Lawyer here. I once received a C&D letter for my business, vblood.com, a vampire themed energy drink from a competitor claiming they owned the TM rights to "blood" for beverages. That was a little different they filed the TM in the wrong category and I claimed defense of "descriptive use" how else would a blood themed beverage be described?
However, the Candy Crush Saga creators are even further behind the 8-ball on the TM "Candy" vis-a-vis video games. Why? Hasbro (one of the largest toy makers in the world) filed a TM for "Candy Land" - for interactive video games, in addition to many other TM categories - well before Candy Crush even existed. See: http://tess2.uspto.gov/bin/showfield?f=doc&state=4809:el5e10...
It would be very difficult to maintain their legal argument (i.e. "Candy Slots" is likely to cause confusion with their TM "Candy") and simultaneously argue that "Candy" does not create likelihood of confusion with "Candy Land".
Thank you for that — it's a shame someone belonging to the same professional group as you advised King to do something stupid and provocative. I really wish sanctions from Bar associations were stronger when it comes to empowering large clients to bully others in spite of common sense.
I don't know that I would agree that this should be an issue against those practicing law. While I think we can all agree that its unethical, it is within the law as it is now. We could go on all day blaming the lawyers, but they are not the source of the problem. Only one of many results of a system that has its flaws.
Members of bar associations are often required to follow a set of ethics.
Doing unethical (but legal) is already something that bar associations will sanction against. The only question is what each bar association consider unethical.
If we limit the analysis to video games, I would feel comfortable saying yes. (Because video games are generally not limited to a certain geographic area). As a countr example (I think it is Pizza Hut) there was a small mom and pop brick and mortar resturant in a small town that predates the multinational corporation, The mom and pop do not need to change their name but they can not expand.
*it is best not to answer legal questions generally, the answer will always be: maybe. A legal analysis must be done with specific facts
This means anyone who wants to object now has 30 days to object to the mark.
You can imagine they will, given how broadly they claim this mark (plus the examiner should have objected)
So basically, rather than complain and write articles, now is exactly the right time to file an objection to the mark.
The USPTO site makes this clear:
"Approved by the examining attorney for publication but has not yet published for opposition. Although rare, withdrawal of approval prior to publication may occur after final review. The opposition period begins on the date of publication."
Are you sure the trademark filing is based on a foreign filing and not on a foreign trademark? Meaning they got the trademark somewhere in the EU? That would make more sense.
Anyway, it is absurd, and everyone involved (applicants and those who approved it) should face defenestration.
The original basis was listed as 44(d), which would be a foreign filing.
I didn't look to see if it changed to 44(e), which would be based on a foreign registration.
Looking now, it looks like it issued in the EU, and the status changed to 44(e), so they have a valid registration in the EU for something, but OHIM is being a pain in the ass, so i can't look up all the details.
Think of Apple, for example. Nobody is going to expect the electronics giant to lay claim over the fruit, but if someone were to try to market an electronic device under that name, you’d better believe their lawyers would swoop in.
Ironically the reverse happened. Apple always had an uneasy trademark situation with Apple Corps (A holding company owned by the Beatles which owns Apple Records). Apple kept "entering the music business" and having to buy off Apple Corps to keep their mark intact.
Apple tried to prevent a supermarket chain here in Australia from using a logo which stylised their "W" as an apple, one that looked nothing like Apple's apple.
Not to be confused with Woolworth (no 's'), the old American retail store. Somewhat ironically, Woolworths was named after Woolworth, though the companies are not related:
> "The name on the draft prospectus drawn up by Cecil Scott Waine was "Wallworths Bazaar" – a play on the F.W. Woolworth name (the owner of the Woolworth's chain in the United States and United Kingdom). However, according to Ernest Robert Williams, Percy Christmas dared him to register the name Woolworths instead, which he succeeded in doing after finding out the name was available for use in New South Wales. Accordingly, Woolworths Ltd in Australia has no connection with the F.W. Woolworth Company in the United States, nor the Woolworths Group of UK."
Patents and trademarks are different things, but I think in either case the idea of "prior art" would apply. In the U.S., you're granted a trademark automatically upon use. Brian should be able to say, "I've been using this since 2009" and be afforded at least a degree of protection. Of course, it's a lot harder to defend in court without a formal trademark, so he might not choose to litigate.
Actually, for a patent (and, as someone pointed out, it's a trade mark the orignal article is about) if there is documented proof of a previous invention (I doubt that would be a problem with IT) that is the easiest was to invalidate a patent.
For trade marks, fame does matter, but then again: documented previous existence of a smaller brand would be enough to stay. Having one large corporation buy a small existing brand, and marketing it beyond its original scope could put them in trouble, though.
Trademarks apply only to a specific class of goods or services. Unless Crush has a trademark on "Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.", there can be no infringement.
I'm a little sympathetic to King here because of the degree to which other developers have ripped off Candy Crush. A couple minutes searching the app store for "candy" turned up five examples ranging from "strongly based on" to "deliberately sowing confusion." One describes itself as a "popular candy 'match 3' game," another even uses the distinctive Candy Crush UI font.
But of course they throw away any sympathy by going after totally unrelated games. Did any player actually think they had downloaded a Candy Crush slot game?
Candy Crush/Farm Heroes = Bejewelled, Papa Pear = Peggle, Bubble Witch = Puzzle Bobble to name a few. No doubt there will be loads of dupes, in the same way that people tried to emulate XXXX-Ville's success.
As people mention the way King got popular is the level of polish in their games and the use of new/innovative takes on very popular titles.
The video games industry thrives on plagiarism. Almost laughable given how much they harp on about piracy.
It's very similar, though there are some significant gameplay differences. But from a visual perspective, compare Bejeweled[0] and Candy Crush[1], then look at Action Candy Swap HD Pro[2].
That third link is incredible; they've made a cottage industry out of match-3 clones. Not only Action Candy Swap, but Action Candy Shift, Action Jewel Matching, and Amazing Fruit Shift -- all of which seem to be clones of the same game with different sprites and verbiage.
I imagine the business model is the repackage the same thing under as many search term combinations as they can think that people would try to find a game like this. In food terms, like a restaurant advertising the same thing as, "BBQ," "Smoked Meat," "Southern Grill Food," "St. Louis Pork," "Tailgate Plate," etc. It's just pushing SEO into the actual name of the game.
This is partly Apple faults. They only allow you 100 letters for keywords, they no longer index the description, and they provide no feedback on what users used to find your app. So they give you no information that you could use to limit your searches.
There are a number of workaround for this, and one is to upload the same game with slightly different title until you hit on the magic combination that gets you sales. It sucks to have worked hard on a game, and it fails because of the wrong combination of title and keywords.
Who searches for games based on the thematic metaphor? I think it's more likely that people search for Bejeweled or Candy Crush, and unscrupulous and uncreative game creators want to muddy the waters and siphon off some of that money.
Candy Crush may have different sprites from Bejeweled, but they play exactly the same. Special matches even give the exact same special powers in Candy Crush... I think they deserve the "candy swap" ripoff. They just got what they did themselves. And it's worse that they also made Papa Pear which copies Peggle (also made by PopCap, creators of Bejeweled)
After playing a number of King games recently, they are all 'reimaginings' of old classics. Candy Crush is a little more original in terms of additional difficulties, but some of them are basically lifted wholesale. The originality from King is the polish and the art, not the gameplay.
That's a weird argument. Bejeweled and Peggle (two VERY polished games, both made by PopCap games) were blatantly ripped off. (Candy Crush and Papa Pear by King are almost identical ripoffs, save for sprites).
How are the games by PopCap not polished? It irritates me even more that King copies TWO games from the same company... They truly are the new Zynga.
Bejeweled is a polished version of an earlier game. Peggle's graphics aren't exactly polished for a 2007 game. But I guess I really meant that King's strength is their polish. It's certainly not their game design originality.
Bejeweled itself wasn't very original. Game industry has a whole category for those: “Match 3”. CC and Bjw were close within that group, but not enough not to argue that the minor differences where not par for the widespread :cough: ‘hommage’ standard of the industry.
Trade mark has the benefit of addressing names, i.e. word search in the App store.
There's a general principle of prior use as an absolute defence in trademark law - though it wouldn't surprise me to much to find that USA had violated that principle.
Candy is too generic in both the software field and the game field to be a distinctive mark and so shouldn't be granted as a word mark; trademark examiner fail. I mean come on.
They're just asking for one of their lucky cease-and-desist recipients to countersue and strip them of the right to use their own trademark, forcing them to rename their game.
It's happened before. Seems like a risky and stupid decision on their part.
Title and controversy aside, can anyone read this phrase while keeping a straight face?
“Lots of devs are frustrated cause it seems so ridiculous” says Benny Hsu, the maker of All Candy Casino Slots – Jewel Craze Connect: Big Blast Mania Land.
Also worth noting: The developer cited mentions at the end of the article that he was informed at some point that he also couldn't use the word "memory." Which, obvious ridiculousness of this whole matter aside, makes me wonder if there's any concise and complete resource one can use to check for potential 'violations' while naming apps (or, really, anything else) to head this off before it becomes a problem...
I think that if we've reached a point that a developer cannot use the generic word candy in the title of their app, whether it relates to Candy Crush or not, then we already have problems. It's bad enough we have to use apps with misspelled words to avoid litigation or create new IP, but now people have to spell candy as "kandi" to avoid lawsuits? It just seems to make everyone involved appear to be completely stupid.
Seems on a weekly basis the price of entry to this industry continues to go up.
I think things like this just pan out to ludicrous.
Although, really, is it because Candy Crush seems smaller to me than Apple Computers?
Is it because it is so much harder to enter the hardware market than the app store market?
It ends up being incredibly difficult defining the line at which you stop I find when I think about it.
Anyways, I never liked the game much and haven't played it in ages so I deleted it in mock "protest".
I guess I wouldn't mind so much if they trademarked it, then went after people using things that looked like their candy, or games using the name with similar concepts. But the candy casino game?
I assume Apple doesn't keep track of every single trademarking that goes on with every app developer and King must be initiating the requests.
"Approved by the examining attorney for publication but has not yet published for opposition. Although rare, withdrawal of approval prior to publication may occur after final review. The opposition period begins on the date of publication."
A trademark is not registered until at least 30 days after it is first published for opposition. DannyBee is right on. These developers should be thanking the idiot lawyer for sending a C&D, as now they can file opposition claims with the US Trademark office and prevent it from being registered.
Funny enough, iPhone was trademarked in Brazil way back in 2000. Last year a judge basically yanked that trademark away and gave it to Apple because Apple is "world renowned" and thus deserved it more. [1]
I guess trademark ownership is rather nebulous after all.
It sort of makes sense when you consider trademark law to largely be about protecting the consumer -- to prevent intentional deceptively similar names (or logos, trade dress, etc...) from causing the consumer to buy a product thinking it is another, or from a different company than it actually is.
It also has the effect of protecting the mark owning company from another company producing poor products which then become attributed to the original company. But arguably this also protects the consumer.
Basically it boils down to consumer confusion -- since there is this gigantic company that is world renowned, it will cause confusion if in Brazil the iPhone trademark is not assigned to Apple.
Like abhorrence, I don't think this is totally ridiculous. Compare the rules for seizing a domain name from squatters. If I manage to register mcdonalds.com, currently McDonald's, the gigantic fast food company, can just take it. Is that terrible?
Now, if I've been selling a product under the name "iPhone" for 13 years and I have to change the name because someone else in another country managed to release a competing product of the same name and become more famous than me... that's pretty harsh. Off the top of my head, two obvious approaches come to mind --
1. A "use it or lose it" regime, where the Brazilian guy with the iPhone trademark keeps it as long as he's actually doing business under it (it could well be that you can't maintain a trademark without using it anyway; I don't know much about trademark law).
2. The Brazilian iPhone guy should have been absurdly over-vigilant about potentially infringing marks, just like we all complain about major companies doing. He needed to keep Apple's iPhone out of Brazil entirely (or force them to change its name in the Brazilian market).
Also, following your link, two things jump out at me:
- Though the trademark was first requested in 2000, and it says the companies have been fighting over it for 6 years, it also says the Brazilian "iphone" went on sale last year. That looks a little more like bad faith.
- It looks like the judge didn't take the trademark away -- he said they'd have to share (not great, but not as bad as suddenly losing the name of your product).
Dammit, what's a young, recently divorced fashion pre-cog to do?
One minute you're riding high on top of the world, pushing your monopoly of addictive multi player hallucinogenic Can-D on a global social network of Mars colonists, who get hooked on your freemium layouts, then blow all their money on in-app purchases of miniature virtual fashion accessories and appliances for their avatars.
Then all of a sudden, some tri-stigmatic transhumanly evolved hipster bastard comes along with the even more addictive alien hallucinogenic Chew-Z imported from the Prox system, and not only hooks all of your users and dries up your downloadable content business, but actually provides infinitely better one-on-one real time online customer service.
There are 252 apps in the Android Market with "Candy" in the name (including the Candy Crush set of games, and a few dupes like free/ad and paid).
Likely there are hundreds of comparable apps in Apple's app store but I can't quite fathom how to search from a desktop browser (???).
Sounds like they'll need to sue a lot of people to enforce that trademark. What's next--"blaster"? "nuke"? "Kill"? "Monster"? Pretty soon, if this ridiculous effort succeeds, all the common dictionary words will get locked up in trademarks, just as domain names did 10-15 years earlier.
But somehow I doubt it, and probably it will give them more bad press and headaches than it's worth. I already know that I won't be buying their apps for my family's use.
Can someone with experience in trademarks comment on whether the PTO is supposed to validate the subjective notion of whether the proposed trademark uniquely refers to that company's products, or is registration just to add it to the database so that people can do a trademark search?
The PTO is supposed to (and its employees are trained to) disallow trademark claims that do not meet the criteria for obtaining a trademark (for example, due to the term being generic, or because of descriptiveness). So a company that sells candy would not be allowed by the PTO to register a trademark for the word "candy".
Now, the situation gets a bit trickier for words and industries that don't really relate, like "candy" and video games (or, as the example in other comments, "apple" and electronics). In this case, the reality is that trademark agents will file a claim for something relatively broad, and the PTO will initially reject the claim for overbreadth (this is the default in practice), whereupon the trademark agent will narrow the claimed goods and services until the PTO accepts it.
In some cases, they do not ever accept such claims - but given enough time, one supposes that you can find a narrow enough set of goods that you can market exclusively with the word "candy".
Of course, the PTO is subject to review by courts. The problem for the PTO is that if they reject something, that decision can be appealed. Parties with deep pockets will always try to appeal if they think the mark is worth enough (see Apple). So it's a waste of the PTO's time and effort to be very aggressive in denying claims.
In effect, the process is just one of narrowing and back-and-forth negotiating, rather than a "yes"/"no" decision.
In short, the PTO gets blamed a lot for accepting shitty claims (both patents and trademarks), but they really don't have that much incentive to reject claims aggressively, because they get money from applications, and rejections are subject to review anyway.
While the trademark feels abusive, gamezebo really did not pick the best example: how can one name his game "All Candy Casino Slots – Jewel Craze Connect: Big Blast Mania Land" and then pretend he did not try to take advantage of the name of famous games?
I can understand Apple being a trademark (the one bite apple logo and the capital Apple, Inc) but come on trademark Candy for your game Candy Crush Saga?
/joking: And the article mentions CSP. Maybe we should trademark CSP so we don't get Content-Security-Policy confused with Communicating Sequential Processes (or the other way around).
Do these trademarks go international? Isn't King a UK-based company? If they filed for the trademark in the US, do they have separate filings for each country that they want to protect "candy"?
What if you are an app developer outside the jurisdiction of the trademark? Can you just ignore?
Reminds me of the old Maxis Sim* series. Could they enforce someone else releasing a game called SimSomething? Or Apple using lowercase i's as prefixes.
He forgot his template tags: Congrats to the YC! ${YEAR} alumni on {[new round of funding|buy out|accepting bitcoin]}. No one deserves this success more. Sorry your daughter died in ${death} ? "Car accident"
However, the Candy Crush Saga creators are even further behind the 8-ball on the TM "Candy" vis-a-vis video games. Why? Hasbro (one of the largest toy makers in the world) filed a TM for "Candy Land" - for interactive video games, in addition to many other TM categories - well before Candy Crush even existed. See: http://tess2.uspto.gov/bin/showfield?f=doc&state=4809:el5e10...
It would be very difficult to maintain their legal argument (i.e. "Candy Slots" is likely to cause confusion with their TM "Candy") and simultaneously argue that "Candy" does not create likelihood of confusion with "Candy Land".
Advice: See a Lawyer and protect your rights.
Edit: USPTO does not permit a direct link to TMs, and the above link probably errors. https://www.dropbox.com/s/4lzhe7ah9t8fae3/Candyland.pdf
Edit 2: The 1st Dropbox link is a link to a "cancelled" TM, this is the current "Candy Land" TM registration for video games. https://www.dropbox.com/s/ev2wpx9o6bu1grc/candy%20land.pdf