By this point, nearly everyone has an opinion on whether or not King should be able to register a trademark for dictionary terms like “candy” and “saga.” This is, in part, because both words have long histories in the video game industry and are generally perceived as common words. “Saga” means “a long and complicated series of events” – a description aptly applied to any number of video games. But, Zynga has successfully registered “Ville,” which means “a place, category, or quality of a specified nature.” Any number of games live up to that description as well. Zynga also successfully used an unregistered trademark to force a settlement over Bang with Friends.
Protecting your intellectual property is important for success in any industry, including the game industry. Through registration and enforcement, IP owners can increase product recognition, discourage clones, and create a franchise. Many developers, however, are concerned that when a well-known, well-established developer primarily uses a trademark to discourage creativity and competition in the marketplace. This is the image that jumps to mind when considering King’s recent actions in response to Stoic’s attempt to trademark the title of their upcoming game The Banner Saga.
In talking about the ongoing candy saga, I’ve encountered a lot of confusion about what a trademark is and what makes it eligible for protection. Before delving into the validity of King’s marks, there are a few things to note about trademarks. A trademark is a source identifier used in commerce. Put more simply, a trademark helps the consumer know from where a good or service came. Everyone has a pretty good idea of what a Halo game is and how it differs from a Call of Duty game, and that’s why the respective developers have an interest in protecting the names of their games. In the mind of players, “-ville” games are produced by Zynga.
Trademark rights are acquired through use, or, less often, through registration based on the intent to use. When considering the validity of a trademark, the court will consider the extent of the use, the recognizability of the mark, and the association between the mark and a particular product within the public mind. Zynga’s repeated, national, well known use of “with friends” in the titles of their games reinforced their interest in that mark. Once a trademark is established, it can be lost through “abandonment” by failure to use the mark in commerce.
Additional trademark rights are accessed through registration, either as “in use” or as “intent to use,” as mentioned before. “Intent to use” is for marks not yet in use, and can be extended for about 3 years before the USPTO pulls the plug. “In use” means the mark is current in use in commerce for the goods described by the class number. There are 45 classes, and you can only register for classes in which you use the mark, for example networked software and video games are two separate classes. To ensure a mark won’t be misused in other categories, many companies, such as Coca Cola and Apple, have company stores that sell goods from many (or every) class so they can maintain registration across multiple classes. In addition to these stores, some marks are so well known, for example, “Disney,” that anything using “Disney” would be assumed to be associated with the Walt Disney Company.
Not every mark is eligible for registration. The strongest trademarks are fanciful, made up words, like “Google” and “Kodak.” Likewise, arbitrary words are strong marks; these are unrelated to the product or service, such as “Amazon” or “Apple.” Suggestive terms are less strong as trademarks; these terms are evocative of a quality of the product without describing the product itself, for example “Q-Tips” or “Habitat.” Less strong, and often ineligible for registration, are descriptive marks, which describe the goods or services, for example “Timely Watch Repair.” Descriptive marks can only be registered if the owner can prove that the mark is associated with a particular product in the mind of the consumer, this is known as acquired distinction. Acquired distinction is most often shown through consumer surveys, evidence of use, or a long and thorough history of advertising and media coverage. Generic marks, marks that describe a class of product, for example “Shoes”, are almost never eligible for registration.
While it may initially seem that “candy” is descriptive and “saga” is generic, that isn’t necessarily true. Much like “Amazon” and “Apple,” “candy” has no inherent connection to video games. King created that connection through their use of candy in a well-known and widely played game. Similarly, “Saga” is mostly suggestive; describing a style of game, rather than describing gaming generally.
Where King will encounter resistance is that both these terms have been used by a myriad of games prior to King’s initial formation. Trademark law recognizes rights in the first to use a particular term or mark in commerce and it seems obvious that King is not the first. But as mentioned before trademarks are use it or lose it. King’s marks can be challenged by any game released before “Candy Crush Saga” with a title that includes “candy.” The similar proliferation of games with “saga” in their titles will create an uphill battle for any continued attempt by King for registration.
While King may have a difficult time registering the trademark “candy,” it is by no means an open and shut case. Even without registration, King is entitled to certain rights under “Candy” ™ and “Saga” ™. Unregistered marks are protectable within their area of influence. King’s game is nationally known; so, its marks achieve the same scope as federally registered marks. Any similar marks could be challenged as causing consumer confusion or misrepresenting the source or origin of goods, resulting in approximately the same result as a similar litigation with a registered mark. With a vested interest in the social gaming space, King will no doubt do everything within their power to protect their IP.