Your Mark Can Become “X-Rated”
You’ve worked hard, spent a lot of time and money establishing your brand–your trademark or service mark (“Mark”). People come to you for the goods or services you offer because of their association of your brand with the quality or desirability of your goods or services. You’ve hopefully registered it for trademark or service mark with the U.S. Trademark Office and/or in another country to protect it (if you haven’t, you should immediately, including for the reasons below). You may also have had to fight off or stop others you thought were trading on your brand. So, what if your brand suddenly became “X-rated”—used by a business or organization that currently provides online adult entertainment or is a supplier for it (Online Adult”)? Probably not what you have in mind. Well, it can happen later this year without your consent, unless you take prompt steps to prevent it.
Starting later this year, the top level domain “.xxx” will be available for registration through the ICM Registry only to those in Online Adult. However, non-Online Adult Mark holders can reserve and block registration of their registered Marks in the .xxx domain, through the ICM Registry Sunrise B program.
To do this, you must file a request containing certain specified information between September 7 and October 28, 2011 (the “Application Period”) and pay the application fee. If the application is approved and no Online Adult has yet applied for the same domain name, your Mark will be reserved for at least 10 years and unavailable to Online Adult as a domain name.
However, there are certain restrictions that will defeat a request. A few are that a request cannot be based on: (a) a pending Mark registration application; (b) a canceled or abandoned Mark; (c) a state Mark registration; or (d) certain international applications or registrations.
There will be post-Application Period ways to prevent Adult Online use of your Mark. But, the most efficient and cost-effective way to do so is to file a proper request during the Application Period.