Stephen S. Wu-- SL: Legal Writer, swu@ckwlaw.com, (650) 917-8045, 166 Main Street, Los Altos, CA 94022

Blingville FIles Preemptive Suit Against Zynga

After receiving three cease and desist letters from FarmVille maker Zynga Inc., game maker Blingville, LLC filed a preemptive suit against Zynga in federal court in West Virginia on January 14, 2011. Zynga’s letters took the position that the company had trademark rights in the suffix “ville” when used with game names. Zynga’s games include not only FarmVille, but also CityVille, FishVille, FrontierVille, PetVille, and YoVille. Blingville seeks a declaration that its BLINGVILLE mark does not constitute trademark infringement. For a copy of the complaint, click here.
Harpers Ferry, West Virginia-based Blingville has a Facebook game under development. Blingville’s complaint alleges that its predecessors filed a trademark application last November for the BLINGVILLE mark. Another predecessor registered the domain name blingville.com. The complaint also alleges that Zynga sent it three cease and desist letters in November and December 2010 and early January 2011 calling for Blingville to cease and desist using the BLINGVILLE mark. According to the complaint, Zynga claims exclusive rights to the VILLE suffix in the market of social networking games.

Blingville asserts that it did not violate Zynga’s trademark rights in the Zynga name, its trademarks, and any game names ending in “Ville.” Blingville takes the position that Zynga cannot gain exclusive rights to the use of VILLE as a suffix for a social networking game. I expect Zynga to counterclaim for trademark infringement by contending that the VILLE suffix creates a family of VILLE marks, similar to the “MC” prefix in front of the names of food products sold by McDonalds.

Zynga will have to prove that the family of marks actually exists. Naming a few products with the same prefix or suffix does not automatically create a family of marks. Nonetheless, the longer Zynga uses the VILLE marks and the more games it creates using the VILLE suffix, the better its chances.
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