Keep it Legal Blog

Candy Crush Trademark Saga

There has been a lot of chatter in my little corner of the Internet lately regarding a United States Patent & Trademark Office (USPTO) application for the mark CANDY in relation to the popular Candy Crush Saga series of mobile games. Some articles, like this one, have taken a, let’s say, over-the-top tone with respect to this issue. Let’s try to figure out what’s really going on.

King.com Limited, the Malta-based developer of the games in question, filed the USPTO application on February 6, 2013 (see it here). The application included the following extremely long list of good and services:

• Class 009: Apparatus for recording, transmission or reproduction of sound or images; Blank magnetic data carriers and recording discs; Blank magnetic disks, pre-recorded magnetic disks featuring computer games; Compact discs, DVDs and video recordings featuring computer games; Calculating machines, Data processing equipment, namely, couplers, Computers; Computer game software for video and computer games; Video disks and video tapes with recorded animated cartoons; Audiovisual teaching apparatus, namely, slide or photograph projection apparatus; Camcorders; Cameras; Cassette players; Compact disc players; Compact discs featuring video and computer games; Computer game programs; Computer keyboards; Computer memory hardware; Computer operating programs, recorded; Computer peripheral devices; Computer programmes, recorded for video games; Computer programs for video games; Computer software, recorded for video games; Downloadable image files containing photographic images and artwork, text, and games; Downloadable music files; Downloadable ring tones for mobile phones; DVD players; Downloadable electronic publications in the nature of e-books, online magazines, online newspapers, electronic journals, blogs, podcasts and mobile game applications in the field of computer and video games; Exposed photographic film; Headphones; Juke boxes, musical; Laptop computers; Microphones; Baby monitors; Battery performance monitors; Computer monitors; Mouse pads; Notebook computers; Blank optical discs; Optical discs featuring computer and video games; Personal stereos; Portable media players; Portable telephones; Record players; Sound recording apparatus; Sound reproduction apparatus; Sound transmitting apparatus; Spectacle cases; Spectacle frames; Sunglasses; Tape-recorders; Teaching apparatus, namely, electronic teaching equipment in the nature of computers, multimedia projectors, computer whiteboards; Telephone apparatus; Television apparatus for projection purposes; Blank USB flash drives; Blank video cassettes; Prerecorded video cassettes featuring computer games; Video game cartridges; Video recorders; Cases for mobile phones, tablets and other electronic mobile devices, excluding video game devices; Computer games software; Computer game entertainment software; Downloadable electronic game software for use on mobile phones, tablets and other electronic mobile devices; Video game software; Interactive multimedia computer game programs; Games software for use on mobile phones, tablets and other electronic mobile devices; Downloadable computer software for mobile phones, tablets and other electronic mobile devices in the field of social media; Downloadable software in the nature of a mobile application for use in the field of social media; Apps featuring computer games, namely, computer game software
• Class 025: Clothing, namely, aprons, bandanas, bath robes, bathing caps, bathing suits, bathing trunks, beachwear, beach shoes, belts, bibs not of paper, boots, caps, headwear, coats, dresses, dressing gowns, ear muffs, football boots, gloves, hats, headbands, jackets, jumpers, pullovers, masquerade costumes, money belts, neckties, overalls, overcoats, pajamas, pants, paper hats for use as clothing, sandals, sarongs, shirts, shoes, short-sleeve shirts, shower caps, ski boots, ski gloves, skirts, sleep masks, slippers, slips, socks, soles for footwear, stockings, suits, sun visors, sweaters, sweatshirts, swimsuits, tee-shirts, tights, trousers, under garments, underpants, underwear, uniforms, vests, waistcoats, wristbands; Footwear
• Class 041: Educational services, namely, conducting classes, seminars, workshops in the field of computers, computer games; Training in the field of computers, computer games; Entertainment, namely, providing on-line computer games; Entertainment in the nature of computer games, namely, providing temporary use of non-downloadable computer games; Entertainment, namely, providing non-downloadable computer games online; Entertainment services, namely, providing temporary use of non-downloadable interactive games; Entertainment services, namely, providing temporary use of non-downloadable electronic games; Entertainment services, namely, providing a website featuring games and puzzles; Entertainment services, namely, providing online video games; Sporting and cultural activities, namely, in the field of computer games; Amusement parks; Arranging and conducting of workshops for educational purposes in fields of computers, graphic arts and video games; Providing casino and gambling facilities; Providing information relating to educational services; Educational examination; Electronic desktop publishing; Entertainment services, namely, live, televised and movie appearances by a professional entertainer; Film production, other than advertising films; Gambling services; Providing on-line computer games via a computer network; Games equipment rental; Operating lotteries; Organization of sport and electronic games competitions; Party planning; Production of music; Entertainment, namely, production of television shows; Providing amusement arcade services; Hosting social entertainment events, namely, karaoke parties for others; Non-downloadable electronic publications in the nature of websites, e-books, online magazines, online newspapers, electronic journals, blogs, podcasts and mobile applications in the field of computer and video games; Publication of books; Publication of electronic books and journals on-line; Providing recreation facilities; Scriptwriting services; Writing of texts; Electronic games services provided by means of a global computer network; Entertainment services, namely, providing online electronic games for use on mobile phones, tablets and other electronic mobile devices; providing enhancements within online computer and electronic games; Entertainment services, namely, providing temporary use of non-downloadable single and multi-player electronic interactive games via the internet, electronic communication networks or via a global computer network; Multimedia publishing of software, specifically of computer game software, electronic games and video game software

C0ntrary to the various alarmist headlines, it’s premature to state that King.com has “trademarked” the word CANDY. The application has not yet registered. It was approved for publication on January 16, 2014. The mark will now be published in the USPTO’s Official Gazette, and there will be a 30-day period during which third parties can file oppositions to the mark’s registration. We will see if anyone does so, and, if so, what their grounds are. If there is no opposition, the application will almost certainly move to registration in a few months.

“But wait,” you ask. “I don’t see any specimens in their USPTO application. Don’t they have to show they are using the mark CANDY in Interstate commerce in connection with all of those goods and services before the USPTO will issue the registration?” Good question, dear reader. As it happens, the basis of King.com’s application was their registration of the same mark for the same goods and services as a Community Trade Mark (CTM) in the European Union. Due to international treaty, it is possible to apply to register a mark with the USPTO based on registration in a foreign country (or group of countries in this case.) Apparently, this mark made it through the CTM registration process without anyone in the EU opposing the application.

That said, prior use in the US will still rule the day. Given the publicity this application has received, I expect third parties who can show prior use of the mark CANDY in connection with some of the above-listed goods and services to file Notices of Opposition, at which point King.com may elect to omit those goods and services for which its claim in the US may not be valid. If those prior users include video game companies – the core of King.com’s business – this might turn into quite a battle.