In the last few weeks, there has been a fair amount of media on King.com and their efforts to use trademark registration with seemingly innocuous words that appear in the video game Candy Crush Saga. The debate largely focuses on a public perception that innocuous words can be taken out of the public domain. This is not really the case.
Trademark registration
Trademark registration (or service mark registration) first requires a mark that you use to sell something. If you have a mark that you plan to use, you can file an intent to use application for it, but you are going to have to use it at some point to sell something. If you need some help filing your application, I would be happy to help you.
Trademarks Registration begins with selecting a class in which to file, this is the stuff are you going to try to sell with the mark. There are a number of classes, but most of the Candy Crush Saga marks are filed in a few of these six classes: Class 9 – recording devices; Class 16 – paper products; Class 25 – clothing; Class 35 – advertising; Class 36 – currency; and Class 41 – educational materials.
Trademark registration further requires the mark to meet a few requirements set forth in the Latham act: 1) It cannot resemble another mark registered by the U.S. Patent and Trademark Office (USPTO) 2) It cannot be merely descriptive of whatever is being marked. However, you can register a descriptive mark that has received secondary meaning in the marketplace.
The next step of trademark registration involves the trademark application being reviewed by a trademark attorney at the USPTO. If both of the above requirements are met, the mark is published and there is an opportunity for the public to object. If there is an objection, then there can be a trial before the Trademark Trial and Appeal Board, or, more likely, a settlement that changes the registration a bit. There are more requirements, but for present purposes, those are the big ones.
Trademarks in Candy Crush Saga
Trademark numbers by King.com can be found by using the TESS database provided the USPTO. A simple search indicates that King.com has attempted trademark registration for at least 85 trademarks. Of those only ten have actually issued as registered trademarks and the balance are somewhere in the review process. Here is a description of Candy Crush Saga with marks that have been registered hyperlinked.
Candy Crush Saga is a match three puzzle game where a user exchanges pieces of candy one at a time in an effort to create match pieces of candy in order to solve puzzles. Puzzles are organized into episodes (such as Candy Factory), the episodes are arranged into worlds and the worlds amalgamate to the Saga. Successful matching can result in feedback from the game including messages such as sweet, tasty, delicious and divine. Successful completion of a puzzle results in a “sugar crush“. Users are walked through the levels by Mr. Toffe and Tiffi. Candy Crush Saga is a freemium game where users can purchase premium upgrades in the Yeti Shop.
Trademark Registration Successes and Challenges
Trademark registration for “Candy” was initially rejected in some parts of class 41 because of the mark Kandy which was filed in class 35. The examining attorney stated that the beauty pageants described in Kandy were too close to educational seminars sought for Candy and likely to cause confusion. King.com responded by disclaiming those functions and making some minor alterations in the class requests.
Trademark registration for “Candy Crush” has been initially rejected in classes 40 and 42, but is otherwise allowable. Crush is a delicious orange flavored soda made by Dr. Pepper/7-up protected by quite a few trademark registrations in classes 30 and 32 (beverages).
Trademark registration for “Candy Factory” was rejected in part because Global Gaming Group makes a slot machine (also in class 9) with the name Candy Factory. It was further rejected in view of the video game Candace Kane’s Candy Factory which was registered a few years ago. Class 9 probably isn’t happening, classes 16 and 41 might happen. There are a lot of classes with no objection and with some minor changes the mark will probably issue in those.
Trademark registration for “Yeti Shop” is another uphill climb and the mark is presently suspended. The examiner found the word “Yeti” used by Trident Security Concepts, LLC in Class 9 (here). Y Yeti and Yeti are used in a bunch of classes by YETI GmbH.
Trademark registration for “Tiffi” was rejected for being too close to three previously issued trademarks (here, here and here). This is a pretty simple issue and it will probably issue at some point in the future. However, trademark registration for “Mr. Toffee” had no problems with other marks, but King didn’t pay enough fees. King paid the fees, so I imagine this trademark will issue at some point in the future.
Trademark registration for “Candy Crush Saga” was objected to by Saga Furs Oya that requested King to specifically exclude furs and animal skins from the clothing registration. King agreed, but, that changes has not yet been entered.
Sweet, Tasty, Divine, delicious, and Sugar Crush have not yet been reviewed.
Trademark Registration is a fair process that requires a skilled attorney
This shows that there is a fair process for trademark registration, in that marks are only being taken out of the public domain to sell certain goods and services that have to be enumerated. Further, those goods and services can be reduced if someone is selling something with a similar mark in your field. People are sometimes free to use these words to sell items with these words in unenumerated contexts, and of course the word can still be used in its descriptive sense. If you want to sell candy in a candy store, this registration is not going to stop you.
Trademark attorneys can really help you obtain protection in close cases. The marks asserted by King.com contain some that were not very hard to register, such as Mr. Toffee and some that were harder to register like Yeti and Candy Factory. Being able to discern how to get the broadest possible protection in a field is difficult. Here, these trademarks were prosecuted by Andrew Ehard of Merchant and Gould. He did an excellent job registering these marks broadly and handing difficult oppositions. Likewise, a skilled trademark attorney can be you with trademark registration as well.
The Law Office of Michael O’Brien is excited to help you with trademark registration. Please feel free to email me at mobrien@lawyer.com and we can talk through your individual situation.