This is part II in a three-part series on trademark law and King.com, the maker of the popular Candy Crush Saga game. Part I dealt with a specific dispute between King and the maker of a competing game. Part III discusses where we go from here.
In a recent article in Forbes, Erik Kain complains about King's aggressive trademark posturing. King is seeking a trademark registration for CANDY CRUSH SAGA,* and that is the source of the dispute with the maker of Candy Swipe. Kain's complaint extends to a more controversial portfolio of marks that King is seeking to register, including individual marks for CANDY and SAGA, among others.
* - As in my previous entry, I use the convention of all-caps to denote trademarks.
Although I generally agree that what King is trying to do is, at best, a misuse of trademark law, Kain's article, and his position, suffers from a fundamental lack of understanding of what trademarks really are. Companies (and individuals!) own trademarks, but their ownership of trademarks does not take those words out of free use as part of the English language.
There are a couple of very important restrictions on the power of trademarks. First, trademarks are only protected to the extent that they serve primarily as indicators of the source of goods or services. Words that merely describe features or qualities of the goods to which they are attached aren't trademarks and remain free for use in their descriptive senses.
Second, trademarks are only protected against uses that are likely to cause confusion among the purchasing public as to the source of the goods or services, or their sponsorship or affiliation. Whether something is likely to cause confusion or not is dependent upon a 13-factor test that examines the marks, the goods and services, and many other aspects of a collision of interests, in order to determine whether a person can continue using a given mark.
(There is a special class of enhanced trademark protection, not dependent upon likelihood of confusion, for marks that can be described as "famous," but that protection is beyond the scope of what King is doing or, at this point, able to do.)
Kain's central proposition is this: "No corporation should have legal rights to any word I can use in Scrabble." That view is wrongheaded, because it would effectively restrict trademark registrations to made-up words alone. Some of the most well known, respected, and powerful marks are ordinary English words that are arbitrarily applied to goods or services. For example, the mark UNITED has been registered by United Air Lines. "United" is a perfectly ordinary word, worth 21 points in Scrabble if you make it land on a triple word score. But the fact that United Air Lines has a federal registration for UNITED does not keep anyone from using "united" as an ordinary English word. More importantly, it doesn't force United Van Lines, which provides moving services, to change its name; neither does it keep D.C. United, a major league soccer team, from selling tickets to its games.
It also doesn't keep anyone from claiming to be a citizen of the United States or taking a vacation to the United Kingdom or the United Arab Emirates.
I have two problems with CANDY, and to a lesser extent SAGA, as trademarks owned by King. First, those are not the trademarks that King uses. There is a principle in trademark law called "mutilation." Mutilation refers to the practice of seeking registration for less than the entire trademark as used. A prominent example of this is the "Dummies" series of how-to books. IDG Books, the original publisher of the "Dummies" series, originally sought registration of ____ FOR DUMMIES, as a kind of fill-in-the-blank trademark application. The USPTO initially blocked the registration, on the basis that the "blank" never appeared on any of IDG's goods. Instead, the blank was filled in. In order to obtain a registration, IDG had to remove the "blank," change its printing scheme to emphasize the "For Dummies" wording, show that consumers perceived their mark as FOR DUMMIES, and provide examples (specimens) in which they used the "For Dummies" wording without any other language. IDG eventually got its registrations, but not without the kind of compromise that emphasizes the true nature of trademarks.
King, by contrast, insofar as I am aware, never uses the word "candy" by itself in connection with its offerings. Neither does King use "candy" for more than one game. Unlike IDG, which could actually show that it used FOR DUMMIES by itself, King is seeking what amounts to a fill-in-the-blank registration that will allow it to have at least some rights over others who want to use the term "candy" as part of their trademark, without doing the hard work of showing that King is entitled to those rights.
Use is a critical piece of trademark rights. Insofar as I can tell from reading the files, King is only able to get the USPTO to consider issuing a registration for CANDY because it has already convinced the European Community Trademark Office to issue a registration for CANDY. Under the part of the Trademark Act that King is seeking a registration for CANDY, the lack of use of the mark in the United States is not a ground for refusing what is termed "extension of protection." About 10 years ago, the U.S. entered an international trademark protection agreement known as the Madrid Protocol that provides some leeway to foreign companies seeking to enter the U.S. market by giving them protections they would not otherwise be entitled to without the usual showing of actual use in commerce.
The problem with King's strategy is that even under the Madrid Protocol, the rights they obtain for a mark they have not used yet are rather hollow. In the long run, I believe their efforts to monopolize words like "candy" and "saga" will fail. If King tries to enforce its trademarks through a lawsuit without actual use of the marks, it will likely find itself out of luck.
The second problem I have with King's proposed marks is that both CANDY and SAGA are descriptive for King's own offerings. King's major product is a game that is heavily reliant on the "candy" theme that is organized in such a way that users progress through a "story." Descriptive marks cannot be registered without a showing that they have acquired "secondary meaning"--meaning that the public views those terms as indicators of the source of goods rather than descriptors of the goods to which they are attached. Secondary meaning requires a significant showing, particularly when the words are so descriptive of the goods they are attached to. Perhaps most importantly, King will have to show that its use of these terms as marks is substantially exclusive--and that it cannot show; there are dozens of other trademark uses of these terms for similar products, many of which pre-date King's offerings.
To allow King to have registrations for CANDY and SAGA would allow it to attempt to monopolize the market for games that involve candy or storytelling--something that the trademark laws were never intended to do.
I have reviewed the prosecution histories for the CANDY and SAGA applications, and it does not appear that the examining attorney--a USPTO employee charged with the first-line examination of applications--even considered the descriptiveness argument. King will not be so lucky to escape that descriptiveness argument if its registration applications are challenged, or if it seeks to enforce the marks through an infringement action. In fact, if I were representing someone locked in a dispute with King over these marks, my first argument would be the descriptiveness argument.
Of course, the major problem here isn't so much what is legal. It's that King, with the resources generated from half a billion downloads of its top game, can afford to litigate, while its targets may not be able to do so. That's a legitimate concern, because the imbalance of power tends to stifle innovation by shooing developers away from topics they know are likely to raise King's ire. But it's not a problem of the law. It's a simple fact of our legal system that is hardly peculiar to trademark law. It's expensive to litigate even if you are in the right. That's where the power of community needs to step in. Independent developers can pool resources. Expert attorneys who don't like this misuse of the trademark system can provide time and effort, either free or at reduced rates. And nonprofits like the Electronic Frontier Foundation can work to support developers who are ensnared in King's web.
In part III, hopefully tomorrow, I will talk some more about this last aspect.