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- Keeping Your Registered Trademark Off .XXX: Last Week to Opt Out of the Adult Entertainment Registry
Keeping Your Registered Trademark Off .XXX: Last Week to Opt Out of the Adult Entertainment Registry
Registered trademark owners have until October 28, 2011 to block others from registering their trademark as a domain name in the .XXX registry, the new top level domain (“TLD”) for the adult entertainment industry. Brandowners in the adult entertainment industry have had the opportunity to secure their domain names pre-launch during Sunrise A. Now, owners of “non-adult entertainment” marks registered with the Trademark Office prior to September 1, 2011 and in good standing may defensively reserve those registrations from the pool of all available domain names – essentially blocking others from registering their marks as .XXX domains.
Benefits to Defensive Reservation of your Registered Trademark
Opting-out is a defensive strategy that avoids problems associated with the first-come first served general domain name registration. Moreover, disputing registrations later will likely cost much more than the Sunrise B filing prices. It can be beneficial to take advantage of Sunrise B, as Sunrise A applicants will be considered to be on notice of any trademark rights claims and may not use lack of notice as a defense to any subsequent dispute proceedings. You can also rest assured that filing to block infringements will not associate your name or mark with .XXX – it will be recorded anonymously on WHOIS.
Blocking is Not Guaranteed
One potential hurdle is that those in the adult entertainment industry who secured domain names during Sunrise A have priority over “non-adult entertainment” brandowners attempting to file during Sunrise B. Therefore, any attempts to reserve a conflicting mark during Sunrise B will be rejected and the fee will not be refunded. Brandowners outside the adult industry should then utilize traditional dispute systems to enforce rights in their marks.
Fees and Duration
The costs for blocking the trademark from the registry are less than the government fees for applying for federal trademark registration. Costs for filing a Sunrise B application range from $200 to $400 per reservation and will run for ten years (or as long as the entire .XXX contract lasts with ICANN). As a reminder, all Sunrise application fees are non-refundable.
Carter Ledyard & Milburn LLP’s team of lawyers and third-party consultants is available to advise on all aspects of this process. Questions regarding this advisory should be addressed to Scott M. Sisun (212-238-8728, firstname.lastname@example.org) or Rose Auslander (212-238-8601, email@example.com).
Carter Ledyard & Milburn LLP uses Client Advisories to inform clients and other interested parties of noteworthy issues, decisions and legislation which may affect them or their businesses. A Client Advisory does not constitute legal advice or an opinion. This document was not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
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