This episode is about an interesting trademark case Candy Crush, a patent litigation case Marvell, new treatment of black & white trademarks in Europe as well as a useful tool to do a free similarity search on trademarks.

ROLF: Welcome to the very first episode of IP Fridays, the new podcast on intellectual property matters such as trademarks, patents, designs, copyright and any other issues in that field.  Your hosts are Ken Suzan, Hi Ken.  You are on the phone with me?

KEN:   Yes, hello Rolf.

ROLF: Very nice to have you as a co-host. I am Rolf Claessen from Cologne, Germany.  I am partner with patent attorneys Freischem.  We are a medium-sized IP firm mostly handling domestic clients in the field of patent and trademarks. How about you, Ken?

KEN:   I am of counsel here at Barnes & Thornburg in the Minneapolis office.  I practice primarily trademark, copyright and Internet law.  I have been practicing since 1997; first in New York, then Buffalo, and then I joined Barnes & Thornburg in 2012.

ROLF: So what do you think is our goal with this podcast?  What do you want to accomplish with it?

KEN:   I think it is important to help our listeners stay on top of the late-breaking news and information and learn about tools on how they can increase the productivity of their practice, ways to get information on the Internet.  There are so many sources these days for getting information and staying on top of things.  Hopefully, we will be able to guide our listeners in finding the best tools to make sense of all this material, text and information that you can find primarily on the Internet.

ROLF: Right and maybe we can even have some extra tips that our listeners didn’t know about before.  We absolutely hope so.

KEN:   Oh sure, definitely.

ROLF: So why don’t we just jump in and start with some current issues.  I heard about the Candy Crush Saga case.  Did you hear about this?  This was a trademark case in the U.S.  Maybe you are the guy to talk about that?

KEN:   Yes, well that is definitely something that has been hitting the news lately.  We all know about Candy Crush.  That was an interesting case in the sense that the people who were trying to trademark the word “Candy†— they ran into the people who had owned a trademark for a “Candy Swiper†and they ended up abandoning their application for “Candy†and now they obtained rights to a trademark called “Candy Crusher†adding the letters “er†after crush.  So that is one case in which that particular trademark owner King.com is dealing with one entity.

Then they also have at the same time the issue of the word “Sagaâ€.  They were involved with a dispute with The Banner Saga.  There is a company called Stoic and they were able to resolve that matter as well.  So, in essence, you’ve got these situations where games and apps all are out there competing for a limited number of words and names and this is an important case at least to look at and see how these things are being resolved.

ROLF: Right, and my understanding is that Stoic had the earlier trademark and then Candy Crush tried to trademark their name “Candy Crush†and then “Candy Crusherâ€.  That is correct?

KEN:   Well, in this case there are two different companies.

ROLF: Oh, right.

KEN:   You’ve got the company that owned “Candy Swiperâ€.  They went out and opposed when the “Candy Crush†people tried to get the word “Candy†and then that ended up with them abandoning their trademark for “Candy†and then moving forward after they acquired rights to “Candy Crusher†which goes back to 2004 according to a use date listed in their trademark application filed in February.  So, they worked out an agreement with the people who had used the mark “Candy Crusher†and now that is the subject of their trademark application in the U.S.

Then you’ve got, at the same time, they are dealing with the word “Sagaâ€.  There is a company called Stoic that applied for a trademark called “The Banner Saga†and then King who is the owner of this “Candy Crusher†trademark went out and objected to “The Banner Saga†arguing that the word “Saga†would be confusing to consumers and make them think that “The Banner Saga†is associated with King.  I know that King had went out and tried to register the mark “Saga†in 2011.  That application was suspended in the U.S. because King had to file a copy of their foreign registration.  So, you have two separate things going on.  King.com, a corporation of Malta, is definitely taking the lead here in looking at their IP and in going after and defending their IP.

ROLF: Right.  Okay, I understand now.  Just for our listeners, if you want to find the original news item that gives you the most information about this, just go to ipfridays.com/candycrush then you can find out more about this topic.  So why don’t we move to the next news item.

The next news item I selected was the lawsuit against Marvell by Carnegie Mellon.  Most of the talk nowadays is about Samsung and Apple, but there are other really big cases going on right now.  One of the cases is Carnegie Mellon against Marvell.  Carnegie Mellon has a couple of hard disk patents and they are enforcing them against various manufacturers and one of them is Marvell and Marvell was just ordered to pay $1.5 billion U.S. dollars fines and that seems to be pretty high in view of the whole market cap of Marvell at about 8.2 billion U.S. dollars so the size of the penalty is quite meaningful for Marvell and the only thing Marvell can do now is to go into the appeal which it is doing now and Carnegie Mellon has an endowment of about 1.4 billion U.S. dollars and this comes really welcome as it more than doubles the endowment of Carnegie Mellon so that they have lots of money for their R&D and for their students so Carnegie Mellon may not need to charge tuition anymore they can just maybe select students based on their skills.  What do you think?

KEN:   Well, I mean I think that universities will always have to charge for tuition.  It is part and parcel of going to school.  You know there are so many expenses these days for operating universities so I don’t think tuition bills are ever going away.

ROLF: Okay, just wondering because I also studied in the U.S. a couple of years ago and tuition is always a big thing.  And some of the larger universities and more famous ones like Stanford and Harvard they have so much endowment that they don’t really have to charge anything but they just do for maybe selection purposes, right?

KEN:   Well, I mean, there are so many factors that go into what schools charge students to attend their university but I do think that it helps when universities do have endowments and they have multiple sources to draw upon to operate their universities.

ROLF: Right.  So that is just welcome money for Carnegie Mellon to be able to select more students based on their skills and maybe accept less students based on their money, right. 

Find out more about this case at  ipfridays.com/marvell.

The next thing I wanted to talk about is black and white trademarks in Europe.  What I mean by that is trademarks like figurative trademarks filed in black and white instead of color and that used to be very common among applicants, even if they use their trademark in red or in blue to file a trademark actually in black and white just to have more coverage, more scope because legislation, at least in Germany so far, was that if you have a black and white trademark it would also cover any color basically, red and blue and green and yellow and whatever and even the reverse contrast.  There was a case, Malteserkreutz.  They had a cross, black against a white backdrop, and a light backdrop against a dark backdrop was infringing so it was an interesting case.  But now this legislation is reversed and the European Trademark Offices found a harmonized way to treat these kinds of applications in the future so if you are applying for a trademark in black and white, a figurative trademark, then other signs will only make identical use of these trademarks if they are also in black and white.  If someone uses a trademark in a certain color, let’s say blue, this is not considered an identical use anymore in the future.  Even more important is that in European trademarks can be cancelled if you are not using the trademarks as registered and the new regime or after the harmonization of the legislation in this case in black and white filed figurative trademarks it will be the case that if you are using your trademark in a certain color, but it was actually filed in black and white, the figurative trademark, it might not be considered used to show your proof of use later on in infringement cases or in cancellation cases against your trademark.  So your trademark might be prone to cancellation if you are using it in color and it was filed in black and white.  So my recommendation would be, for a really important trademark and you have filed it in black and white, as a figurative trademark, you might want to consider filing it now in the color that you are actually using it.

KEN:   That sounds like a way for them to make additional fees.  Wouldn’t you agree?

ROLF: Exactly.  Yes, exactly and the scope will be much narrower now.  If you have your trademark filed in red and someone is using it in yellow it is not identical use anymore so not an identical infringement anymore.  That’s really bad for the applicants I think.  What do you think?

KEN:   Well, my view is that it just seems to be a way to make for extra fees and that type of thing.  I was thinking, in the U.S., if you file for a logo in black and white, that’s going to cover all variations and different colors.  In fact, I often file for logos in black and white knowing that you do get that larger protection.  You don’t have to file a separate mark for that mark in color.  You will get all the variations.  So, I am interested in learning more about this regulation in Europe.

ROLF: Sure.  I will let the readers and you know, you can see the original notice at 

ipfridays.com/blackandwhite 

and it will direct you to the original communication of the European Trademark Office and you can see what they say about this.  So the interesting thing is that it will also not be considered a priority application if you have a black and white figurative trademark and you are filing the trademark in blue and white let’s say in Europe.  It will not be considered an effective priority date.  So, in the future if you want enforceable protection in Europe, and you want to show use in the future for your trademarks, you might want to consider also additionally maybe filing colored trademarks for your figurative trademarks.

KEN:   Well I think it is something I will want to read and look at and curious how this might affect practice here in the U.S. and whether or not any of the lawmakers here take note of it.

ROLF: Right.  We will see how this develops.  Alright, so let’s go to the next section of the personal pluck of the day.  I want to show you some similarity search freely available from OHIM.  You can find this at ipfridays.com/similaritysearch.  If you enter this area you will be taken to the TM view search engine of OHIM, the advance search page.  You can enter the advance search on the right and once you are in the advance search fields you can enter your trademark name and then click on fuzzy search. You can obviously find some similar trademarks and you can select the trademark offices. Among the trademark offices are all EU members but also the U.S. and also for example Turkey, and also Mexico and some other countries and then you can also enter classes and codes and applicant names and then hit search and then you will find similar trademarks in these countries.  So that’s a free tool and you can use and of course it will not replace any paid for search by more reliable search engines where you can actually find the documentation for the search, and in this case we don’t even know how they produce their search results but it will be a good first shot and it is free.

KEN:   And that is always welcome when there is a free resource that you can use.  I often try to find those types of things on the Internet to the extent that that information is available for all to use.

ROLF: Right so head over to ipfridays.com/similaritysearch.  If you want to meet us at the upcoming INTA meeting in Hong Kong, enter www.ipfridays.com/inta2014 into your browser and you will be taken to where you can send me an email to where you can send me an email where you can set up a meeting with us and we will be present in the form of myself.

KEN:   Yes, I won’t be there this year but many of my colleagues will be attending.

ROLF: Sure so if you want to meet the law firm of Ken, you are free to use this email and it will be directed to both of us and we can set up meetings with either Ken’s firm or myself and if you have any other questions about the blog, please leave us your feedback ipfridays.com/feedback and if you want to show us your love you can go to www.ipfridays.com/love and you can send us all your love you can and make sure that this podcast will be distributed to all your Twitter followers.  So Ken, you want to say any goodbye words?

KEN:   Well I think this is a great start to the IP Fridays podcast.  I am looking forward to working with you Rolf and in looking at issues all across the globe in connect with trademarks and other IP issues.  This is certainly a great time to be practicing IP law.  Lots of changes on the horizon.  I know myself I am following a lot of changes in technology, particularly the wearable technology field.  There are a lot of IP issues coming out of that as well as in the app space.  Something I will certainly be talking about in the months to come.

ROLF: Right.  So, thank you for being co-host with me on the first episode of IP Fridays and we are looking forward to you dear listener of IP Fridays to tune in in two weeks.  This will be a bi-weekly podcast. We will at least try to be there every second week for you.  And we say goodbye until next time.  Bye-bye.

KEN:   Goodbye.

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