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Act Before October 28 to Prevent Your Trademark from Becoming a XXX Website

10/01/2011

This is the 44th in a series of brief articles that Moye White is sending to its clients and friends to provide practical insights into opportunities and challenges in today's business and financial world.

Your trademark is your identity. You’ve work hard to build your brand and associated goodwill. If you are like many trademark owners, you hope to expand your brand and goodwill into as many territories as possible.

There is one territory, however, you likely want to steer your brand clear of: the new virtual territory designated for the adult industry – a new generic top level domain (gTLD), .XXX, which will soon be available to the general public starting in December 2011.

What is “.XXX”?

Domain names registered under the new top level domain “.XXX” will be used for websites featuring adult content. ICM Registry, the domain name registrar chosen to manage the top level domain, has already launched the application process for those in the adult industry who intend to register and develop .XXX domain names. Starting December 6, 2011, registration of .XXX will be available to the general public.

ACT NOW - Protect Your Registered Trademark

A trademark owner that fails to act before October 28 faces the unpleasant prospect of discovering that its trademark has been registered by a third party for an adult entertainment website. Fortunately, as part of the .XXX launch process, ICM Registry has provided qualified trademark owners the opportunity to block registration of domain names that correspond with their trademark registrations.

The procedure, called the “Sunrise B Period,” allows owners of federally registered trademarks to file an “opt-out” request with participating domain name registrars. The Sunrise B Period began on September 7, 2011 and ends October 28, 2011. There is a one-time fee associated with the application, determined by the individual registrars, which generally ranges between $200-$400.

Only owners of a U.S. trademark registration or a foreign equivalent can participate in the Sunrise B Period. Trademark owners who have not registered their marks with the United States Patent and Trademark Office are relegated to attempting to register the .XXX version of their trademarks in December 2011 - yet another reason to protect your mark through federal registration.

Beginning in December 2011, .XXX domain names that have not already been pre-registered by a member of the adult industry or blocked by a federal trademark owner will become available to the general public. Anyone, including an unauthorized user, will be able to register “yourtrademark.XXX.”

Benefits Of Blocking Your Registered Trademark

There are several benefits to blocking “yourtrademark.XXX” during the Sunrise B Period:

  • A successful application will render “yourtrademark.XXX” unavailable for registration by others; “yourtrademark.XXX” will simply resolve to a standard informational page.
  • Unauthorized third parties will not be able to use “yourtrademark.XXX” in connection with websites containing adult content, thereby preventing your trademark from being tarnished.
  • “Cybersquatters” will not have the opportunity to blackmail you by registering “yourtrademark.XXX.” This could save thousands of dollars in attorneys’ fees and expenses, not to mention the time associated with attempting to reclaim your trademark through litigation, a Uniform Domain Name Dispute Resolution Policy (“UDRP”) proceeding, or a negotiated settlement.

The “.XXX” gTLD is intended to create a virtual red-light district on the World Wide Web, shielding those who are sensitive to adult content. For trademark owners it has created a new battleground in the ongoing war to protect their marks from disparagement and misappropriation. Now is the time to act to prevent unauthorized use of your trademark in this new virtual “adults only” frontier.

For more information, please contact: Charles F. Luce, Jr., Chair, Intellectual Property Group at (303) 292-2900.

Moye White LLP has prepared this bulletin to provide general information; however this bulletin does not provide legal advice and does not create an attorney-client relationship between the reader and Moye White. No legal or business decision should be based solely on the content of this bulletin.

ABOUT THE AUTHOR

Charles F. Luce, Jr.

Attorney

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