King Games and the Trademark Controversy

Cody Driskill4/12/2014Research Paper

King Games and the Trademark Controversy

Trademarks can be very nebulous and confusing things. As defined by the United States Patent and Trademark Office, “A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.”[1] That surely clears everything up and there can’t be any more questions now, right? Well maybe it isn’t quite that easy. In a world where Syracuse University is trying to trademark the word “orange”, Boise State succeeded in trademarking the fact that their football field was blue, and a world where Harley Davidson tried to trademark the sound of a revving engine, maybe it’s not just us that get confused.

The event recently that brought all of the confusion back to the forefront was King Games Inc. and their trademark application for the word “candy” was approved by the USPTO. When this came to light, many third parties came out against it. The International Game Developers Association (IGDA) had this to say, “King’s overreaching filing in its application for the Trademark for its game Candy Crush Saga, and its predatory efforts to apply that mark to each separate word contained in that name, are in opposition to the values of openness and cooperation we support industry wide”[2]. This sentiment was echoed by many other game developers or individuals that had something at stake here. A spokesperson from King responded in a statement to Polygon, “Like in any prudent company, we need to take all appropriate steps to protect our IP, both now and in the future.”[3]A lot of the outrage came from confusion on what this trademark approval meant, and perhaps a bit of mishandling on Kings part as well.

So what did the trademark approval mean? For that we have to go back to the beginning. The initial application that King Games submitted for the trademark of “candy” was on February 6th, 2013. Now, since the gears of the government grind so very quickly, this application was finally processed and approved on January 15th, 2014. The way the process works with the USPTO is unsurprisingly convoluted. According to copyright lawyer Xavier Morales, the first 4-6 months after a trademark has been filed is generally used to review the application. What this means is that an employee at the USPTO looks over the application form submission mistakes and to check if it conflicts with any other trademark. If this is passed then the application moves on to the publication process. This is when the USPTO, in their newsletter the Official Gazette, publishes the application and opens the floor to public dispute over the trademark within 30 days. This is then further reviews and takes about 3 months, and then finally, if you don’t have any disputes to your claim then a few months later your registration certificate is issued.[4]

King had just hit the publication process when all the outrage began to occur. What many failed to register was that the trademark wasn’t officially issued yet. While it is true that as soon you file the trademark you become protected due to the retroactive nature of the process, nothing was in stone yet. During this time much opposition came forth, such as Cut the Rope developer ZeptoLab. In that game there is a piece of candy that is attached to a rope that the player has to cut and get to fall into the mouth of a little reptile, that apparently likes candy. Their argument was that in the European Union the trademark for “candy” had already been accepted, and there it covered merchandising as well, therefore ZeptoLab had to defend its game before the same happened in the United States. Since cut the ropes core premise is based around candy, the very livelihood of the game stood in the balance.

On top of the opposition however, King may have not gone about it the greatest way either. King CEO Riccardo Zacconi went to the public saying that King Game’s trademark policy was simply “to protect our IP and to also respect the IP of others.” Unfortunately trademark law is working against them here, in that you must actively protect your IP in fear of losing your own trademark. The reality of the laws is that once you file you have to aggressively go out and make sure people know it’s yours. In a lot of ways this part of American law is remarkably similar to how a dog has to mark their territory. A traditional tactic is that, wherever the trademarked object appears in a very prominent place, is to place the registered trademark symbol by it as a way to say “Hey! This is ours and the government agrees! You can’t use it!”

At the same time, you can’t let the word become a household word either, because if it is accepted into public vernacular then the trademark gets dissolved and your word or phrase simply becomes a descriptor for that type of product. What do you call stairs that you can stand on and the automatically raise and lower you? An elevator (previously trademarked to Otis Elevator Company). What do you call the metallic thing on the front of your jacket used to secure the two sides together? A zipper (previously trademarked to B. F. Goodrich). These aren’t even the most outrageous examples both as you read deeper into trademarks and find out even the word “heroin” was previously owned by Bayer AG. I’m sure plenty of people would love getting that trademarked these days! Kleenex and Xerox are both struggling with it today and both fear losing their trademarks. In this way it can become easy to see where King is coming from protecting their trademark. It can so easily slip away.

The next way a trademark should be protected is where King Games made the most enemies. There has to be nearly a police level of monitoring your trademark. As King Games was keeping an eye out for games involving “candy” or “saga” they obviously came up with quite a few. For example, they ran into a game developed by Stoic Games named The Banner Saga. This is a game involving a band of Vikings as they go on an adventure. Where they messed up though was having “saga” in the name. King Games sent Stoic a “Notice of Opposition” as it’s called which is simply an official term for a piece of paper that, less than politely, informs you to stop using the name. King then compounded their publicity problem by releasing a statement to IGN saying, “King has not and is not trying to stop Banner Saga from using its name. We do not have any concerns that Banner Saga is trying to build on our brand or our content.”[5] They then go on to further clarify what was stated in the last paragraph, “preserving our ability to enforce our rights in cases where other developers may try to use the Saga mark in a way which infringed our IP rights and causes player confusion. If we had not opposed Banner Saga’s trade mark application, it would be much easier for real copy cats to argue that their use of ‘Saga’ was legitimate.” King Games effectively admits it was just a scare tactic to help protect their trademark, which we have seen can be hard to do. Maybe things aren’t as cut and dry.

Things got much murkier later however, when Albert Ransom the owner of a game called CandySwipe went after King Games himself. He claimed to already have a trademark on the art used in Candy Crush Saga stating that the two games were very similar. He then challenged under the “likelihood of confusion” clause. This states that if the offending product looks similar, or plays similarly to the defender, then this could cause the public to mistake one for another and for the offender to steal sales from the defender. I know what you are saying, “More tricky and muddled trademark rules? This can’t be!” Well sure enough here we are. Much to King Games chagrin, Albert had a point and they had to find a way out of it. This is where a very innovative lawyer came in. King Games went and purchased the IP and trademark rights to a game that came out before CandySwipe named Candy Crusher, which sure enough, looked similar to CandySwipe. In this way King Games declared that CandySwipe was in fact violating King Game’s trademarks! Very tricky indeed.

This isn’t to say that everything or anything they have done was particularly malicious though. For every Banner Saga that gets attacked there are a dozen more copycats. An Example of this also happened recently when a game entitled “Candy Casino Slots – Jewel Craze Connect: Big Blast Mania Land” came out and to be sure it does not take a trademark lawyer to determine what this game was trying to do. By placing key words in the name that were also involved with larger and more successful games, then this game would come up whenever someone searched for the others.[6] So when you see companies like King Games attack legitimate businesses or games, it’s always best to remember how many Candy Casino Slots they have also had to deal with.

All of the above serves to convince some that trademark law needs to be changed. L. Rhodes over at The Daily Dot[7] thinks that the most frustrating part of the King Games controversy is that King even admits that they have no concern over games like the Banner Saga infringing on them, but our trademark law forces them to do it anyway. This also opens the door to a variety of unscrupulous behavior such as trademark trolling. This is a term used for when an individual or company registers a large number of trademarks with no desire to actually use them. In this way, if you own enough words, eventually someone will come along and attempt to use one of them and then you can burn them.

Another major issue that is pointed out is the unavailability or even the impossibility of a global trademark protection. As displayed above, King Games has the certification to “candy” and “saga” in the European Union but they haven’t achieved it in the United States yet. This is creating a divide of games and products that can exist in one place but become illegal in another. Obviously this opens the entire world to a load of confusion and becomes nigh impossible for the layman to sort out who owns what and where. If you were to create an IP today, the only way to tell what words and names you can and cannot use is to search on the USPTO or the relevant government body you are aiming towards, and then check each word individually and then the same words in a string and etc. until you are sure you are safe. This menial task is time consuming work at the very least, impossible at the worst.

The largest issue that faces trademark law is the ever expanding concept of IP. More and more people are getting into 3D printing and trademark law certainly doesn’t have a section dedicated to that. As of now this constitutes a weird cross section between trademarks, copyrights, and patents together. If you as a user want to print out a full size replica of Darth Vader’s armor for example, you are infringing on Star Wars as a trademark, the Darth Vader character as copyright, and the design of the armor as a patent. Do you want to look over your shoulder for George Lucas or Disney every time you want to print something? Then maybe we should take a look a trademark law. Similarly, as the Internet becomes an increasingly integral part of business and every walk of life, we have to figure out what to do with domain name trademarks. Back when trademark laws were first written, like with 3D models above, the lawmakers were not concerned at all about Internet domains and URLs. This leaves us in a very sticky spot, for example when you type in you expectedly get Barack Obamas web page containing a myriad of government program information. When you type in … well maybe you shouldn’t type that in. Earlier this year the Internet Corporation for Assigned Names and Numbers (ICANN) announced that hundreds of domains were going to go live and become available for people to purchase, including .guru, .lighting, or .bike.[8] What happens when we have to worry about pops up? Who knows, but this definitely adds a new wrinkle for any start up or individual who wishes to protect their brand when it comes to webpages. You don’t want someone searching for you to find any products or services you wouldn’t want associated with your business and ideas.

As can be seen, a lot of trademark law is heavily entrenched in the past. One of the largest cases that is still looked at today as a guide is the “In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973)” case. During this court case in 1973, a set of points came out that is in shorthand called the DuPont Factors. These factors are used in every trademark dispute to this day and they include, according directly from the USPTO[9], the following:

1. The similarity or dissimilarity of the marks.
2. The relatedness of the goods and services.
3. The similarity of dissimilarity of established trade channels.
4. The conditions under which and buyers to whom sales are made.
5. The number and nature of similar marks in use on similar goods.
6. The existence of a valid consent agreement between the applicant and the owner of the mark.

When viewing these six points, many are left wondering how the issues previously mentioned fit in.For example, factor three effectively says that if both trademarks are operating in the same area then they could clash, but what constitutes the same area when the Internet is involved? Sure a website can use a .uk or a .jp domain to very directly state what country they are from and whom their customer base is, but this does not stop people from other countries of origin to log in and do business with them. In fact, is of course intended for a Japanese audience, but it will still accept an American credit card and ship to the United States anyway! This can certainly be a dangerous road to go down in our modern times.

The rise of the Internet also increased demand for trademarks as well, as shown by the following statistic. In 1960, the USPTO received around 18,000 applications and then when the 1980’s rolled around that number increased decisively to 42,000. This all culminates when the age of the Internet comes along. In 2000, very nearly 300,000 trademark applications were sent in to the USPTO! The way that number has been steadily increasing suggests that as the youth of today become the adults of tomorrow, that number will most certainly continue increasing in that exponential fashion.

Now that you have seen an example of trademark law disputes with King Games and you have seen some of the ins and outs of trademark law, it’s fair to ask what it means to you. Well first, it is important that you know when you need to trademark your work and of course the distinction from copyrights and patents. Some people who are less aware of these IP protecting terms use trademark, copyright, and patent interchangeably, but that could not be farther off base. When you are first conceptualizing an idea, before you tell anyone about it, you should make them sign a non-disclosure agreement (NDA) so that you have written evidence of their agreement to not use your idea. This is a reliable way to cover your product before a trademark can be registered. While this agreement can’t force them to not talk about it, there will be some legal recourse in case they do try and take advantage of it. Many companies today make use of these NDAs to protect their work and trademarks. Large gaming companies force users to sign NDAs before they receive copies of an alpha or beta version of a game for testing. In fact, if you take a tour of any major company, odds are you get to sign another NDA!

The simplest and most likely most confused step is the differences between trademark, copyright, and patents. When you finally have your program up and running, you have to know what to do with each individual part. The most important part is the code of course, and this would fall under copyrights. However, the copyright only covers the code in its very specific current condition and any future changes to the code run the risk of straying too far from the original and voiding that copyright. To further cover the underlying idea of your code, you need a patent. These typically cover inventions with a more engineering and hardware background but have recently ventured into the software game as well.

After all of that business is taken care of and the product is ready to ship, this is when the trademark comes into play. The single most important thing to making money and maintaining your software is protecting your brand! The trademark is used in situation where you need to protect titles of a product, slogans, logos, or any other brand recognition mark.This is shown time and again in the marketplace such as when famed ice cream makers Ben and Jerry, while trying to protect their family friendly image, sued and adult entertainment company who parodied their work with such titles as “Chocolate Fudge Babes” and “Peanut Butter D-Cups”[10]. You can see why they needed trademarks on their names. Another favorite of mine is when the Hershey company had to, and this is not a joke, sue a drug dealer after he was caught lacing their Hershey Kisses product with marijuana and other hard drugs[11]. The real world is a crazy place and sometimes the situations you will find yourself involved in is impossible to make up.