Sep 23 2013
In February 2013, game developer Zynga Inc. filed a lawsuit for trademark infringement against Imagenesis Corp. in Maryland federal court, alleging that Imagenesis’s then-impending release of the game “MafiaVille” infringed and diluted Zynga’s registered “Ville” trademarks. Zynga specifically alleged that it holds the trademark rights in and to a “family” of ‘Ville games (Farmville, Cityville, Petville, etc.) as well as the naked suffix “’Ville,” and that “MafiaVille” was likely to cause source confusion as well as allow Imagenesis to unfairly capitalize upon Zynga’s name and goodwill.
The lawsuit was resolved two months later by a Final Judgment Upon Consent. Imagenesis therein expressly recognized Zynga’s exclusive ownership of the trademark rights in and to its ‘Ville family of games as well as the naked mark “’Ville,” and submitted to an injunction precluding it (Imagenesis) from using any variation of ‘Ville in its game releases.
Courts weighing the question of trademark infringement look principally to the similarity of the marks, similarity of the goods and/or services to which they relate, and the marketing channels through which the designated products are offered. Moreover, the USPTO generally refuses to register new trademarks which incorporate the whole of a previously-registered mark—even if the applicant expressly disclaims any rights to the registered mark. The effect of the “MafiaVille” lawsuit and its resolution therefore serves to further strengthen Zynga’s exclusive dominion over the word suffix “’Ville” in connection with video game products, and potentially in connection with other entertainment products.