Video game developer King made headlines and the IPilogue last month when they applied for a trade-mark for the word CANDY in the United States. The move generated extensive commentary and negative backlash from game developers and the gaming community at large. While it is unclear if causing a news buzz was the impetus behind the application, King has now voluntarily abandoned its claim to the trade-mark.
So far the only reported enforcement by King of CANDY had been against Benny Hsu, who made the game “All Candy Casino Slots – Jewel Craze Connect: Big Blast Mania Land” [now titled “All Sugar Casino Slots – Jewels Craze Connect: Big Blast Mania Land”]. However, the news of King looking to trade-mark CANDY drew attention to past instances of King attempting to enforce their intellectual property rights. This included King’s move against Albert Ransom, the maker of the game “CandySwipe” based on King’s acquisition of the CANDY CRUSHER trade-mark. [Ransom’s open letter on the CandySwipe website detailing King’s moves against him has since been taken down.] There has also been growing concern for King’s attempts to oppose the registration of trade-marks incorporating SAGA, as potentially confusing with King’s SAGA trade-mark.
Whether these separate actions by King to enforce their intellectual property rights were conflated with their application for CANDY, or just polarized the public against King, there has been a massive public backlash against King. Numerous message boards and comment sections were flooded with statements decrying King’s actions, and a Change.org petition to stop/revoke King’s registrations of CANDY and SAGA gained almost ten thousand supporters. Despite an open letter by King attempting to defend their actions, the public reaction seemed clearly against King.
What Did King Give Up?
King’s application to the USPTO to register the CANDY trade-mark initiated a 30-day period where any interested parties can file an opposition to their registration on various grounds. It was during this period that King voluntarily abandoned its registration of the trade-mark, meaning the USPTO will no longer consider granting them the mark. As a result, King will not obtain a registration for the word CANDY and any future actions they intend to bring against others with regards to trade-mark infringement/damaging of goodwill would have to be brought under the common law tort of passing off.
Why Did King Drop the Mark?
From a financial perspective, there are few reasons for a successful developer such as King to stop pursuing registration of a mark or allow for its obtained registrations to be taken off of the register. The only costs of which are the application and maintenance fees, both of which are less than a few hundred dollars. On the other hand, actively defending a trade-mark requires monitoring the industry for unauthorized use, and using various enforcement measures to avoid dilution. While this can be a large financial burden, the result of failing to “police” owned registrations allows for the loss of distinctiveness in the trade-mark. This opens up the possibility for others to challenge a registration and potentially strike it from the Registrar.
In a statement to gaming website Kotaku, King stated that the reason for abandoning the CANDY mark was because it was no longer needed in light of acquiring another mark, CANDY CRUSHER, which they believe is effective in defending their intellectual property rights. While this may be true, it is not hard to imagine that public pressure resulting from their initial application could have played a part in making this decision for the burgeoning game developer.
Not All About the Law
This move by King shows how intellectual property rights-holders often need to consider many factors in creating and adjusting IP and business strategies. While owning a trade-mark for CANDY would significantly strengthen King’s position from a legal perspective, there were likely other considerations King weighed against that benefit leading them to decide that owning the trade-mark was not in their best interest. The tale of King and their CANDY trade-mark is a good cautionary tale for other rights-holders, in particular regarding the public relations implications that may come from an aggressive intellectual property strategy.
Alex Buonassisi is an IPilogue Editor and a JD Candidate at the University of British Columbia.