In registering the trademark last July, Zynga claims under penalty of perjury that it has "belief no other person, firm, corporation or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely ... to cause confusion, or to cause mistake, or to deceive." It's on this stipulation which Digital Chocolate hinges its lawsuit, and the company has proof that Zynga knew about DC's version of Mafia Wars. A letter from Zynga's legal representation to DC's in early May 2009 spells out that Zynga "does not claim 'Mafia Wars' as a trademark. Zynga uses the term 'Mafia Wars' to describe the genre of Zynga's game Mafia Wars from Zynga or Zynga Mafia Wars. Zynga disclaims any trademark rights in the term 'Mafia Wars' in connection with its game." Two months later, Zynga applied to the US Patent and Trademark Office to officially trademark the term "Mafia Wars" with regards to "downloadable computer game software for use on wireless devices and computers."
Zynga is also being accused of "cybersquatting" on the URL "MafiaWars.com," and potentially causing "irreparable injury to Digital Chocolate and its business, reputation, and trademarks." Among the many reparations being sought, DC starts with a biggie: "any and all profits earned" from the Mafia Wars name by Zynga. And it gets weird pretty quick, with DC asking for "all containers, labels, signs, prints, packages, wrappers, receptacles, advertising, promotional materials, and the like in its possession, custody, or control break the 'Mafia Wars' mark" (hopefully DC has an empty airport hangar at the ready). That's in addition to the many millions of dollars being asked for "corrective advertising" (double what has already been spent on advertising for Zynga's game).
It's not yet known if Zynga will countersue or what its defense will be, but the company told us yesterday it will defend itself "vigorously" and sees the suit as "opportunistic."