On February 6, 2013, King.com Limited (“King”), the social game publisher of the popular Candy Crush Saga, filed a trademark application for the mark CANDY in international classes 9, 25, & 41. Among other goods and services, King was looking to protect the term CANDY for computer games, downloadable software, clothing, and a variety of services in the entertainment and sports arena. The filing of the trademark application brought controversy to the gaming world once the media reported on it. Many gaming software developers thought this was an effort to gain control over a common word and exclude other smaller competitors from use it in broad categories of goods and services. King spoke out on its motives for filing a trademark application for CANDY.
I can understand the point of view from King’s competitors. I also think King has a valid concern in protecting its intellectual property and in preventing consumer confusion in the marketplace. Those who understand trademark law would point out that a common word, can most certainly function as a trademark, as long as it is not used to describe a function, characteristic, quality, feature, purpose, use or ingredient of the goods or services. See TMEP §1209.01(b).
If a mark is merely descriptive of the goods and services, it will be be refused on the Principal Register, but may be able to register on the Supplemental Register. In other words, if the mark is not inherently distinctive, it may register on the Principal Register, only upon a showing of acquired distinctiveness. See our blog post entitled Can A Flavor Or A Scent Receive Federal Trademark Protection? for a detailed discussion of acquired distinctiveness. Whether a mark is merely descriptive must be made after considering the goods and services in relationship to the proposed mark. Also, if only part of a multiword trademark is descriptive, then it may be appropriate to disclaim any exclusive right in the descriptive portion of the mark. However, the mark should be allowed to proceed to registration with the disclaimer.
The interesting aspect regarding this matter is that I would argue that “Candy” is descriptive of some of the goods included in the King application. Did the USPTO move too quickly in this matter, leaving the application open to attack on the grounds of descriptiveness? Was this perhaps one of the reasons why King abandoned the trademark application? A spokesperson for King stated that “King has withdrawn its trademark application for Candy in the U.S., which we applied for in February 2013 before we acquired the early rights to Candy Crusher.” The spokesperson continued stating that although they own the trademark CANDY in the European Union, King thought it was best to own the trademark CANDY CRUSHER and not CANDY in the U.S. I am sure that many will speculate as to whether there were more pressing reasons as to why King withdrew the trademark application. As mentioned in this blog post, the legal team may have realized that they could potentially be challenged for merely descriptiveness, or that the negative press was not worth maintaining the mark in the U.S.
It appears that King did not want to risk a potential public relations backlash. Even more importantly, King did not want to risk a potential Notice of Opposition being filed with the Trademark Trial and Appeal Board. On February 5, 2014, King was notified that their trademark application for CANDY would be published in the Official Gazette on February 25, 2014. The purpose of a publication of an application in trademark law is to notify third parties that the trademark application was reviewed by the USPTO and appears to be entitled to registration.
Once the application is published, third parties are given a thirty day period to file an objection with the Trademark Trial and Appeal Board. This objection is known as a Notice of Opposition. It should be filed if one believes that he or she will be damaged by the registration of the proposed trademark. King, mindful that the publication period would commence on the 25th of February, filed a Request for Express Abandonment on February 24, 2014. This filing of abandonment prevented the trademark application from proceeding to publication. It also eliminated the opportunity that a third-party could challenge the CANDY trademark and thus, reduced the likelihood of more negative media coverage. Apparently, King made a strategic decision with the aid of counsel. It is important to consult with trademark counsel when building your trademark portfolio. It is even more critical to seek professional trademark advice when the impact of social media may negatively effect your brand. Please feel free to call one of our NY trademark lawyers if you find yourself with questions regarding either your trademark or how social media may effect your brand.