written by James Klobucar, Esq., Patent Attorney at Gearhart Law
One of the latest news stories to take the internet by storm stemmed from reports that King.com, makers of the wildly popular Candy Crush mobile application (amongst others), has trademarked the word “candy” in the United States. The furor brought about statements of disbelief such as, “how can someone trademark a common word?” to factual inaccuracies such as, “these copyright trolls must be stopped,” and “I hope they get sued by makers of Candy Land (board game).” Let’s attempt to clear the air a bit and understand exactly what has happened thus far, and why King.com has taken the actions they have.
Numerous reports have stated that King.com has received a trademark for “candy” in the United States; however, this is not yet the case. King filed for a trademark in the U.S. on the word “candy” for use in connection with a list of various items (see below) on February 6, 2013. The trademark was allowed for publication on January 15, 2014 and will be published on February 25, 2014. Upon publication, the trademark will enter a 30 day opposition period where any third party can oppose the mark if they believe they will be damaged by the granting of the mark. Only after successfully navigating this period will King be afforded federal rights to the mark. The confusion likely arose since King.com owns the same trademark in Europe (EU) and from a misinterpretation of the law by many of those on the internet.
In addition, others are frustrated that King.com is sending out cease and desist letters to various app developers who happen to have the word “candy” in the title of their app. They have effectively been deemed “trademark trolls” by the public and a “fraud” because they don’t yet own the trademark. However, unlike patent law, trademark law differs in that “if you don’t use it, you lose it.” Thus, in order to preserve their rights to the mark King.com must use the mark and must actively prevent others from using the mark or they risk losing their rights.Additionally, to assert your right(s) to a trademark you must have a reasonable belief that you have rights to the mark. Again, a misinterpretation of the law is likely to blame in that trademark and patent practices have been equated when they are two distinct areas of law governed by different rules.
Most of the conversation has centered over the attempt to trademark a single word. However a common, single word can be a trademark under trademark law. In fact, most of the American public is probably familiar with at least one such trademark. Apple? Time? Fortune? However, such marks are not descriptive of their goods. The notion of an apple does not generally give rise to a computer. Part of the issue many seem to have actually does have validity under trademark law in that “candy” describes the game Candy Crush where one indeed….crushes candies. An attempt to register a descriptive trademark should be rejected by the USPTO.
However, the filing for the trademark makes no mention of candy and it, in fact, has a laundry list of items including DVDs and video recordings featuring computer games, calculating machines, baby monitors, battery performance monitors, aprons, bandanas, bath robes, bathing caps, game equipment rental, operating lotteries, organization of sport and electronic games competitions, and party planning. Somewhere in the listing of well over 100 goods and services is the intended usage (as far as we know) for downloadable software for mobile applications. Additionally, King claimed their existing mark in Europe and filed the application under this claim, which is fairly uncommon. Thus, the USPTO and more importantly the Examining Attorney was probably not as diligent as they should have been and likely made some assumptions as to the validity based off the foreign filing.
The final element which has people riled up is the supposed “hypocrisy” of King.com. King was involved in a dispute over the cloning of a game they were in talks to acquire, and just recently filed an opposition to another app’s trademark to “saga” which is actually in King’s mobile application’s full name “Candy Crush Saga.” Thus, people see King sending out cease and desist letters for “candy” and then opposing someone else from obtaining the mark “saga.” To an extent, the anger and frustration is understandable even though their actions are in compliance with the law, and even necessary to preserve rights as noted above. The general outrage by the public and their perception of King led to a statement to be issued by Riccardo Zacconi, King’s CEO (see link below).