United States Patent and Trademark Office (USPTO) records indicate that King, also known as Digital Entertainment PLC, publisher of the popular game Candy Crush Saga, applied to register a trademark for the word “candy” in February, 2013. (US Trademark Application Serial Number 85842584.) PCMag reported that King had already trademarked “candy” in the EU where, according to King’s spokesperson, the company’s intellectual property is constantly being infringed upon. The firm sought the same security in the US market, leading critics to pounce weeks before March 26, when, according to Forbes, the company tanked in its market debut.
The application to register the “candy” trademark was approved on January 15, 2014. One intellectual property commentator told the San Jose Mercury News that King’s move was “blatantly anti-competitive and not what trademark law is about”. Forbes contributor Eric Kain wrote “No corporation should have legal rights to any word I can use in Scrabble—words like ‘candy’ or ‘saga’ for instance.”
In late January, King’s CEO Riccardo Zacconi published an open letter responding to his critics. He stated:
[T]he truth is that there is nothing very unusual about trademarking a common word for specific uses. Think of ‘Time,’ ‘Money,’ ‘Fortune,’ ‘Apple,’ and ‘Sun,’ to name a few. We are not trying to control the world’s use of the word ‘Candy;’ having a trade mark doesn’t allow us to do that anyway. We’re just trying to prevent others from creating games that unfairly capitalise on our success.
Zacconi’s analogy to “Apple” and “Time” and others is partially right. Apple Computer and Time magazine and others can also show “acquired distinctiveness” for their respective trademarks by virtue of long, continuous and broad public and commercial use in the marketplace. However, according to the Trademark Manual of Examining Procedure, in order to make the same claims King’s “candy” would have had to demonstrate at least 5 years of such wide public use.
The New York Times reported that by the end of 2013, more than half a billion people had installed Candy Crush Saga, generating revenues for King of a little under $1 million each day. So it might make sense that King would be as proactive as possible in stopping other developers from glomming on to its own successes. Certainly any game whose title contains the word “candy”, even if it has nothing to do with Candy Crush Saga, might offer a boost in SEO rank due to Candy Crush Saga’s popularity.
Let the Games Begin
King’s application with the USPTO to register its trademark stated that the goods and services for which its trademark would be registered would not be limited to mobile games, mobile apps, and related mobile software, but would also include computer hardware, mobile accessories, clothing items such as shower caps and ski boots, and entertainment events such as karaoke parties. If King’s trademark for the word “candy” had been registered, anybody offering the dozens of goods and services listed in King’s application (which to my knowledge King neither previously provided nor currently provides) and containing the name “candy” could have potentially been vulnerable to King’s claims of trademark infringement. This would have been the case for at least those that could not prove their use of “candy” prior in time to the claimed date of King’s use or those whose uses did not contain additional words that could have safely distinguished their use from King’s use.
The Saga Continues
In addition to its quest to gain some control over use of the word “candy”, King also opposed trademark registration by game maker Stoic’s “saga” for the game The Banner Saga. Forbes reported that in its application for opposition to the indie firm’s trademark registration, King argued that Stoic’s “THE BANNER SAGA mark is confusingly and deceptively similar to [King]’s previously used SAGA Marks.”
It is true that several of King’s games include the word “saga”, and in his open letter Zacconi addressed this matter as a second issue. He then admitted that Stoic’s The Banner Saga bears no resemblance to Candy Crush Saga or any other King game, further stating that King does not believe that Stoic is attempting to infringe or capitalize on the latter game’s successes. Zacconi made clear that King’s intention was to warn that copycats would not be tolerated under any circumstance:
We don’t believe that Banner Saga resembles any of our games but we already have a series of games where “Saga” is key to the brand which our players associate with King, such as Candy Crush Saga, Bubble Witch Saga, Pet Rescue Saga, Farm Heroes Saga and so on. All of these titles have already faced substantive trademark and copyright issues with clones.
We’re not trying to stop Stoic from using the word Saga but we had to oppose their application to preserve our own ability to protect our own games. Otherwise, it would be much easier for future copycats to argue that use of the word “Saga” when related to games, was fair play.
Stoic responded: “King.com claims they’re not attempting to prevent us from using The Banner Saga and yet their legal opposition to our trademark filing remains.”
In Zacconi’s statement, he also refers to Pac-Avoid, a game published 5 years ago by King that, according to developer Junkyard Sam, is a copycat of Scamperghost. In his statement, Zacconi wrote that King should have never published Pac-Avoid, that it had removed the game from its site, and he apologized for publishing the game the copied game. Zacconi goes to lengths to underscore King’s commitment to a thriving game development community:
We believe in a thriving game development community, and believe that good game developers – both small and large – have every right to protect the hard work they do and the games they create.
Before we launch any game, we do a thorough search of other games in the marketplace and review relevant trademark filings to ensure that we are not infringing anyone else’s IP. We have launched hundreds of games. Occasionally, we get things wrong. When we do, we take appropriate action.
A Never Ending Saga?
Throughout most of January and February, mobile game developers, intellectual property commentators and consumers alike criticized King for its actions and criticized Zacconi for his open letter in defense of… well, everything. And just when things started to get a little quiet, in early February, King sought to challenge yet another company. In this case, however, the challenge came first from the other direction.
Runsome Apps published CandySwipe, a game which existed 2 years before Candy Crush Saga was first published. According to Gamezebo, in April 2013 Runsome’s founder, Albert Ransom filed an opposition with the USPTO to King’s trademark application for Candy Crush Saga, which stated that “[King’s] mark, CANDY CRUSH SAGA, is confusingly similar to [Runsome]’s mark, CANDYSWIPE. [King’]s goods and services… are also very similar to [Runsome]’s goods and services.”
Huffington Post reported that King had gone shopping and in January had acquired rights to a trademark for a mobile game called Candy Crusher. USPTO records indicate that Candy Crusher (first use 2008) preceded CandySwipe (first use 2010), so it would appear that King, once again, had the upper hand. Forbes reported that “[Albert] Ransom is abandoning his game after a protracted legal battle.” In his own open letter (which was updated on Feb 22, 2014, and replaced with a “thank you message”), Ransom, who writes that he spent three years working on the game as an independent app developer, is not so sweet. Ransom states that he developed the game in memory of his mother and expressed his outrage at King’s attempt to take away his livelihood.
The End
On February 24, 2014, one day before “candy” would have been published for opposition, King formally abandoned the trademark application for “candy”. In a statement to GamesBeat, a King Spokesperson said “King has withdrawn its trademark application for Candy in the U.S., which we applied for in February 2013 before we acquired the early rights to Candy Crusher”. According to GamesBeat, King plans to use the trademark “Candy Crusher” to protect Candy Crush Saga.
In Zacconi’s open letter, he wrote “At its simplest, our policy is to protect our IP and to also respect the IP of others”. Is this indeed the end for King’s trademark “saga”? Please share your thoughts below.
Many thanks to Andy Mirsky, Principal with Mirsky & Company, PLLC, for his contribution to this post.
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