Does use of the name “Blingville” by a small game developer from Harpers Ferry, West Virginia, infringe the trademark rights of Zynga, creator of FarmVille? Does Zynga have a monopoly on Facebook applications ending in “ville”? Blingville has filed a declaratory judgment action in the Northern District of West Virginia to find out.
Zynga’s games have been extremely popular – and profitable – on Facebook in the last two years. The company says it has more than 295 million monthly active users on site for its six games — CityVille, FarmVille, FishVille, FrontierVille, PetVille, and YoVille. Blingville is just getting started with commercializing its game. It says another company, Overtime Apps, registered the Blingville.com domain name in October 2004 and that in November 2010, it filed a trademark registration application for the use of the name. Then, according to Blingville, Overtime Apps assigned its rights in the trademark to Blingville.
When Zynga got wind of what Blingville was doing, it sent several cease-and-desist letters to Blingville, claiming trademark infringement and threatening to sue for alleged violations of the Lanham Act. “Use of the name,” Zynga’s deputy general counsel told an online magazine, “is an obvious attempt to capitalize on the fame and goodwill associated with Zynga’s family of ‘ville’ games which includes FarmVille and CityVille. We are prepared to take all necessary steps to protect our intellectual property rights.”
Not wanting to get sued in California, where Zynga is headquartered, Blingville took matters into its own hands and filed for declaratory relief in West Virginia, seeking a judicial declaration of non-infringement.
Assuming that the court first finds that the 2004 registration of the domain name didn’t give Blingville full trademark rights to the use of the name for its social media game, the court will then need to look at the standards for trademark infringement under the Lanham Act. Zynga doesn’t own the name “Blingville,” but that doesn’t end the inquiry. Under the Lanham Act, the central test for trademark infringement is whether there is a likelihood of confusion as to the source of the parties’ respective products. Trademark infringement doesn’t require actual confusion, though actual confusion is a relevant consideration.
Supporting Zynga’s case are the arguments that Blingville is being prepared for distribution in the same Facebook channel as FarmVille and that the names of the games sound similar in that they are both two-syllable words ending in “ville.” Favoring Blingville’s position are the contentions that “bling” is in no way reminiscent of “farm,” “city,” “fish,” or Zynga’s other terms, and that the word “ville” should be seen as a generic term for a city or location, common to many languages, that cannot be trademarked.
Unless the case is settled, these matters will be left for a judge to sort out.