Filed in the “good luck with a trademark fight based that name” department comes Bang With Friends, Inc. (BWF) and their casual sex app of the same name. The app is designed to discreetly connect a user with the user’s facebook friends who also have the Bang With Friends app and are interested in hooking up with them. The BWF website says “Your friends will never know you’re interested unless they are too.” Classy.
Not surprisingly, on July 30, 2013, Zynga filed a trademark infringement complaint against BWF alleging infringement of Zynga’s “with friends” trademarks. Zynga Inc. v. Bang With Friends, Inc., No. 13-cv-3517 (N.D.Cal., July 30, 2013). Below we’ll look at what can be learned about brand protection from this case, but first a background on the case.
A Caffeine and Alcohol Fueled All-nighter. According to the Complaint, the Bang With Friends app was created by “three twenty something men over the course of a night and with the help of ‘a lot of Red Bull and Vodka.’” The complaint is written–like any good complaint–to tell a story about the situation. Its not much legal significance that the app was developed through an all nighter fuelled by Red Bull and Vodka–but it lays a background for Zynga’s story and implies a level of outlaw wildness intended to support a showing of wrongful behavior. Yet, I imagine that a lot of software is written at night with the aid of caffeine–did anyone see The Social Network movie? Oh wait, bad example of innocent all-nighters, Facebook has been sued by others claiming its founder stole the idea for Facebook–who knows what actually happened.
Zynga’s Marks. In any event, Zynga is the maker of several social network based games with names having the term “with friends”, such as, Words With Friends, Scramble With Friends, Hanging With Friends, Chess With Friends, Matching With Friends, Gems With Friends, and Running With Friends. Zynga has several federal registrations of marks having the terms “with friends”. Zynga also has a registration over the mark “with friends.”
Who’s First. Trademark rights accrue to those who first start using the Mark in commerce (in business). Zynga’s “Words With Friends” trademark application claims a first use date in 2009. Zynga’s “with friends” trademark registration claims a first use date in 2010. According to the complaint the BWF app was launched in January 2013. Zynga likely wins the who’s first battle.
Media References and Recognition. BWF could attempt to show that many others use “with friend” term for apps and therefore Zynga does not own the mark. However, this path seems doubtful. Many times in lawsuits, professional surveys are conducted in order to assess the level and the extent that consumers recognize a given trademark as identifying a source of goods and services. In this case, media coverage has partially done the job of surveys showing such an association. The complainant cites national media coverage of the “Bang With Friends” app that compares it to the Words With Friends or other Zynga “with friends” applications based on the name. This is harmful to the BWF case because it shows that the public finds an association between Bang With Friends and Zynga’s “With Friends” applications. In other words, the public associates the “with friends” words with a source–Zynga–of the game applications previously having those words. This is an indication that Zynga has developed trademark rights (e.g. “secondary meaning” or “acquired distinctiveness”) in the name even apart from the federal registrations.
Given the widespread success and popularity of the Zynga games having the “with friends” wording and the fact that Zynga was the first used the mark vis-à-vis Bang With Friends Inc., it is likely that Zynga has relatively strong trademark rights in the “with friends” mark. In other words, its likely Band With Friends will be changing their name relatively soon.
Oh no, I Can’t say “with friends” anymore? At this point in the discussion of many trademark cases, this question is often heard bantered: “So, now no one can say ‘with friends’ because Zynga owns it? That’s stupid.” — False. Zynga cannot prohibit all uses of the words “with friends.” Zynga’s rights, if proved, extend to protecting the use of “with friends” when that phrase is used as a trademark, e.g. when it’s used to identify a source of goods or services. Therefore if you say “I’m going to hang out with friends tonight,” you are not using the term “with friends” as a trademark instead you’re using it to describe the activities you are going to undertake. Think about this question: Do you think of the “words with friends” or related “with friends” apps that Zynga sells when this is said? Probably not. Are you trying to sell or promote a product or service? No. Therefore, this is not trademark infringement and Zynga can’t stop you from saying it.
App Developers Take Note: Brand Protection Is Important. Zynga is doing with the term “with friends” what publisher John Wiley & Sons did with the “For Dummies” book series. Zynga’s choice of names for its apps and its brand strategy illustrates how a trademark, when used with an application that becomes successful, can help the developer transfer that success to subsequent applications. Here, Words with Friends, I believe, was the first app to use the term “with friends.” Zynga’s subsequent apps had names that carried the “with friends” term, which help tell its customers: “if you liked Words With Friends you might also like our next app ‘_______ With Friends.’ ” And after a while, Zynga doesn’t need to say that. Consumers know when they see an app having the term “with friends” that it’s from the source that previously brought them other apps that they enjoyed–e.g. Words with Friends. That’s the power of a strong brand.
Trademark Policing is Necessary. When a mark becomes popular an investment is needed in order to police it as Zynga has done in this case. Not only has Zynga incurred legal fees to file this suit against Bang With Friends, but according to the Complaint they’ve had to file oppositions at the Trademark Office to prevent others from registering similar marks. Stopping others from infringing your mark is generally known as trademark policing. It prevents others from misappropriating the goodwill that has been developed under the “with friends” marks. Further, if a mark goes unpoliced and many third-parties start using the mark, the trademark owner can lose rights in the mark because the mark no longer functions to identify a single source of goods/services. Therefore, trademark law encourages, and in fact requires, trademark owners to police their marks if they want to maintain the trademark rights they have developed.