Looks Like There May Be More Trademark Fights About Mafia Wars Than There Were Actual Mafia Wars

from the going-to-the-mattresses dept

In February of 2009, we noted that the makers of the popular Facebook game Mob Wars was suing Zynga, the makers of the (also popular) Facebook game Mafia Wars. As we noted at the time, this was a bit silly, since both games were based on a series of other very, very similar games that had come before them. Neither was particularly original. And then, a few months later, Zynga struck out and claimed trademark infringement against another company, Playdom (recently purchased by Disney) for its game Mobsters. Again, this seemed to be a blatant abuse of trademark law to attack a competitor, rather than a legitimate complaint. Either way, Zynga eventually paid up on the first complaint, shelling out an estimated $7 to $9 million.

And now it continues with yet another player. Eric Goldman points us to the news that game maker Digital Chocolate is now suing Zynga for trademark infringement over the name “Mafia Wars,” noting that it has actually offered a game called Mafia Wars itself since 2004:

Apparently Digital Chocolate complained about Zynga’s use of the identical name from early on, and Zynga promised that it would not trademark or claim trademark on “Mafia Wars.” Yet, as the complaint against Playdom demonstrated, it absolutely did exactly that, and Digital Chocolate is not at all pleased:

Digital Chocolate has repeatedly objected to Zynga’s ongoing use of the MAFIA WARS mark, but despite Digital Chocolate’s notices and demands, Zynga has persisted in offering its game under the MAFIA WARS mark. Although in May 2009 Zynga expressly assured Digital Chocolate, in writing, that “Zynga does not claim trademark rights in MAFIA WARS,” just two months later Zynga filed an application with the United States Patent and Trademark Office (“USPTO”) seeking to register MAFIA WARS as its trademark. Despite being on notice of Digital Chocolate’s senior rights and infringement claim, Zynga repeatedly misrepresented to the USPTO that no other entity owned or claimed rights in the MAFIA WARS mark.

Through duplicity and bad faith, Zynga has effectively hijacked the MAFIA WARS mark from Digital Chocolate and is aggressively marketing its games under the MAFIA WARS mark to Digital Chocolate’s substantial detriment. To protect its intellectual property rights and prevent Zynga from benefitting from its wrongful conduct, Digital Chocolate has initiated this action.

The complaint certainly doesn’t make Zynga look good, though the company has always had a really nasty reputation when it comes to its business practices. Still, it’s really amazing how many legal fights there can be over a game like Mafia Wars, with such a generic name, and based on a concept that was around in other games for ages. Either way, given the pretty clear evidence that Digital Chocolate was first in this market, and Zynga’s questionable statements claiming that it was first, I’d be surprised if Zynga doesn’t end up handing over a large check to Digital Chocolate at some point soon. Considering that (unlike the other disputes), Digital Chocolate clearly was using the identical name, and offering a similar game, this seems like one trademark dispute that actually does involve a legitimate “likelihood of confusion.”

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Companies: digital chocolate, playdom, zynga

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Comments on “Looks Like There May Be More Trademark Fights About Mafia Wars Than There Were Actual Mafia Wars”

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Trerro says:

The same name thing is the main issue.

The basic game design of these games has been done to death, long before Facebook even existed. It goes back at LEAST to Outwar, and if you trace it far enough, probably to an obsure BBS game. That makes pretty much all of these lawsuits stupid, as NONE of these companies had the original idea.

That being said, using the EXACT same game title, even if it is in a game genre of basically nothing but clones, is a problem. While I don’t think the other company should be able to get a huge check, they should be able to mandate a name change if they had it first.

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