Confusion and Conflict Over "Candy Crush" Trademark Status

Over the last several weeks, news reports began to circulate that King.com Limited, the software developer that designed the hugely popular "Candy Crush Saga" game, had trademarked the term "CANDY" in the United States, and had begun to send cease and desist demands to developers who were using the term "candy" in connection with other, unauthorized applications.

The developer is also the creator of PetRescue Saga and the FarmHeroes Saga.

Yesterday, the Los Angeles Times reported on the more accurate status of the matter.

Namely, the game maker had applied for a federally registered trademark for the word "CANDY" nearly a year ago, and on January 15, 2014, the application was "approved for publication" in the Official Gazette.

This status means that the public has thirty (30) days within which to file any formal oppositions to the pending trademark application.

If, after that period, no one objects (or any formally litigated opposition is unsuccessful), the application will proceed to receive a federal registration.

To protest King's trademark application, several game developers have reportedly created a "Candy Jam" protest website that encourages others to create unauthorized games themed around "candy."  Extra credit may be offered to those who also use the words "scroll", "memory", "saga", "apple", or "edge".

One of the creators of the protest website reportedly told the Los Angeles Times: "Reaching a point where a company is allowed to trademark a common word is complete nonsense.  You don't need to have a great understanding of the laws to understand that this is ridiculous and totally unethical."

But these protesters are legally incorrect.  During the prosecution of the application, the U.S. Trademark Examiner conducted an exhaustive search and found that the word "CANDY" is not commonly nor descriptively used in connection with any other mobile digital applications.

The Examiner did find an existing trademark for "KANDY" in one of the classes of services at issue, but that conflict seems to have been resolved.

Partially Functional Product Designs Can Become a Trademark

Do you recognize this shape?

According to a recent decision issued by the U.S. Trademark Trial and Appeal Board (the "TTAB"), this rectangular shape is a valid trademark belonging to Hershey's for its iconic chocolate bars.

By Evan-Amos (Own work) [Public domain], via Wikimedia Commons

One key issue in such product configuration trademark cases is whether the design features sought to be protected as a trademark are primarily “functional."  If the overall design is functional, trademark protection is barred.  Primarily functional products can be protected by patents, but trademark law ends where functionality begins.

The TTAB held that while the individual rectangular shapes scored within the chocolate bar are functional (because they make it more convenient to easily divide the bar into equal pieces), the candy bar's overall design, when considered in its entirety, was not primarily functional.

Instead, the TTAB determined, based on the evidence presented that reflected a wide variety of shapes and designs used for chocolate bars, that the combination of rectangles with a raised border in Hershey's design is not primarily functional and, therefore, may be protected as a trademark.

The second issue that the TTAB considered was whether Hershey's product design had “acquired distinctiveness” in the marketplace for candy.

Product designs and configurations are not considered “inherently distinctive” as are many other types of trademarks. Therefore, in order to be protected as a trademark and registered on the Principal Register, Hershey's must demonstrate that relevant consumers considered the product design to be a source identifier. 

Evidence of distinctiveness can consist of consumer surveys, evidence as to the length of time a mark has been in continuous and substantially exclusive use, revenue of products bearing the trademark, advertising expenditures to promote goods bearing the mark, unsolicited media coverage, and evidence that the product configuration has been promoted in advertisements as a source indicator. 

Hershey's submitted all of these types of evidence to exceed its burden of proof. In addition, Hershey's also provided evidence that Williams-Sonoma attempted to copy the design of the candy bar to use as the shape of a brownie baking pan:

The TTAB ultimately found that the evidence demonstrated that the candy bar design had acquired distinctiveness and could be registered on the Principal Register as a trademark.

Do you recognize these other trademarked product designs?