When it comes down to it, it is a matter of whether or not the consumer is likely to be confused by the usage. King's statement seems to say that it is the combination of the usage of the 'Saga' suffix and a similar game mechanic that would give rise to confusion.

The question therefore arises as to what should be done with the 'Banner Saga' application. If King let it go, then this could serve as evidence that they are not concerned about the 'Saga' suffix. If they oppose, then they are seen to be attempting to take control of the 'Saga' suffix regardless of the game mechanic it is applied to.

The main problem is that the trade mark application would be unlikely to specifically identify the specific game mechanic that will be used. It is more likely to include reference to 'computer games' for example.

If King therefore let the application through, 'Banner Saga' could potentially be used with any game mechanic (and therefore serve as evidence that any game could use the 'Saga' suffix). King could have taken this approach and restricted Banner Saga's use via a coexistence agreement (mentioned below)(or by amending the classification), but negative PR aside, there is not much incentive for them to do this.

Further, although they could rely on the above strategy of showing confusion via a similar game mechanic AND the usage of 'Saga', this would be more difficult to prove if they permitted the registration. King are in a stronger position if they are able to say they are actively opposing applications, even if in certain cases this will result in negative PR.

On your last point, companies often enter into coexistence agreements, acknowledging that both parties can use an identical or similar marks (registered or unregistered) but under limited circumstances. This could be the case with Banner Saga for all I know...

Good point: If they show strong opposition and then the courts allow an exception then it is grounds in a future case that they do not simply take all .* Saga games as non-competing. They must actively attack opposing trademarks or have their claims invalidated. That's how the laws work. They can easily make a no-fee agreement with Stoic, but the law will still see that this was a c2c compromise and not a legal release of the Saga trademark.

I think they'd have to show that saga is something their titles can't live without.

Candy Crush, Pet Rescue, Bubble Witch, etc. all stand on their own. Saga doesn't add anything that makes any of them more specific.

It makes them all sound like they're part of the same series, which makes them sound more generic, if anything.

"What's not clear to me is whether there is anything King could do to protect their IP without harming Banner Saga."

I believe the term you're looking for is trademark licensing.

So the trademark licensing contract would read something like:

1) Pay us $1

2) Plus legalese for "only valid as long as you don't disparage us in public" and "you are not to even joke about impersonating us" and "include a phrase similar to trademark used under license by King, somewhere in the ads/docs deep in the fine print."

3) Equals you get to use our "* saga" trademark, perhaps just this one game or just for a decade or whatever wiggly

(Note: The disney company has not sued every tee-shirt company they've ever hired to make a mouse tee shirt... this about the same kind of transaction, more or less)

Well said. Depending on their intention their lawyers will either make a very favorable licensing deal, or will ruthlessly attack Stoic. The point is there MUST be a strong opposition from King in order to protect the trademark in the future.

That's my understanding as well. For trademark law to be enforceable you have to have shown that you've acted defensively in the past.