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[D]

Someone owns a domain name (call it apex.com), using it for non commercial purposes, of a service I want to start (call it apex). If I apply for a trademark of that domain name (trademark the word apex and apex.com), once approved, do I have rights to the domain name?

[JSonnabend]

No, not on the facts you've presented.  If the domain owner began using the domain in such a way that it infringed your mark, then you might have some recourse, but possibly still not be able to wrest the domain from the present owner.

- Jeff

[D]

Thank you for your response Jeff:)

1. Is there any way to acquire a domain name someone else owns but there is no trademark for the domain name yet?

2. Another case:
-Several companies own trademarks for different purposes in the name of Power Vision (power vision is used as an example only..not the actual name) which is two seperate words.
-The domain www.powervision.com is owned by someone that is not using the domain for anything. In fact, the domain owner said he would be willing to sell the name for a high price of course.
-Now, if I do a trademark search again, but this time instead of searching with Power Vision, I search with powervision (as one word) and nothing comes up! No one has any trademark to the word powervision.
-So, if I buy the www.powervision.com domain from the guy and then trademark powervision and powervision.com for my purposes of using the word for my company, am I safe from any recourse from other companies that own trademarks in Power Vision (as two seperate words)? Can I use powervision for any purposes and it not conflict?
-If not, what am I missing? How can I get around this so I can have the domain and trademark?

[Isaac]

Thank you for your response Jeff:)

1. Is there any way to acquire a domain name someone else owns but there is no trademark for the domain name yet?

Is there a reason the current owner should not be allowed to keep the domain other than the fact that you want it?

[JSonnabend]

For trademark purposes, "Powervision" and "Power Vision" are the same mark.  

I think you're operating under a fundamental misconception of how trademarks "work".  You don't register a trademark to establish trademark rights, you establish trademark rights through use and only through use.  In fact, the Trademark Office is not allowed to issue a TM registration unless and until you start using the mark in commerce.

Also, as a side note, a company name is not a trademark in and of itself.  Only those company names that are also used as trademarks are actually trademarks.  Delta and UAL come to mind as examples of each.

- Jeff

[D]

Is there a reason the current owner should not be allowed to keep the domain other than the fact that you want it?

-If I use the trademark name in commerce which is same as the domain name owned by someone else, is there any reason why I should not have rights to the domain if no one else is using the trademark name in commerce and I was the first to start using the trademark name in commerce?

[D]

For trademark purposes, "Powervision" and "Power Vision" are the same mark.  

I think you're operating under a fundamental misconception of how trademarks "work".  You don't register a trademark to establish trademark rights, you establish trademark rights through use and only through use.  In fact, the Trademark Office is not allowed to issue a TM registration unless and until you start using the mark in commerce.

Also, as a side note, a company name is not a trademark in and of itself.  Only those company names that are also used as trademarks are actually trademarks.  Delta and UAL come to mind as examples of each.

- Jeff

Excellent point Jeff. I don't want to purchase a domain name from someone for a huge sum where another company that has been using that name as a trademark for years could try to snag it. I want to purchase the domain knowing that when I start to "use" it in commerce and then "apply" for a trademark, that I will be protected. That is why I brought powervision and powervision.com. So essentially, powervision.com would be a unique trademark versus power vision (or powervision) by itself?

[JSonnabend]

So essentially, powervision.com would be a unique trademark versus power vision (or powervision) by itself?

No, the ".com" is ignored for TM purposes.  "Power Vision", "Powervision" and "Powervision.com" are all the same as far as TM's are concerned.

-If I use the trademark name in commerce which is same as the domain name owned by someone else, is there any reason why I should not have rights to the domain if no one else is using the trademark name in commerce and I was the first to start using the trademark name in commerce?

Because TM rights aren't the only type of rights that exist, perhaps?  You're not using your car as a TM, but you still have property rights in it, right?  If I want to buy the domain "Fzooi.com" and use it to wax eloquently about turtles, why should a startup "Fzooi Wax" be able to take it from me?  They shouldn't, as property rights (even in domain names) can and do exist outside of the TM realm.

- Jeff

[D]

Jeff,

Brilliant response. I appreciate your timely feedback. I'm not sure why you respond to this forum, for pleasure or for more clients, but you are definitely building trust with me and if I decide to move forward, I'll consider your services if available.

To sum up: Over the last 15 years, about 7 companies have trademarked "Power Vision" (ficticious name) for various purposes in commerce. Interestingly, although they use the trademark for different purposes and each trademark looks different, they are under the same general category of products/services (for example, I would consider Health a general category versus Cardio Kickboxing a more specific category under the general category Health). About 10 years ago, a very forward thinking person, bought the www.powervision.com. He doesn't use it for anything.

-If I buy www.powervision.com from him, do any of the other 7 companies have any way of stripping the property rights from me even if I decide not to use the domain for any specific purpose?
-If I buy www.powervision.com from him and decide to use the name in commerce under the same general category as the other 7 companies are using it in their trademarks (but my specific category would be different (using the Health versus Cardio Kickboxing example of general versus specific category comparison), am I free from any recourse?
-If I do the above and trademark the use of my domain name in commerce, am I free from recourse?

Did I explain myself clearly enough?

[JSonnabend]

First, you can't "trademark" the use of your domain name.  You can seek to register any trademark in the domain name you may have.

Second, if your use of the mark in question is likely to cause confusion between you and one or more of the other seven users of the mark, then you're likely infringing their trademark rights.

- Jeff