If you or I wanted to trademark a common dictionary word—let's say "snow"—we'd have a tough time making a case that we deserved exclusive rights to use that word. When a major corporation like Candy Crush Saga maker King tries to trademark a common dictionary word—like "candy," for instance—it has a slightly better chance of claiming limited rights over that small part of the English language. But it's far from an open-and-shut case.
This legal issue has come into the news this week as King attempts to shut down competing games that it says use the term "candy" in their titles in "damaging" and "confusing" ways. As Gamezebo first reported, the company recently sent such a notice of infringement to Danny Hsu, the maker of iOS game All Candy Casino Slots - Jewel Craze Connect: Big Blast Mania Land.
In a statement from a King spokesperson, the company said its position is based on a trademark granted for "candy" in the European Union (the company is based in London). As far as United States law is concerned, though, King may be jumping the gun. True, the US Patent and Trademark Office published King's "candy" trademark last week, after a February 2013 filing. That's still one step removed from having the trademark registered with the USPTO, though. Before the trademark is granted, King will first have to get through a 30-day period where anyone can file an official opposition to the filing (as explained in detail here).
"Realistically, I would assume a small army of people will oppose [this trademark filing]," Mark Methenitis, chair of the Video Game Committee at the American Bar Association and the editor-in-chief of the Law of the Game blog, told Ars. "I have to assume there will be a lot of opposition, as there are dozens of 'candy' games that predate Candy Crush."
Indeed, a cursory search turns up roughly a thousand prior games that use the term "candy" in their title, as you'd expect for such a common word. That list includes PC shoot-em-up Bullet Candy, children's Game Boy Color title Tiny Toon Adventures: Dizzy's Candy Quest, and Candyz (a match-three puzzle game that bears more than a slight resemblance to Candy Crush). And that doesn't even get into board games like Candyland or gaming websites like Candystand.com. All of these works and properties would seem to have just as much claim on a word like "candy" in a video game context, if not more.
King, for its part, said in a statement that "our IP is constantly being infringed and we have to enforce our rights and to protect our players from confusion. We don't enforce against all uses of CANDY some are legitimate and of course, we would not ask App developers who use the term legitimately to stop doing so."
In the particular case of Hsu's app, King notes that "its icon in the App store just says 'Candy Slots,' focusing heavily on our trademark. As well as infringing our and other developer's IP, use of keywords like this as an App name is also a clear breach of Apple's terms of use. We believe this App name was a calculated attempt to use other companies' IP to enhance its own games, through means such as search rankings."
Common word or protected term?
The idea of protecting a word as common as "candy" isn't as ridiculous as it might seem. Companies like Apple, Adobe, Lotus, Sun, Sprint, Beefeater, Comet, Nickelodeon, Jaguar, and even King itself all show that it's not that hard to trademark an "arbitrary" dictionary word that has nothing to do with your core business.
Those trademarks are all generally confined to their specific industries, though. King is seeking to have its claim over of the term "candy" applied to a dizzying array of over 100 fields, ranging from DVD players to baby monitors, exposed photographic film, educational services, amusement parks, gambling facilities, and practically every article of clothing you could name.
"It's a little silly to think that King's big—yet brief—success could really grant this kind of protection," Methenitis argues, noting that King's filing has already been thrown out and reconsidered once before getting to this point. He also notes that while Zynga was able to get a trademark for its unique "-ville" suffix, the company probably couldn't have claimed a trademark on the word "farm" (luckily for King, which publishes a game called Farm Heroes Saga). King has also filed an application for a trademark on the word "Saga," but that effort has been suspended by the USPTO as of December.
Wielding even a tenuous trademark like a weapon isn't unheard of in the video game world, though. Game developer Tim Langdell famously used a shady trademark for "Edge Games" to go after everything from EA's Mirror's Edge to indie puzzle-platformer Edge before finally having his trademark canceled just last year. Back in 2011, Doodle Jump maker Lima Sky tried to use its trademark on the term "Doodle Jump" to go after a number of games with the word "Doodle" in it.
Those tales could be a bit chilling to small game creators like Candy Casino maker Hsu, who told Gamezebo that he and others like him "don't have the money or resources to fight back."
But challenging King's trademark in the 30-day post-publication review period is a lot easier than fighting a federal lawsuit over a registered trademark, Methenitis says, requiring only an administrative hearing at the Trademark Trial and Appeal Board. And he seems relatively confident that a variety of interested parties, such as some of those mentioned above, will come out of the woodwork to do just that in the next month (the USPTO and Hsu have not yet responded to requests for comment).
"What King can send a cease-and-desist to and what they can actually enforce against are two very different questions," he said. "I'm not sure it would be able to stand up to a challenge at the USPTO pre-registration, much less one in court... and looking at the classes, I'm guessing 'Candies' will likely have an interest in shutting this down, too. I would have to imagine they would act to intervene, but that is ultimately their call. Or they can wait for King to come to them."
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