InfringementVille? Who Owns “-Ville” Trademark Rights for Facebook Games?
Pigs? Cows? Bales of hay? What are those doing on Facebook? Those were my thoughts in late 2009, when notifications from a new application called “Farmville” started invading my news feed. After a few weeks of constant “Jane has earned 5 chickens!” updates, I blocked the application and promptly forgot about it. Maybe I missed out on the thrills of the virtual acquisition of livestock, though, because Farmville now has over 14 million active daily users and 56 million active monthly users. The game’s developer, Zynga Inc., followed Farmville’s viral success with a similar virtual world game called “Cityville” in December 2010. Cityville is now even more popular than its predecessor, with over 15 million active daily users and 100 million active monthly users.
With such immense user activity, the inevitable trademark infringement suits have begun. However, this first one is a preemptive lawsuit- a company named Blingville LLC asked the U.S. District Court for the Northern District of West Virginia for a declaratory judgment that its BLINGVILLE mark for a planned Facebook game does not infringe Zynga’s marks in FARMVILLE or CITYVILLE. In its motion, Blingville asserts that its predecessor company registered the domain name blingville.com in 2004 and filed an application to register BLINGVILLE as a trademark with the U.S. Patent and Trademark Office last November. Zynga became aware of Blingville’s intentions to produce a Facebook game application under the mark in November, and sent three cease-and-desist letters in an attempt to block Blingville’s use of the name. In its letters, Zynga asserted that the BLINGVILLE mark for a social networking game violates the Lanham Act, as there is a likelihood of confusion with Zynga’s similar games “containing the letter combination of ‘ville.’” In response, Blingville filed the instant action seeking the court’s judgment that BLINGVILLE does not interfere with Zynga’s trademark rights.
The question at hand is an interesting one- does the success of Zynga’s two Facebook games give rise to its exclusive rights in the “-ville” suffix for social media applications? One could argue that a combined 156 million active monthly users over less than 2 years is certainly enough for strong trademark rights in the marks, but the debate hinges on an arguably weak suffix. Zynga was likely trying to claim in its letters that its two games comprise a “family” of trademarks featuring a generic “place” word combined with the “-ville” suffix, and therefore, Facebook users would mistakenly believe that “Blingville” is a new game from the producer of “Farmville” and “Cityville.” Despite the games’ immense popularity and visibility, it seems premature to insist that two terms made of generic words are sufficient for a family of marks argument. Cases in this area make it clear that the family of marks classification is a tough one to earn – groups of trademarks more famous than FARMVILLE or CITYVILLE, such as VIRGIN for various services stemming from Virgin Enterprises, have been rejected as a family of marks by the Trademark Trial and Appeal Board and various district courts. The family of marks finding often hinges on whether the producer of the marks in an asserted family created an association between the marks in the minds of consumers. A difficult question for Zynga, therefore, would be whether it advertises its “Cityville” game as “From the makers of Farmville!” or takes similar actions to make sure Facebook users know that the two games are produced by the same company.
It remains unclear what type of game “Blingville” will be and if the nature of the application would lead consumers to believe “Blingville” is produced by the same company as “Farmville” and “Cityville.” Personally, I think Blingville was smart to request a judgment asserting its rights to use the BLINGVILLE mark, and look forward to seeing what happens next in this suit… perhaps a “Blingville has earned a declaratory judgment!” status update?