Lexicon® Blog

Posts Tagged ‘trademark law’

Defy Description

In Brand Name Development, Brand Naming, Branding, Business, Food & Beverage, Naming, Trademark Law, Trademarks on March 10, 2014 at 3:05 am

Your brand name should be the one thing competitors can’t take away from you. That’s not the case if your name is too descriptive. The Trademark Trial and Appeal Board, the crime and punishment division of the United States Patent and Trademark Office (USPTO), doled out an important lesson last month.

Two lessons, really.

pretzel_crispsThe first was that, even though you may have a trademark for a number of years, as in the case of Pretzel Crisps, a brand of “flat pretzel cracker”, introduced in 2008 by the Snack Factory of New Jersey – you can still end up losing it, regardless of how well business is doing.

The second, and more important lesson, is that being too descriptive with your trademark can set you up for trouble…which is why Warren and Sara Wilson, the inventors of Pretzel Crisps are now likely scrambling to figure out what to do where the name of their popular snack is concerned.

The Pretzel Crisps name had already been relegated to the Secondary Register, which is a kind of trademark purgatory reserved for brand names deemed descriptive enough that only minimal protection can be offered. In this case, both the words Pretzel and Crisps are widely regarded as being generic and only the instance of the two words appearing together is considered to constitute a trademark.

But then snack food giant Frito-Lay, owned by Pepsico, decided to oppose the mark, arguing that Pretzel Crisps cannot be registered as a trademark because the phrase itself constitutes a generic term. “Like ‘milk chocolate bar’, the combination of ‘pretzel’ and ‘crisp’ gains no meaning as a phrase over and above the generic meaning of its constituent terms”, the company wrote in a motion to the USPTO back in 2010.

According to the New York Times, Princeton Vanguard, the LLC that owns Pretzel Crisp and Snack Factory, and filed for the trademark, has spent $1 million in legal fees. Not much, considering Pretzel Crisps has grown quickly, with over $100 million in sales in 2011. But it was a million bucks spent to find out that they no longer hold a trademark on their own name.

What the makers of Pretzel Crisps do next is anyone’s guess, but an expensive name change is one likely scenario. A scenario that could have been avoided by considering names that could have effectively supported the snack chips’ attributes and taste profiles, while steering clear of simply describing what they are.

— Lexicon Branding

Burning Candy

In Brand Name Development, Brand Naming, Branding, Business, High Technology, Naming, Trademark Law, Trademarks on February 20, 2014 at 3:00 am

A little over a month ago, the Skittles hit the fan when the Internet discovered that King.com Limited had trademarked the word CANDY. Reaction ranged from “all other games with candy in their titles were in trouble” to “no one on Earth could ever utter the word candy again.”

candy-crush-logoThis action was to protect the game developer’s white-hot title Candy Crush Saga, a game downloaded by more than 500 million people since its release in 2012.

One of the first to break the news was inc.com, in a short piece by Jeremy Quittner, on January 15th – the very day that King won trademark approval from the United States Patent and Trademark Office. “You already know how ridiculously litigious the entire area around intellectual property rights is right now, but this brings things to a whole new level. And small business owners should be wary, as the potential to run up against a law suit seems all-too-likely these days,” wrote Quittner.

The fuse was lit…and the news soon exploded all over Twitter, the sounding board where people often display more passion than knowledge. @feliciaday, actress and creator of the popular web series The Guild tweeted: “I’m confused, how is it legal to trademark ENGLISH WORDS and then harass small game companies about it?!” And @BasicallyIDoWrk followed with “Who is the idiot that let Candy Crush trademark the word candy?!”

To address Ms. Day’s point, most registered trademarks in the USPTO are made up of English words or are names created by putting one or more English words together to form a new word (like PowerBook or OnStar, two names developed by Lexicon and subsequently registered for trademarks by our clients). As for the second comment, the idiot in question is the aforementioned USPTO, the governmental body tasked with issuing patents and trademarks dating back to 1871.

On its surface, the registration makes all kinds of sense, particularly to protect King’s intellectual property from infringement by the legion of me-too type games that have sprung up in the wake of the success of Candy Crush, trading on either its name, its play style, or both – such as Candy Crash and Super Candy Cruncher.

Fortunately, for those who are outraged at the gumption shown by King in registering CANDY, there are checks and balances in place in an effort to keep things fair and equitable.

Upon issuance, trademarks are published for opposition in the USPTO’s Official Gazette. Anyone opposing a trademark in the belief that they may be damaged by its issuance has 30 days to either file an opposition to the mark or a request to extend the time to oppose.

And there is, potentially, a lot to oppose in the case of King’s trademark application since they’ve tried to more than cover their bases. Not only have they registered CANDY in three of the 44 international classes of trademarks, but what the name covers – the Goods and Services – within those three classes seems overly extensive. Ranging from blank usb flash drives and exposed photographic film to beach shoes and baby monitors, this is an application just begging to be opposed by those with trademarks that use the word candy and that pre-date King’s registration.

That’s not to say that opponents won’t have a pitched battle on their hands.

One recent example shows that King is playing for keeps.

CandySwipe is a game developed by Albert Ransom in 2010, two years before King’s Candy Crush hit the scene. Ransom trademarked his CandySwipe name and, when he saw elements of similarity between the two games, he opposed King’s initial trademark application of Candy Crush Saga. Ransom was trumped when King subsequently purchased a trademark for CandyCrusher that had been issued for game software and mobile apps way back in 2004 and used it, in turn, to counter-oppose the CandySwipe trademark.

Ransom just recently published an open letter online to King, sarcastically congratulating the company on successfully crushing any chance he had of making CandySwipe a success (the Internet is full of people ignorantly calling Ransom’s game a “ripoff” of Candy Crush), as well as now cease-and-desisting him from being able to use the CandySwipe name.

Protecting oneself against trademark infringement is one thing. Intellectual property is often the most valuable asset a company has in its coffers. More difficult to defend are the actions of an entity that follows the letter of the law while ignoring the spirit of the law. One could argue that King’s actions might be construed as a restraint of trade for other game developers. And who knows — what would happen if Hasbro, Inc., which took over Milton Bradley’s Candy Land trademark first issued in 1951, were to step forward and argue that King’s trademark is precluding them from issuing an electronic version of the popular board game?

The outrage against King continues, with opponents asking folks to delete the game from their devices, and tweets continuing to be posted about the trademark filing. (From @jgasteiz: “If only I had the guts to uninstall an app every time its company is evil. I’ll do it this time. Bye bye #candycrush”)

Undaunted, King continues to attempt to crush both opposition and competition. And on February 18th, they filed for an Initial Public Offering with the Securities and Exchange Commission. Reportedly, they are attempting to raise $500 million.

That’s a lot of candy.

— Lexicon Branding