Did King.com Really “Trademark” the Word Candy?

by Greenberg Glusker Fields Claman & Machtinger LLP
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Much of the independent video game world is up in arms regarding the recent news that large UK game developer King.com has “trademarked” the word CANDY.  Many see this as an attempt by a Wonka-esque behemoth to grab control of a common word in order to crush its smaller competitors like some piece of common confectionary.  While there may be some truth to that thought, as is often the case when legal issues get picked up by the blogosphere and even mass media, there are also many misperceptions clouding the debate.  Because I feel that if I’m going to take a (short) break from playing CANDY CRUSH, I might as well write about it, I want to try to clear up some misconceptions.

First, King.com has not “trademarked” the word CANDY.  Most non-lawyers loosely use “trademark” as a verb to indicate that a person or company has obtained a federal trademark registration for a particular word, phrase or design.  King.com has not yet reached that point.  At the time of this writing, King.com merely has a pending U.S. application to register the word CANDY for a wide variety of goods and services. In other words, even using laymen’s terms, King.com has not yet “trademarked” the word CANDY in the U.S.

That being said, they have indeed successfully moved through the entirety of the United States Patent and Trademark Office’s review procedure.  The USPTO has approved the application for “publication” (more on that later), meaning that the USPTO looked over the contents of the application and found nothing wrong with it and feels that the application is registrable without any changes.

This is upsetting to many people looking at this issue, especially smaller developers, who feel that no company should be able to “trademark” a common word like CANDY.  It’s not quite that simple.  A common word can indeed be the subject of valid trademark rights as long as it’s used on something unrelated to that word.  If I create a brand new kitchen cleaner and call it CANDY, I can indeed control exclusive rights to use that word for kitchen cleaners because anyone seeing a common but unusually utilized word like CANDY on a kitchen cleaner is bound to associate it with my product.

No, the problem isn’t that the word CANDY is a common word… it’s that it is descriptive as used in this context. Those who are upset are intrinsically keying in on a key aspect to trademark law: no one company can claim exclusive rights in a word that is otherwise generally used to describe the product or service that company is offering.  In this case, the main problem seems to be that King.com is trying to claim the exclusive right to use the word CANDY in the title of a game that is about… CANDY!!!  If they were able to do that, they wouldn’t be able to stop developers from making games about candy (which is completely permissible under intellectual property law) but they could stop them from using CANDY in the title of those games.

The problem is that the USPTO is supposed to reject any application for a mark made up solely of a descriptive word.  It appears to have dropped the ball in this case which could have happened for a few reasons.  First, King.com’s application doesn’t cover any candy products. In addition to games, the application covers a wide array of ridiculously irrelevant items such as “baby monitors,” “football boots” and, my personal favorite, “hosting social entertainment events, namely, karaoke parties for others.”  The USPTO just may not have thought to ask if any of those vast array of products and services had anything to do with candy.  Second, King.com’s application was filed on somewhat rare grounds in that it is based on a prior existing European registration King.com owns for CANDY. The Examiner reviewing it understood that it was already registered somewhere else and, thus, may not have analyzed it as vigorously as normal.

However, despite the fact that the USPTO may have let one slip by, even though King.com is indeed close to “trademarking” CANDY, they’re not quite there… and this last step is critical.  The application will soon move into a 30 day publication period. When an application is “published,” the USPTO is essentially telling the world “Hey world, we looked at this application and it looks okay to us so we’re about to register it… if you have any problem with that, now’s your time to let us know.”  In other words, for all those developers who are feeling helpless by this news, all is not lost. The application can still be blocked. Who can oppose it? “Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register.” That’s a pretty broad description and is bound to include any developer who has released or plans to release a game involving candy who wants to use the descriptive word CANDY in the name.

In the meantime, developers are expressing concern that King.com is sending out cease and desist letters and sending takedown notices to app stores based on either its pending US application or existing European registration.  They’re feeling beat up upon and helpless. They are neither. The great thing about the law is that it’s not one sided.  If a developer receives a cease and desist letter and thinks it is baseless, the developer can always (a) ignore it; (b) respond explaining why it is baseless; or (c) respond in an incredibly snarky and aggressive tone as to why it’s baseless.  If a developer is the subject of a takedown notice on the app store, the particular app store should also give the developer an opportunity to respond and argue against the basis of the takedown.

Developers need to understand that, while an expensive, bloodsucking lawyer like yours truly may help in this process, we are not always necessary (you don’t need a lawyer to ignore a letter).  It all comes down to whether the pushing will ever come to shoving. For King.com to truly prevent developers from using the term CANDY, it would eventually have to file a trademark infringement suit based on the rights it believes it has. The question developers should ask is whether King.com would take that risk if its rights are shaky.  While it may have more money than the average independent developer, it is probably not all that likely to spend the money to file a losing lawsuit.

One final word of warning before I start sounding a little too much like a raging champion of the little guy while turning a blind eye to the plight of the powerful…  I’m confident that in many instances, King.com has indeed been injured by the myriad of CANDY CRUSH copycats that have sprung up. To the extent small developers are doing more than capitalizing on a craze and are taking steps to intentionally confuse consumers looking for CANDY CRUSH into buying the developer’s game instead, King.com has a very valid reason to be upset.  For whatever developers may say about the originality of the gameplay, King.com has done something to create an addictive and extremely popular game and should be able to prevent others from creating knockoffs that lead to consumer confusion.  Is registering CANDY the right way to do it? Probably not because it may be used to shut down more than the bad actors intentionally creating true confusion.  But it could be a desperate attempt by King.com to do something to curb those bad actors that are indeed out there.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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