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Fall 2011

Intellectual Property Bulletin

Trademarks: Protecting Your Trademark from Association with the Adult Entertainment Industry

Click here for a printable copy of the bulletin.

The Internet Corporation for Assigned Names and Numbers (ICANN), the manager of the Internet’s domain name system, has approved a new “.xxx” generic top-level domain (gTLD) as a special “red light district,” dedicated to the adult entertainment field, for the online adult entertainment community. This means that community will soon have its very own “.xxx” top level domain, for websites such as www.hot&steamy.xxx. As a top level domain name, .xxx will operate just like .com, .net, and .org, except that it generally will direct Internet users to an adult entertainment oriented site.

Many trademark owners prefer that their brands not be present in adult entertainment cyberspace as part of .xxx addresses for adult entertainment sites. You should consider protecting your trademark from such use.

ICANN has provided a method for doing so. For a short period of time, owners of registered trademarks may “opt out” of having their trademarks sold as part of the .xxx domain name offering. Until October 28, 2011 (the “Sunrise B Period”), owners of registered trademarks may file an opt-out request with participating domain name registrars, which will allow them to BLOCK their registered trademarks from being given out as .xxx domain names. The result of a successful Sunrise B application will be that the domain name incorporating the trademark will be unavailable for registration, and any attempt to access a site through the blocked domain name will lead to a standard information page indicating that the domain name is not available for .xxx registration. Sunrise B applications can be made through approved domain name registrars, such as GoDaddy.com and Network Solutions. The blocked marks will remain blocked for 10 years. During this Sunrise Period, members of the adult entertainment industry also can apply for .xxx domain names for their registered trademarks and current domain names. At the conclusion of the Sunrise B Period (and a brief “land rush” period for other parties in the adult entertainment industry agreeing to abide by certain terms and conditions), .xxx domain names that have not already been pre-registered or blocked will become available to the general public. Protecting your registered trademarks after the conclusion of the Sunrise B period will likely be more difficult, expensive, and time consuming.

Trademark owners not involved in the adult entertainment industry should consider filing for .xxx blocks for at least their core registered trademarks. We are urging all of our clients with valuable registered trademarks to consider applying to BLOCK the use of their registered trademarks as .xxx domain names.

Please let us know if our trademark team can assist you in obtaining the blocks. Costs for obtaining the 10-year blocks should be reasonable—approximately $1,000 for the first trademark and $600 for additional trademark blocks (legal fees plus registration fees).

For more information on how to protect your trademark in the new .xxx landscape, please contact Jim Duda, partner and coordinator of the Intellectual Property Practice Group at Bulkley, Richardson and Gelinas, LLP, at jduda@bulkley.com or (413) 272-6284.

This bulletin provides only general information and should not be relied upon as legal advice. This bulletin may also be considered attorney advertising under court and bar rules in certain jurisdictions.