May 21, 2012

Block Your Valuable Brand from .XXX

.XXX Sunrise Period for Non-Adult Industry Trademark Owners to Begin the 7th of September

The launch of the new top level domain .XXX is drawing near at which time .XXX domain names will be available for registration with the ICM Registry through accredited registrars. The introduction of .XXX is pertinent not only to the individuals, businesses and organizations currently engaged in the adult sponsored community but to all intellectual property holders with trademark rights.

The .XXX Registry is providing an opportunity for trademark owners (not involved in the adult entertainment industry) to apply to opt-out of .XXX and protect their valuable brands from cybersquatting in the .XXX space. This "Sunrise Period B" of fifty-two (52) days scheduled between September 7, 2011 and October 28, 2011, will allow trademark owners to block the registration of their brand in the .XXX domain. In short, trademark owners may opt-out of .XXX by reserving names identical to their existing registered trademarks effectively barring any potential person or entity engaged in the adult entertainment community from registering a .XXX domain name for that particular mark. A registered trademark is required and submitting an application does not guarantee that your trademark will be blocked by the registry.

However, a successful application to block a .XXX domain name registration will eliminate the domain from the .XXX registry for at least ten years (for a one-time fee of $225 per domain name plus attorney time to prepare the application). The blocked domain will then resolve to an informational page stating that the domain has been reserved and further prevent other interested parties in acquiring and/or using it. Once the Sunrise period ends, if a brand owner hasn’t taken advantage of the opportunity to block its trademark from the .XXX registry, all members of the adult sponsored community will have the ability to register .XXX domains, even if those domains include a valuable or well-known brand. Other rights protection mechanisms will be available (such as the Uniform Dispute Resolution Policy ("UDRP")), but proactively participating in the Sunrise period may be a more cost-effective and pro-active approach.

© 2012 Bracewell & Giuliani LLP

About the Author

Partner

Erin Hennessy is an intellectual property partner in Bracewell & Giuliani's Seattle office. Her practice focuses on trademark law with an emphasis on the media and telecommunications industries.

During her career, Erin has handled worldwide trademark matters including trademark counseling, clearance, registration, protection and enforcement; domain name and internet issues; litigation, licensing and transactional work. She has worked on various policy issues such as the launch of the new gtlds, trademark dilution, domain name tasting, cyber-...

206-204-6240
Associate

Matt Schneller counsels clients on matters related to trademarks, domain names and copyright prosecution and enforcement, in the U.S. and internationally. Matt helps clients with selecting, clearing, registering, and licensing trademarks and copyrights. He also helps clients enforce their intellectual property rights against third parties, from cease-and-desist letters to negotiated settlements to administrative litigation before the Trademark Trial and Appeal Board (TTAB). He has represented apparel companies, financial services firms, major software companies, Internet...

206-204-6241

About the Author

Senior Paralegal

Jennifer Ashton is a senior paralegal in Bracewell & Giuliani LLP’s intellectual property section. Throughout her career, she has managed and maintained U.S. and international trademark portfolios for various clients ranging from start-up to Fortune 500 companies. She is experienced in all aspects of U.S. and international trademark clearance, prosecution and maintenance.

She coordinates and communicates with U.S. and international counsel on trademark matters and assists counsel with agreements, domain name issues, cease and desist letters...

206.204.6228

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