You may’ve seen articles in the last week claiming that King.com now “owns” the word “CANDY”; that’s not completely true.
Last year, King - a UK company with a sub-group in Malta - filed to register a slew of trademarks including SWEET! and yes, CANDY, in the European Community Trademark Office (aka CTM).It’s easier to get a registration in the CTM than the US, because in the US the general public is able to oppose applications - which can block them from registering - whereas in the CTM there are stiffer limiitations on who can oppose an application; regardless, nobody (it seems) filed an opposition to the app to register CANDY in connection with a slew of goods and services including video games, software and karaoke.
Because of treaties between the US and EU, King also filed an application to register CANDY (among other marks) at the US Trademark Office; the application has been passed to publication, which means that it will be published in the next few months, and at that point anyone who believes they have grounds to bar registration can file to oppose registration of the mark CANDY by King.
In other words, if there’s even one opposition filed by lawyers willing to litigate at the USPTO it can tie the mark up for years at the PTO.
However, trademark rights are accrued by use, not registration, so even absent a registration in the States, King can try to stop third parties from “infringing”, which is why anyone who gets a Cease & Desist letter from King, or a letter from the iTunes store (or any other app store) should talk with a lawyer to see whether and how best to push back against King’s claim.
What’s wrong with the articles about this?
They’re often hyperbolic. Headlines like “You can’t use the word ‘candy’ anymore” are inaccurate and do nothing but stir up panic. Of course you can still use the word “CANDY”. Of course an app developer doesn’t own it and hasn’t locked it up. But yes, if you make an app that resembles Candy Crush in look or feel and you put the word “candy” anywhere near it, King (and its estimated five billion dollar valuation) will likely come down on you and it won’t be “sweet”.
King doesn’t own the word “candy”. Nobody does, and no trademark registration will give anyone - not even King - the right to say that they can bar anyone else from using it, even on an app. We’re not trying to say that their application shouldn’t be opposed - it probably should, especially by anyone using CANDY in connection with any of the listed goods or services pre-February of 2013.
We are saying that despite what nerve-wracking headlines say, or mischaracterizations of trademark law by reporters (also see yesterday’s post) you can say the word CANDY as much as you want.
King cannot stop you; thus far, even their cease & desist letters that have been reported about far don’t over-reach too much. The one reported on at the Daily Dot says the recipient has been asked to “remove their app or prove that their game doesn’t infringe upon the trademark.” If they can prove their game doesn’t infringe on King’s CTM registration or any usage in other countries, they can keep using the term CANDY in connection with it.
So what happens next? Keep an eye on the application via the search engine at uspto.gov and when it publishes, oppose it - or at the very least file an extension of time to oppose. But be aware that they also have pending applications for King, Sweet!, Candy Coin, Tasty! and much more. They won’t own those terms in all contexts, no matter what registrations they’re granted, no matter what they claim or what reporters say.
ETA: CANDY is a weak mark; there are over 300 registrations for marks containing the term “CANDY” in the European Community, and hundreds of others (with some overlap) in the US. IGT owns a registration for CANDY BARS for gambling machines, HARD CANDY owns many registrations in cosmetics and clothing, and CANDY SPELLING (yes, Tori’s mom) has a registration for, among other things, “pre-recorded electronic and digital media”.
The quirky thing about trademark law is, unless you have coined a term or phrase (tumblr, for example, or “Quidditch”) you can’t restrict or control or stop all usages of that term - and even if you’ve coined a term everyone else can use it descriptively (ie I’m on tumblr or Harry was the Quidditch seeker).
So talk about candy all you want; talk about CANDY CRUSH in tweets and posts and snapchats of your scores. And let’s all sit back and see just what Hasbro (owner of CANDYLAND & Design since 1949) does here - or go object to it if you want to. Let us know if you do!
ETA 2: In looking over the CANDY application we think that an argument can be made that the term CANDY is descriptive of at least some of the goods and services, based on the current usage of the term within the video game. A descriptive mark is one that describes an “ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services” - so the question is, does “candy” describe a feature or characteristic of the game? And in contrast, are third parties who also use the term “candy” using it to denote or describe a feature or characteristic of their game? A descriptive mark can be protectable with a showing of secondary meaning, but in the US that usually is found to require a combination of years of use and money spent on advertising and promotion; they may have the latter but likely do not have the former.
Given that a definition of “candy” is “something that is pleasant or appealing in a light or frivolous way” - well, does that sounds like a feature of some apps and video games? In other words, if we were opposing King’s application to registrer CANDY for their list of goods and services, we’d add in a descriptiveness allegation.
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