Looks like the game developer Zynga who owns CityVille and FarmVille is going down the same path of Facebook which has attempted to claim that they have ownership of the word Face and/or Book.
In November of 2010, Zynga sent a cease and desist letter to the developer of the game Blingville, claiming its use of the letter combination ‘ville’ entails trademark infringement.
Last week, Blingville filed for a declaratory judgement stating that its game’s title constituted a “fair use” of the trademark.Zynga’s claim “adversely affects Blingville and will continue to do so until this Court makes a determination of Blingville’s absolute right to use the trademark name ‘Blingville’ in connection with its social networking computer game.”
The declaratory judgement request also demands that “Zynga be ordered to pay Blingville’s attorneys’ fees, costs and other expenses incurred as a result of this controversy.”
You can read the 4 page complainant filed by Blingville on TechDirt.com by clicking here
so if they prevail, and someone else has a game started before them , do they then agree to give up everything to that prior company
it seem that if you cant tramdemark a owrd, you trademark a combo of it, use it extensively, and then clain you have the suffix?
hopefully there agrressiveness will backfire and bring about a true decision, clarifying the landscape for others in the space with “ville” names.
for you trademark guys, my question is does size matter? (ok ha ha )
does a more successful company simply claim confusion when they are so successful that they feel anything will be confused with them, and isnt that part of monopoly risk? part of capitalism.
any suceesfull business model gets copied, bring down prices and promoting competition.
thanks
page
Come on big boys!!
After you have a hard day at Farmville and head for Cityville, you will probably end up at my PARTYVILLE. š
And then when the riots hit the city, they can come and join LOOTERVILLE. lol
Watch out if you own a Geo like Louisville.com.
just the nth rich company that wants to become the owner of a commonly used word š
What about Askville, the company founded in 2006 (which is prior to any of Zynga’s games) by Amazon. The site operates like a social game around the function of answering questions with users earning points.
http://en.wikipedia.org/wiki/Askville
I’ve just made a test using Instant Domain Search, but, ALL the ****ville names I try there, are already registered
I just registered GoToHellville.com in case companies like this begin to overreach which appears to be the case. Companies can do their brands grave harm by squashing folks at a whim because many can’t financially fight back or even defend themselves. Light of day is the single best defense. Things travel today very quickly with Social Media.
I blogged about this some also, at http://atlantatmlawyer.com/2011/01/can-zynga-own-ville-as-a-trademark/… I don’t think there’s much support for Zynga’s claim. I don’t know anything about the court, though.
Bret
Problem is how many smaller companies or domainers get these C & D letters and not having the funds to fight just turn domain names over to the trademark bullies?
Rick before you look this domain is take (not by me)
TRADEMARKBULLIES.COM
Barely-funded start-ups don’t stand a chance if these trademark games are allowed to be played. Crap like this does nothing but stifle innovation – the consumers lose.
– TBC
as long as people aren’t willing to stand up for themselves they will always be bullied. i don’t want to get political so i won’t even say what i want to say ’cause i know you don’t like radical ideas posted on your blog. good blog by the way. best domain blog anywhere.
I think SUPERMAN would say …
that this is very SMALLVILLE
minded of them.
Cheap hustlers in corporate suit’s will always
try and come in via the back door.
The only thing a corporate punk in a anonymous
cubicle respects is a ‘iron fist’ served without mercy.
It would make a great topic on the SocialNetworkShow.Com
The rich get richer.
Cityville and Farmville, this ville that ville , pussyVille are all BullShitVille
Thanks for bringing this to our attention.
There are a multitude of reasons why they’re going to lose this battle, e.g., (a) any TM ‘rights’ they have aren’t very mature, and would be limited to the specific games that they publish, (b) there are 375 trademarks/trademark applications in the USPTO’s database associated with the word “Ville”, and (c) “Ville” is – and has always been – a generic suffix.
On Jan. 11, 2011, I filed a trademark application for ‘HologramVille’ in Class 009 (games) to support my HologramVille.com name. And as a trademark lawyer, I can tell you that I have no concerns about a challenge to my rights to HologramVille from Zynga…or anyone else.
Gene
@Gene,
That’s good to hear.
I own RomanceVille.com which I acquired some 7 years ago with intentions of developing a romantic game, or gaming or dating, or blogging or informational or search engine etc site …. basically I thought I can do so many things with it…..my imagination is the only limit I had at the time I registered it. I can and will do whatever I like with it.
I am sure I will file a mega counter law suit if I ever get bothered by any of these corporate trademark bullies.
Just my 2 cents!
Build-a-bear applied for a trademark on Bearville.com and Bearville just over a week ago. The company has been using Buildabearville.com since at least 2007. Zynga also applied for a “withfriends” trademark since they acquired NewToy. Will be interesting to see how this all pans out.
@ Gene
Would you go as far as offering your services …
(to prove this point and set somewhat precedent
perhaps under special terms if needed)
if … THAT UDRP respondent,
has no other legal recourse?
@ Landon
Only if my own rights are challenged (sorry).
I have represented clients before WIPO in the past, but don’t do so any longer.
My guess, though, is that there will be no shortage of TM lawyers who will take on this fight (on their clients’ behalf(s)), if Zynga continues its pursuit of “Ville” users. After all (as I said), there are 375 items in the USPTO’s TM database…so there are tons of folks out there, legitimately using the “Ville” suffix in conjunction with a product or service, who won’t just roll-over if they get a C&D letter.
It’s likely, BTW, that this aggressiveness on Zynga’s part isn’t so much being driven by their management as by their VCs…who are (naturally) trying to maximize the value of the whole franchise they’ve funded. But, as another commenter mentioned, it will probably backfire on them.
Just my (non-legal-opinion) 2 cents.
Gene
@ Gene
Thank you for your clarification and subject Interest.
That question about your services was not for ME ..
but i did wish to get a overview for others of need.
I do you hope you POST your personal opinion frequently
as a qualified HONEST opinion as yours is always insightful.
@Landon White,
Why did you stop using your old name, aka, “the Big Lie Society”?
Who are you trying to fool?
@ Summer
Michael can tell you that is 100% NOT TRUE 100% …
( when he was on here so was i, unlike you! )
BUT .. let me ask you?
Why did you stop using your aka, name Winter?
LOL
Great post as always Mike. I am 99% sure Johnsonville.com has been around longer than Zynga and they have had an interactive game for a long time: http://www.grillvillepromo.com/
Is it possible Zynga got the idea from Johnsonville? Of course, both companies came after Jimmy Buffet and Margaritaville.
I have been registering ville names for many years and own more than 50 ville .coms, such as Accountingville.com, Astrologyville.com, Bagelville.com, Broadwayville.com, Cellphoneville.com, Chemistryville.com, Connectionville.com, Desertville.com, Escrowville.com, Liveville.com, Moveville.com, Opportunityville.com, Primeville.com, Saveville.com, Taxville.com, Televisionville.com, and Treeville.com; but never had interactive games in mind until all the recent blogging about it.
The suffix ville is brandable and was brandable way before Zynga was around.
Stu Maloff
Zynga better hope they don’t win or Jimmy Buffet & Co. (Margaritaville) will be getting a lot richer at their expense.
so the takeaway for me is, set aside some dough to deal with them if you run a online game with a ville name… and publicize the heck out of any letter or action if they try to extend to online communities, search engines, blog, store or forums….. all social media of one form or another……
like ricky bobby says if you aint first your last. they werent first.
page howe
3-dVille.com
Worshipville.com
Sermonville.com
Bogeyville.com
Historyville.com and on and on, so you can see im biased here
Someone’s headed for loserville…
“and publicize the heck out of any letter or action”
I’ve never understood why some people do that, or think it helps.
Maybe I should expidite deletion of Capitalville.com ….. NOT !
Lets not forget the “DeVille” family either… CoupeDeVille, CruellaDeVille, SedanDeVille
“After all (as I said), there are 375 items in the USPTOās TM databaseā¦so there are tons of folks out there, legitimately using the āVilleā suffix in conjunction with a product or service, who wonāt just roll-over if they get a C&D letter.”
There are a lot of people using the “Mc” prefix for various things too. But if you start McGene’s as a fast food franchise, then it is likely you are going to hear from a scary clown. You’ll definitely hear from the clown if, for example, you use red and yellow as your color scheme, sell a sandwich called a “Big Mick”, and so on.
The claim here is not about having a domain name with “-ville” in it. The claim is about publishing certain types of games through particular distribution channels. The basic fact issue is whether customers of Zynga games would or would not be likely to believe that the game in question here originates with Zynga.
I don’t know why these suits always get reduced on domain blogs to “OMG, it’s the end of the word! Someone filed a suit for trademark infringement on anything having ‘ville’ in it!” Because that’s not even what’s going on here.
First off, Zynga didn’t file a lawsuit. All they did was send a letter. It’s the Blingville developer who filed the suit here. Whether they can obtain personal jurisdiction or equitable jurisdiction on the basis of the letter is yet to be determined, and the most likely outcome is that there will be no outcome (as is true of most “OMG! A lawsuit!” stories).
When you start a project, the entire universe of things to name that project is open to you. So, going back to the fast food restaurant, it’s your decision whether you want to name it McGene’s, but the background question is – Why would you?
So you’ve got popular games on social networks named Farmville, CityVille, FishVille, FrontierVille, PetVille, and whatever, all published by the same company. Knowing that, and deciding on the name of a game you want to develop and sell, what do you think would motivate you to call it “DomainVille”?
Take, say, Angry Birds, another popular game app series. Do you think coming up with a game in the same market called “Angry Fish” would be a good idea? I’m not asking as a legal question, but just a common sense question.
If you did come up with “Angry Fish” as a game app, do you think someone might get the impression you were trying to ride on the coattails of “Angry Birds”? How about if the game involved launching fish at targets? The more details that match, the greater likelihood that nobody is going to buy an argument along the lines of “oh, I thought up the name on my own”. But the claim wouldn’t be based on the notion that anyone has a monopoly on the term “Angry”. The total factual context matters.
John
“First off, Zynga didnāt file a lawsuit. All they did was send a letter”
Ok so they send a letter saying stop using the name of your product or we are going to file suit for everything you got.
So do you wait around for the hammer to fall this month or next year or two years from now when your even more successful?
Not if your a good businessman with the pockets to fight
So your a game developer and name your game citylights and its a hit now no one on the face of the earth can ever develop a game using the word city or lights?
Another guy develops an App called wild colors that blows up
Then no one on earth can develop an App using the word Wild or colors?
As someone who gets several absolutely ridiculous C & D letters every month which I answer to never hear a word again from its seems to be a lottery ticket these companies are playing by sending letters.
Send 1,000 letters and 100 people that don’t know any better and/or who don’t have the money to fight, will turn their property over.
@ John Berryhill
I certainly agree with your statement that the factual context matters – but not much else with your analysis. It sounds to me like you’re pitching to become Zynga’s TM attorney…which is fine, if that’s the case.
Frankly, I’m not sure where you’re going with you comments. Even most non-lawyer domainers are familiar at this point with the concept of ‘secondary meaning’ that you alluded to. But your example of comparing the strength of McDonalds’ “Mc” mark with any of the ‘Ville’ marks that Zynga may or may not have strong rights to is absurd – if for no other reason than the length of time the mark has been in use. Moreover, if you were to survey brand recognition from the general masses, there’d be no comparison between which mark is more recognizable (with, perhaps, the 5-10 year old demographic being the exception).
Anyway, I’m too busy to get involved in an online debate over trademark law interpretation – as I’m sure you are.
Gene
It’s not a legal question, so there’s nothing to debate. It’s a fact question.
“Moreover, if you were to survey brand recognition from the general masses, thereād be no comparison between which mark is more recognizable (with, perhaps, the 5-10 year old demographic being the exception).”
“General masses” is not the standard, though. That 5-10 year old demographic may well be the relevant class of consumers. The relevant market is more like “consumers of social media based games”. As a class, I would not expect a whole lot of sophistication.
This one could easily go to a jury.
“So your a game developer and name your game citylights and its a hit now no one on the face of the earth can ever develop a game using the word city or lights?”
That’s not even analogous to what I said, or the situation here. Constantly in these discussions, people are looking for some sort of general principle, when what really matters is the fact-intensive nature of trademark disputes in general.
It’s going to depend on what kind of game is it, what are the features of the gameplay, to whom is the game marketed, and so on. All of the Zynga “-ville” games have a common sort of theme – you develop some sort of virtual property, you can link yours to those of your social media friends, and you all get spammed with crapware and ads.
It’s not about “just the words”, and making it out to be a dispute merely over the words is inaccurate.
“As someone who gets several absolutely ridiculous C & D letters every month which I answer to never hear a word again from its seems to be a lottery ticket these companies are playing by sending letters.”
I read at least five or six a day here, from a variety of clients. If the claim is junk, the claim is junk, and that’s that. As you know, there are occasionally situations where litigation is appropriate, along with such actions as filing for cancellation of registrations, and the whole gamut. Believe it or not, I’ve managed to defend a couple of domain names against overreaching trademark claimants. Last time I checked, that’s what I do pretty much all day for most of the last decade.
Do you file a DJ action when you receive a junk claim? No. What’s the point?
This one doesn’t strike me as a junk claim. Because a lot of internet forum posters can only think in binary, maybe I should explain what I mean by that. I don’t “agree” with either side here. I would have to have a lot more facts. The claim is not facially ridiculous, though, since it seems that Zynga has a popular series of games – all following a particular theme, all of which work a particular way, and are marketed to a particular group of consumers (not “the general masses) through particular media. Also, they all end in “-ville”. Somehow gazillions of people manage to publish and sell games of all kinds that don’t end in “-ville”. But, by remarkable coincidence, someone decided to develop a game that works and is marketed the same way to the same audience through the same media as the Zynga series, and it also ends in “-ville”.
Now, if one’s business consists of litigating, that’s fine, have at it. But if one makes one’s money by doing something other than paying lawyers to argue, then the takeaway here is that, at the development stage of any project, it’s a good idea to ponder whether the name you have chosen – from the entire universe of whatever you might name something – might be considered confusing to your target audience.
Geez …
I think that’s ridiculous.
It’s not like Zynga wasn’t making enough money already considering the insane amounts of paysafecards people spend on their games already, not even talking about the money they earn with advertisement.
I agree that I am a die hard Cityville lover but how could Zynga do that? It’s really surprising to see Zynga claiming “Ville” word that is so common. Doesn’t matter if Zynga has filed a law suite or just sent a consent letter to BingVille owners but it can’t be justified…