Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

PURE IMAGINATION, INC. v. PURE IMAGINATION STUDIOS

September 29, 2004.

PURE IMAGINATION, INC., Plaintiff,
v.
PURE IMAGINATION STUDIOS, INC., Defendant.



The opinion of the court was delivered by: AMY J. ST. EVE, District Judge

MEMORANDUM OPINION AND ORDER

On August 28, 2003, Plaintiff Pure Imagination, Inc. ("Pure Imagination") filed this suit against Defendant Pure Imagination Studios, Inc. ("Studios") for trade mark infringement and cyberpiracy associated with Studios' use of the trade name "Pure Imagination Studios" and the domain names "www.pureimagination.com" and "www.pureimaginationstudios.com." After conducting discovery, Pure Imagination filed a Motion for Summary Judgment. (R. 18-1.) For the reasons set forth below, Pure Imagination's Motion is granted in part and denied in part.

BACKGROUND

  I. Factual Background

  A. The Parties

  Pure Imagination provides advertising and web site development services and goods. (R. 1-1, Compl. ¶ 7.) Pure Imagination was incorporated in Illinois on March 21, 2000 and has its principal place of business in Batavia, Illinois. (R. 25-1, Plaintiff's Rule 56.1 Statement of Material Facts in Supp. of its Mot. For Summ. J. ("Pl.'s 56.1 Stmt.") ¶ 6; R. 1-1, Compl. ¶ 7.) Studios provides advertising, graphic design, illustration, and web site services and goods. (R. 61, Answer ¶ 19.) Studios was incorporated in Illinois on January 10, 2001 and has an office in Texas. (Id. ¶ 3.)

  B. The Parties' Use of the Mark "pure imagination"

  Pure Imagination used the "pure imagination" mark in a publication for a Minnesota magazine on January 3, 1999. (Pl.'s 56.1 Stmt. ¶ 3.) The parties dispute the scope of Pure Imagination's business. Studios alleges that Pure Imagination's market is primarily local to Batavia, Illinois. (R. 22-2, Defendant's Rule 56.1 Statement of Material Facts in Opp. to Plaintiff's Mot. For Summ. J. ("Def.'s 56.1 Stmt.") ¶ 7.) On the other hand, Pure Imagination contends that it has a worldwide business because it advertises on the Internet. (R. 18-1, Pl.'s Mem. at 9.)

  Studios first used the mark "pure imagination" in interstate commerce on May 18, 2001. (Pl.'s 56.1 Stmt. ¶ 4.) Studios alleges that in early 2001, it performed a trademark search and found no reference to Pure Imagination. (Def.'s 56.1 Stmt. ¶ 2.) Studios further alleges that in early 2001 it had no knowledge that Pure Imagination was in business. Id. Studios offers services worldwide, including fifteen states and seven countries. (Id. ¶ 7.)

  On May 22, 2002, Pure Imagination filed an application for registration of the "pure imagination" mark with the United States Patent & Trademark Office. (Pl.'s 56.1 Stmt. ¶ 9.) Pure Imagination received its registration certificate No. 2721,452 on June 2, 2003. (Id. ¶ 9.) Prior to Pure Imagination's federal registration application, Studios obtained state trademark registrations for the marks "Pure Imagination Studios" and "pureimagination.com" in Illinois on December 31, 2001. (Def.'s 56.1 Stmt. ¶ 6.) On April 22, 2002, Studios obtained registration for the mark "Pure Imagination Studios" in Oklahoma. Id.

  C. Previous Registration of the "www.pureimagination.com" Domain Name

  In early 1998, Scott Hamlin operated a company known as Pure Imagination and in June 1998 registered the domain name "pureimagination.com." (Def's 56.1 Stmt. ¶ 3.) The principal of Studios, Josh Williams, worked with Mr. Hamlin at this time. Id. Mr. Hamlin did not renew the domain name "pureimagination.com," and Michele Trimble subsequently registered the name. (Id. ¶ 4.) Mr. Williams completed a formal transfer of ownership in the domain name in May, 2001, paying $600 to Ms. Trimble for the domain name. (Id. ¶ 4.)

  ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.