Plaintiff Pure Imagination, Inc. filed suit against defendant Pure Imagination Studios, alleging trademark infringement and cyberpiracy for defendant’s use of the marks “Pure Imagination Studios” and “pureimagination.com.” The plaintiff incorporated in Illinois in 2000 and advertises over the Internet. It showed use of the trademark “pure imagination” in 1999. In 2002, the plaintiff registered the trademark with the U.S. PTO. The defendant, which provides services worldwide, incorporated in Illinois in 2001 and first used “pure imagination” in interstate commerce that same year. The defendant obtained state trademark registrations for “pure imagination” and “pureimagination.com” in 2001. The domain name “www.pureimagination.com” was first registered by third parties in 1998. The defendant bought ownership of the domain name from the third party in 2001. The plaintiff filed a motion for summary judgment on all claims. The US District Court for the Northern District of Illinois addressed three issues: (1) whether the third party’s registration of the domain name www.pureimagination.com gave the defendant trademark rights; (2) if not, whether the defendant had any trademark rights associated with its use of the "pure imagination" mark prior to the plaintiff’s federal registration; and (3) whether a likelihood of consumer confusion exists between the plaintiff’s and defendant’s uses of the marks. Finding that questions of fact exist regarding these issues, the court denied summary judgment in part as to the claim of trademark infringement and denied summary judgment as to the claim of cyberpiracy.Regarding the first issue, the court held that a third party’s mere registration of a domain name is not sufficient to establish trademark rights for a subsequent user of the domain. Under 15 U.S.C. § 1060, a party may "tack" trademark rights to an earlier use by a third party only if it can show that the earlier user did not abandon the mark and that the earlier user assigned the goodwill associated with the mark as well as the mark to the subsequent user. In the case of a domain name, mere registration does not constitute a trademark use. In the present case, the defendant did not offer any additional evidence showing the nature of the third parties’ use as a trademark use and that the third parties did not abandon the mark. In addition, the defendant did not provide evidence that the third parties assigned the goodwill associated with the mark when it assigned ownership of the domain name to defendant. As a result, the court held that the defendant cannot rely on the third parties’ earlier registration to establish its first use of the trademark.
The court, however, recognized that the defendant may have trademark rights from other sources. Under 15 U.S.C. § 1115(b)(5), a junior user has some rights to a mark if it adopted the mark without knowledge of the registrant’s prior use and used the mark continuously since a time prior to the registrant’s federal registration of the trademark. In the present case, the court found that genuine issues of fact existed regarding the defendant’s first use and that a reasonable jury could find that the defendant had used the mark in good faith in areas where the plaintiff did not yet have trademark rights. The court also found that genuine disputes existed regarding likelihood of confusion when applying the Seventh Circuits’ seven factor analysis. Specifically, the evidence presented by the plaintiff was not sufficient to support summary judgment with respect to three of the seven factors: intent of defendant to palm off his product as that of another; actual confusion; and area and manner of concurrent use. The court, therefore, denied summary judgment in part as to the claim of trademark infringement.
Finally, the court also denied summary judgment as to the claim of cyberpiracy. 15 U.S.C. § 1125(d)(1)(A) requires that a party have a bad faith intent to profit from the mark for cyberpiracy. Because a dispute exists regarding the defendant’s intent, the court held that summary judgment was not appropriate.