Trademark Lawsuit “With Friends”

There is “Words With Friends”, “Scramble With Friends”, and now “Bang With Friends”? One of these is not like the others. Sure all are internet applications (apps) that can be downloaded to your smartphone or tablet, but only two are created by the popular gaming company Zynga. The third, “Bang With Friends” or BWF, is not associated with the company at all.

In a recently filed trademark lawsuit against the makers of BWF over the name similarities, Zynga reveals their apps have been downloaded over ten million times and have produced millions in revenue. Representatives from Zynga claim that they approached the creators of BWF informally about its app name, but after talks broke down decided to file a trademark infringement lawsuit which was officially submitted in San Francisco on July 30^th. Included in the many complaints contained in the lawsuit is the “illegal free riding on recognized and valuable intellectual property rights” referring to the makers of BWF, Colin Hodge and Omri Mor,  referring to them as“opportunistic”. Zynga is claiming that Hodge and Mor made a purposeful choice to use the “With Friends” suffix in order to capitalize on Zynga’s established reputation.

While “With Friends” is a Zynga trademark, analysts who have reviewed the lawsuit feel that a win will be a reach for Zynga as BWF has a few good legal options to fight the suit. A recent informal precedent was set when Lamebook was able to pull a win over Facebook. In a suit that was eventually settled out of court, Lamebook, capitalizing on the protection of the First Amendment, stated its name was a “clear parody” of Facebook. The only stipulation that Lamebook agreed to was including a disclaimer on its site stating it is not sponsored by or affliated to Facebook. The other strike against Zynga is that the term “with friends” is very generic and is a commonly used term.

In order to make headway in court, Zynga will need to show that their customer base was confused with the “with friends” catchphrase. With Zynga focused mainly on family friends games, BWF’s sexually based hook-up app could really surprise parents who may have downloaded it without much thought assuming it was appropriate for their children like Words With Friends and Scramble With Friends. As of May, Apple had already dropped the BWF app from their store although the reason is unclear but could be related to a violation of Apple’s privacy guidelines. With only the original document filed at this point, it should be interesting to see how this case plays out.