Trademark Clearance and Mafia Wars

As a reminder to us all of the reason for a good trademark clearance search, game developer Digital Chocolate, Inc., has filed a trademark infringement suit in the Northern District of California against Zynga Game Network, Inc., creator of popular Facebook games like Farmville and Mafia Wars.

The complaint alleges that Zynga, which released Mafia Wars in 2008, has “hijacked” the Mafia Wars name from Digital Chocolate. Although Digital Chocolate never registered the Mafia Wars mark in the U.S., it claims Zynga is violating the common law trademark rights it has had since it started selling its own Mafia Wars game in 2004.

For the careful entrepreneur, this case highlights the importance of an adequate pre-launch trademark clearance search to minimize the risk of problems in the future.

A pre-launch trademark clearance search might encompass, for example, federal and state trademark registrations and applications, common law rights, web searches, and domain name availability. While an adequate search might incur some initial costs -- the consequences of inadvertently stepping on someone else's trademark could cost much more in the long run.

In this particular instance Digital Chocolate is seeking a permanent injunction against Zynga’s use of the Mafia Wars mark, Zynga’s profits, treble damages, attorneys’ fees, and an order forcing Zynga to spend twice as much on corrective publicity as it has on its Mafia Wars marketing.