesting they tell the tenants to remove the sign. But there has been no response yet.

Mr. Chan, the manager of the new shop, said he knows nothing about the agreement between the former and the current owners of the building. But he said the owner of the shop hired a professional attorney and accountant and went through the proper procedure when he (or she) registered the name “宏安 Fong On NYC Inc.” with the state. And no one said there was anything wrong at the time. “If this is a trademark infringement, why were we allowed to register it?” he asked.

Liedtke said the principle of U.S. trademark law is that the ownership of the trademark goes to the first-to-use, meaning that whoever uses the name first has the right to register the trademark. When companies register their businesses with the state government, the latter won’t check whether there is possible trademark infringement. That’s why “宏安 Fong On NYC Inc.” could be registered as a business.

“Our brand name ‘宏安’ being taken by other people makes my mother very upset. She kept asking me when the problem would be solved,” said Eng. “And a lot of people whom I bumped into on the streets of Chinatown also asked me whether we’ve reopened on Mott Street. But that’s not us.” He said although the snack shop closed, “宏安‘’s wholesale business of tofu products is still in operation at 81 Division St. He urges the owner of the new shop on Mott Street to remove the sign of “宏安“ immediately. Otherwise, he vows to take legal action. Eng also said that he plans to reopen the snack shop this summer to offer the real “宏安” products to nostalgic customers.


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