Date: XXX YY, 19ZZ
Re: Imagination Designs, Inc. domain name
As you have described it to me, Imagination Designs, Inc. has attempted to register the domain name "imagination.com" with Internic, but found that it had already been registered to Imagination Systems, Inc., a Virginia-based software firm, which is currently using the domain name for its website at www.imagination.com. It is also my understanding that (a) neither company has any trademarks registered with the US Patent and Trademark Office, (b) you have been using the name "Imagination Designs" in connection with the goods and services you provide since 1990, and (c) Imagination Systems, Inc. has been in existence only since 1995. [Note: you may add any additional "facts" that you have added to "fill out" this hypothetical and which you will be assuming in the memo below]. You have asked (a) whether there is anything that Imagination Designs can do to obtain the domain name "imagination.com," and (b) whether Imagination Designs may have a viable claim of trademark infringement against Imagination Systems, Inc. arising out of its use of the domain name "imagination.com."
1. The domain name registration.
The current Network Solutions, Inc. policy regarding
conflicting domain name registrations can be summarized as follows. . .
Accordingly, it would appear that Imagination Designs has the following options for obtaining the "imagination.com" domain name . . .
2. Trademark Infringement.
In order to have a valid claim for trademark infringement against Imagination Software under the federal trademark statute (the Lanham Act, 15 USC sec. 1051 et seq.), Imagination Designs must establish that . . .
As applied to the facts of this case, . . .
Assuming that Imagination Designs has a protectable trademark in the word "imagination," Imagination System's use of the domain name "imagination.com" [is][is not] likely to constitute actionable infringement, for the following reasons .. .