As virtual marketplaces continue to eclipse their physical counterparts, trademark rights management has become a key weapon in many content creators’ arsenal against commercial infringement. However, with great power comes great responsibility, and some games studios have wielded it less justly than others. In particular, casual game developer King.com, despite an acknowledged history of public outcry against their robust roster of over broad trademarks, has maintained a predatory pattern of gobbling up as many descriptive terms as possible including the term SUPER.
Trademarks signify the source of a product or service to consumers, and help purchasers to distinguish the products of one manufacturer from those of another in the marketplace. This ensures that if you purchase Call of Duty: Murder Forever, it will be made by Activision, not your uncle Steve. While these rights benefit companies, often amounting to the business’s most valuable asset, their purpose is primarily to protect the public, not the organization.
Under the Lanham Act, in order to be eligible for registration in the United States a trademark must have a distinctive character, meaning the term isn’t generically synonymous with the product it is marketed in connection with, nor does it merely describe the product. The more a mark informs a consumer about characteristics of the relevant product, the less distinctive it will be. Thus, in the games industry you could not successfully register the phrases VIDEO GAME or ROLE PLAYING by themselves without acting to further distinguish them.
Both generic and descriptive marks can become more eligible for registration with the addition of more distinctive terms, for example STREET SOLDIER THE VIDEO GAME or VALOR INFINITY THE ROLE-PLAYING GAME. Alternatively, descriptive terms can, without further modification, acquire the distinctiveness necessary to obtain federal registration by acquiring such pervasive recognition among consumers that the descriptive function of the term is obscured by understanding of the mark as a source indicator. In other words, when you see EPIC GAMES emblazoned across the Paragon website, you know the sign indicates a game development studio, not a representation about the “epicness” of the game product.
However, even where a mark is distinctive enough obtain registration at the Trademark Office, if consumers ever begin to largely interpret the mark as a generic name for the product itself, rather than as a signal of source, that mark can lose its protected status in a process called genericide. Videotape, for example, was once a trademark of the Ampex Corporation. This safeguard exists to limit the degree to which any private entity can monopolize the natural use of language in society.
In this way, the viability of every trademark continuously hinges directly upon the community’s perception of it. While many game studios are able to successfully navigate these waters, maintaining balance between consumers, competitors, and the public, others are not.
In particular, King is most well-known for becoming involved in a two-front battle to establish complete ownership of the CANDY CRUSH SAGA brand: First, King drew the ire of the Internet community when it applied to trademark the descriptive term CANDY as a means of legally undermining an older competitor, CandySwipe developer Runsome Apps; and second, King lost further favor in the eyes of consumers when it applied to trademark the descriptive term SAGA, using that claim as a means of opposing the trademark registration of a dissimilar game’s title, Stoic’s The Banner Saga.
King is one of the most successful video game developers in the world, and is best known for creating the hit game franchise, Candy Crush Saga, commonly referred to as just “Candy Crush.” Originally founded in Sweden just over a decade ago, King has grown tremendously during its short lifespan: Having barely escaped bankruptcy during its first few years or existence, King has matured into a company generating an excess of a billion dollars in annual revenue. King has become so profitable, in fact, that just this past year the company was acquired by an even larger studio, industry titan Activision Blizzard, for 5.9 billion dollars. As a result of that merger, the brand is projected to continue increasing in value.
King claims that it first released Candy Crush Saga to its website in March of 2011, and then ported it to social and mobile platforms the next year. Candy Crush Saga is what they call a “match three” game, meaning you pair three of the same kind together to win, like a slot machine. In Candy Crush Saga you use your thumbs to slide small, shiny candies horizontally and vertically across the board, rearranging them until they align into rows of at least three. In no time at all, this adorable successor to Bejeweled became the darling of the Starbucks coffee line. King filed an application to trademark CANDY CRUSH SAGA in March of 2012.
In January of 2013 Candy Crush Saga became the most downloaded game on Facebook, accumulating 150 million monthly users by January of 2014. In June of 2014, the CANDY CRUSH SAGA mark was registered at the Trademark Office.
Things were good in the Kingdom of Candy Crush Saga, but much less so for those living in the land of CandySwipe, a strikingly similar game. CandySwipe was created by Albert Ransom of Runsome Apps, and had launched in the Android store back in November of 2010. CandySwipe, released at least four months prior to Candy Crush Saga, is also a candy themed match-three casual video game. In time with the CandySwipe November launch, Ransom had also diligently applied to trademark his game’s name. The CANDYSWIPE mark for use with games was then published for opposition in April of 2011, just one month after King’s Candy Crush Saga was released to its website. Finally, the CANDYSWIPE mark was officially registered at the U.S. Trademark Office in July of that same year. Thus, in addition to the title CandySwipe being released for public consumption four months before the earliest possible release of Candy Crush Saga, the CANDYSWIPE mark was registered three years before the CANDY CRUSH SAGA mark. Despite CandySwipe having been released before Candy Crush Saga, Runsome Apps began receiving complaints from many users, accusing CandySwipe of being a cheap imitation of Candy Crush Saga, a rare example of reverse trademark tarnishment.
Later, in a public statement addressing the multiple and ongoing King trademark controversies, company owner Riccardo Zacconi noted, “King does not clone games, and we do not want anyone cloning our games. . . Before we launch any game, we do a thorough search of other games in the marketplace and review relevant trademark filings to ensure that we are not infringing anyone else’s IP.”
Indeed, King has been very proactive in its exploration of trademark right boundaries, applying for a number of individually descriptive terms, such as KING, CANDY, and SAGA, each a separate component of its overall mark, KING’S CANDY CRUSH SAGA. These words all carry commonly known and widely used meanings in English: A “king” is a kind of ancient ruler; “candy” is a sweet treat eaten almost everywhere in the world; and a “saga” is an old kind of story. Because of these common uses, it caused a great deal of controversy when King applied to trademark SAGA in November of 2011, and applied to trademark CANDY in February of 2013. When discussing its attempt to trademark the term CANDY, Zacconi defended his company’s behavior, remarking that “some developers have seen an opportunity to take advantage of the game’s popularity, and have published games with similar sounding titles and similar looking graphics. We believe it is right and reasonable to defend ourselves from such copycats. “
When King’s comments were applied to its relationship with Runsome Apps, however, the irony became palpable.
Then, amidst a great deal of community backlash, in February of 2014 King rescinded their application for CANDY. At the time, it seemed like King had bowed to public pressure, yielding to the noble purpose of the greater good after being persuaded by sound arguments. The truth, however, was that King had acquired the rights to another U.S. trademark, CANDY CRUSHER, which had a claim of use dating back as far as 2004, far earlier than even the first whispers of CandySwipe. Thus, armed with this license to a prior date of use, King utterly crushed its competitor, forcing Runsome Apps to relinquish any claim to the brand that it had built, and creating a basis in trademark law (if not in reality) for user claims of Runsome Apps’ copy-catting.
And Runsome Apps is not alone in this experience: The tiny three-person development studio Stoic found out just how seriously King takes their branding when it released The Banner Saga. Launched in January of 2014, The Banner Saga is a viking role-playing game where your strategic choices directly affect the outcome of the story, and is a far cry from the bright, casual, mobile game that King sells, both in terms appearance and gameplay.
Nevertheless, when Stoic applied to trademark its game title, THE BANNER SAGA, King opposed the application. Specifically, King took issue with Stoic’s use of the term SAGA, fearing it would dilute its CANDY CRUSH SAGA mark, and other similar King franchises. Despite King’s concerns, Stoic’s use of the term appeared to be descriptive. A “saga” is a Norse epic or very long story, and the term has been commonly used throughout much of human history. Here, King was using the term to describe a real and prominent aspect of its game. Ultimately, King and Stoic agreed to a settlement, the terms of which are confidential of course. Let us not forget, though, that this settlement was based upon one party preventing the other from freely using a word in its descriptive sense, and not as a brand signifier. King even admitted that there was no likelihood of confusion between the two games in this case. As Video Game Attorney Ryan Morrison noted, “Basically, King is allowing The Banner Saga to exist (with that title), but really, King shouldn’t have had any say in the matter. “
In the end, Stoic was able to register THE BANNER SAGA mark, and the CANDYSWIPE registration still stands today. Further, KING voluntarily withdrew its application to trademark CANDY in the U.S.. However, both the SAGA and KING marks still remain registered to King at the Trademark Office today.
Even more concerning, in December of 2016 King successfully registered a trademark for the term JELLY for use with video games, and in February of this year successfully registered SUPER in the same class of goods, continuing its pattern of expansion into individual, descriptive terms. In effect, this is an endorsement from the Trademark Office of the assertion that when video game players see the terms JELLY and SUPER they think of products originating from King.com. SUPER in particular raises large red flags, as that term has enjoyed longstanding and pervasive use throughout the games industry, a la Super Mario Bros. and Super Meat Boy. Because King maintains a consistent trend of aggressive trademark acquisition and enforcement, unless they are deterred in some way we will likely see disputes in the near future regarding use of the term SUPER in connection with video games.
To date, King has applied for 174 trademarks in the United States.
Author, Ma’idah Lashani, is an Associate at Morrison / Lee. Ma’idah focuses her legal practice in the areas of game dev and intellectual property.