Anyone out there play Candy Crush SagaTM? I do (I just finished Level 215, thank you very much), and I know a lot of other people that do too. For those of you who aren’t familiar, Candy Crush SagaTM is a puzzle game, originally released for Facebook, but now available for mobile phones and tablets. It’s one of (if not the) most popular apps out there right now (with over 500 million downloads from Apple and Android users alone). But many may not be aware of the trademark “scandal” that the addictive game is embroiled in, and it appears even fewer people have a good understanding of the underlying principles of trademark law that govern the dispute.
The most recent issues started when it was discovered that King.com Limited (“KingTM”), the maker of Candy Crush SagaTM had applied for a United States Trademark (Serial No. 85/842,584) for the term “candy” in connection with various computer software and products, clothing, and entertainment products (in International Classes 9, 25 and 41, respectively). The U.S. Application was based upon a prior European Union registration. The U.S. Trademark application is set to be “published” by the United States Patent and Trademark Office (“USPTO”) on February 25, 2014. This means that the USPTO has deemed that the “candy” mark is entitled to Registration. It appears that, in light of the impending publication of its mark, KingTM is beginning to assert its rights against other app developers that use the word “candy” in the name of their products. In addition, though it does not appear to be in connection with an existing trademark application, KingTM is apparently also asserting common law rights against other app developers that use the term “saga” in their titles.
However, the news of the publication of the application has sent other app developers, bloggers, and news media sources into an uproar. Many are crying foul, claiming that allowing someone to trademark a word as common as “candy,” is “anti-competitive,” “crazy” and even “dangerous.” In fact, other app developers have organized a “protest,” called CANDYJAM, against the trademarking of common words like “candy” and “saga.”
But, all this hubbub has left us wondering if the people out there reading about CANDYJAM and Candy Crush SagaTM really have a good understanding of why the USPTO would have allowed the “candy” application to move forward in the first instance. And so, we figured it might be beneficial to provide just a bit of background information on trademark law in the hopes that it helps interested parties better understand the underlying facts.
Strength of a Trademark, or, why “candy” is registrable in connection with an app or game:
Trademarks vary in inherent strength over a spectrum. The stronger a mark is, the broader the protection it is afforded.
- Coined or fanciful trademarks are considered to be the strongest, and are marks which use works which have no meaning outside of the marks themselves, such as “KODAK” or “XEROX.”
- Arbitrary trademarks are considered to be the second strongest, and use ordinary words, but in a manner not associated with the “generic” product or services the brand is associated with, such as “AMAZON” booksellers or “APPLE” computers.
- Suggestive trademarks use words that are associated with the product or service, such as “WRANGLER” jeans, and, consequently, offer a narrower scope of protection.
- Descriptive trademarks convey an immediate idea of the characteristics of the goods and services they are used in connection with, such as “CHAPSTICK” for lip balms. As a general proposition, without acquiring “secondary meaning,” descriptive marks are offered no protection. Descriptive marks are considered to be quite weak, if they do obtain secondary meaning, are afforded less protection than the other types of trademarks listed above.
- Generic terms are never registrable and cannot function as a trademark. They are simple the words of the goods and services themselves, and can never identify a source, such as “MILK” brand milk.
The bottom line is that, as the law currently stands in the United States, “candy” is capable of functioning as a trademark for games, apps and clothing, just as “apple” is capable of functioning as a trademark for computers. While they are common terms, they are not utilized in their traditional, generic sense. KingTM did not attempt to register “candy” brand candy. That mark would clearly be deemed to be generic, and registration would be refused. Nor would KingTM be able to successfully assert common law rights in the term “candy” against candy manufacturers. At best, “candy,” as described in the application at issue, is “arbitrary,” and is quite a strong mark. At worst, “candy,” because the game involves lining up pieces of candy, is “descriptive,” though we note that the nature of the game, i.e. that it involves lining up matching pieces of candy, is not described in the U.S. trademark application.
But “candy” is such a common word! Why is KingTM being so aggressive in protecting it?
Quite simply, failure to proactively protect a trademark can lead to loss of rights. In an extreme case, if a trademark owner does not prevent others from using its trademark to refer to a class of goods or services as a whole (in contrast with the trademark owner’s specific brand), that trademark could become associated with all goods or services of that type and become “generic” for that class of goods. For example “aspirin” was once a valuable trademark of Bayer® which became generic through misuse. Once a trademark becomes generic, it becomes impossible for the trademark owner to prevent others from marketing such a good or service using the generic term. KingTM is attempting to proactively protect its trademarks, because if they don’t, they risk their mark becoming “generic.”
Right now, the USPTO has not deemed “candy” to be generic for the goods or services that the application is directed to. We think it is safe to assume that there will be many oppositions filed in response to the registration, but the question is, under existing law, will they be successful?
(Abigail Remore)