By Sam Castree, III, Chicago-Kent College of Law, J.D. Class of 2013*
On December 27, 2013, King.com (the makers of Candy Crush Saga and other video games) filed a Notice of Opposition with the U.S. Patent & Trademark Office against the trademark registration of “The Banner Saga” by video game developer Stoic, LLC. King has caused a bit of an uproar on the Internet recently, not only for this opposition, but also for its attempts to individually register the word “Candy” and the word “Saga.”
Inadvertently, this ordeal has shown how woefully ignorant the general populace is about intellectual property law. Comments like “I have decided to copyright the word King. Anyone found calling their game or company King will either change their name or pay me royalties. :)” and “So Microsoft can sue the guys who put the Windows in my House?” are nonsensical, legally speaking. Still, there is a semi-legitimate thread running through the rage: “How can King trademark a simple word like ‘candy’?” The off-the-cuff response is, “The same way that Apple Computers has trademarked “Apple.” All trademarks take the form Mark [X] for Brand [Y], where X≠Y. Apple has Apple™ for computers, but not for airliners, lingerie, or fruit. King wants to register “Saga” for “Provision of computer games on line or by means of a global computer network” and similar services. That falls within International Classification (IC) 41, per the Trademark Office.
Honestly, my initial response to King opposing The Banner Saga was, “That’s ridiculous, there’s no way that’s going to work.” Then I read up a little, saw what was claimed in the opposition paper, and I thought, “Okay, I see where they’re coming from, but that’s still ridiculous and not going to work.”
King already has several registered trademarks. It has registered the video game titles Bubble Saga, Bubble Witch Saga, Hoop De Loop Saga, Mahjong Saga, Puzzle Saga, Pyramid Saga and Pyramid Solitaire Saga. King has several other titles that are still working their way through the Trademark Office and are not yet registered (including, oddly enough, “Candy Crush Saga”).
In its notice of opposition, King alleges that it has a “family” of trademarks. Trademark families are a group of commonly-owned marks that share some common feature, such as the same prefix, suffix, or word. For example, McDonald’s has a “Mc” family: McChicken, McMuffin, McNugget, McCafé, etc. The Golden Arches once successfully defended this trademark family against a pair of dentists from doing business under the name “McDental.” (McDonald’s Corp. v. Druck & Gerner, DDS., P.C., 814 F.Supp. 1127 (N.D.N.Y. 1993).)
Similarly, King calls everything a “Saga,” and they are hoping that the court will acknowledge that they have a Saga family. King claims that when The Banner Saga uses “Saga” in its title, people will mistakenly believe that The Banner Saga is a King game, and that King will therefore be harmed financially. King must defend its trademark rights or risk losing them. Therefore, it filed this opposition. Legally, this all makes sense.
Unfortunately for King, it is unlikely to succeed. First, there are too many other games out there that already have “Saga” in the title. The Banner Saga is being registered in IC 09, specifically for “Computer game software.” (Nota bene: IC 09 includes video games as a tangible product, while IC 41 includes video games provided as a service.) On a lark, I searched the USPTO trademark database for everything containing the word “Saga.” Here’s a sample of the list that I compiled of video game titles that are registered with the Trademark Office, IC 09 and/or 41: Digital Devil Saga (registered by Atlas U.S.A. on 11/21/2006); Fifth Phantom Saga (registered by Sega on 10/23/2007); MS Saga: A New Dawn (registered by Namco Bandai Games, America on 8/7/2007); Sigma Star Saga (also Namco Bandai, on 5/6/2006); Romancing SaGa (registered by Square Enix on 8/7/2007) SaGa Frontier (also Square, on 4/13/1999); Unlimited Saga (Square again, on 6/4/2006); and Vampire Saga (registered by Alaware Entertainment on 4/6/2010). Several other companies have applied for (but not yet received) trademarks for “Saga” games, such as Crystal Saga and Viking Saga. Other games exist whose companies haven’t even applied for trademark registration yet, like Guardian Saga, and Undersky: The Eternal Saga.
It’s also worth pointing out that King can’t trademark “Saga” in IC 09 because Saga Games, LLC beat them to it by a few years (registered on 4/8/2008).
Moreover, “Saga” is a descriptive term for video games. A saga is “a long detailed account” or a “narrative or legend of heroic exploits.” (That’s at least the goal that many game developers are aiming for.) Descriptive terms receive no trademark protection unless and until the company can show “secondary meaning”; i.e. that when the consuming public hears the word “Saga,” they don’t think “tale of heroic exploits,” but instead think “King.com.” Even King’s already-registered trademarks have priority filing dates only back to November of 2011. That is scarcely enough time to make the required “Saga = King.com” link in the mind of the public.
But, let’s pretend that King can show secondary meaning. Will they be able to prevent registration of The Banner Saga and similar game titles? No, they won’t. In Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983), Zatarain’s sued to defend its registered mark “Fish-Fri” against several other food companies who were selling “fish fry.” The court upheld, inter alia, the following determinations by the lower court: (1) “Fish-Fri” is a descriptive mark. (2) Zatarain’s had shown the requisite secondary meaning and so had legitimate ownership of “Fish-Fri.” (3) Nevertheless, Zatarain’s lost its suit for trademark infringement because the defendants were “free to use the words ‘fish fry’ in their ordinary, descriptive sense, so long as such use will not tend to confuse customers as to the source of the goods.” The court noted the “ample evidence” that the defendants’ use “was fair and in good faith.”
Back in Video Land, Stoic describes The Banner Saga as “an epic role-playing game inspired by Viking legend.” This is as “ordinary, descriptive sense” as it gets. And I mean that quite literally. Merriam-Webster’s first entry for the word “saga” is: “a prose narrative recorded in Iceland in the 12th and 13th centuries of historic or legendary figures and events of the heroic age of Norway and Iceland.” As for likelihood of confusion, video game blogs and news sites are replete with comments about the impossibility of mistaking a grizzled tale of Viking warriors struggling for survival for the cartoony, overly-derivative shovelware that King produces. Of course, the Zatarain’s case was trademark infringement litigation, rather than opposition to registration; however, the similarities are at least enough to bolster Stoic’s position in registering their game name.
I have plenty of sympathy for trademark owners who are trying to protect their rights, and I can even show some understanding toward King and what it is trying to do. However, this still falls on the wrong side of ridiculous, and I anticipate King losing its opposition. I just hope that a small company like Stoic can afford the legal fees to see this thing through to a happy ending.
* © 2014 Sam Castree, III. Castree is a regular contributor to the legal information blog GameDevLaw.org.