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Potential Trademark Issues with the New .xxx Domain

October 04, 2011

October 4, 2011 (Mountain View, CA) – Sally Abel, Chair of the Trademark Group of Fenwick & West LLP, was recently interviewed for the Reuters Legal Currents podcast regarding trademark issues that could result from the new .xxx domain for the adult entertainment industry.

After years of controversy, ICANN has approved the .xxx domain exclusively for use by the adult entertainment industry. Trademark owners outside this industry are being advised to take action to block their trademarks from use in relation to this new domain.

Sally Abel commented that the need for the expansion of domain names has been a matter of discussion for many years, and a continued source of concern for trademark owners. With the introduction of the .xxx domain, trademark owners are particularly concerned that their brands will be associated with the adult entertainment industry.

The registry system for this domain has been established so that trademark owners have a Sunrise Period during which they can apply to block use of their mark with the .xxx extension. The Sunrise Period will run until October 28. After this, Ms. Abel warns that the "adult entertainment land rush will have already occurred," and it will become increasingly difficult to prevent usage of a trademark with the .xxx domain.

Ms. Abel went on to say that it is very important to have a domain strategy in place, in order to protect a brand, and not just be "putting out fires." The domain strategy should take into account all of the domain extensions available, as there are many beyond .xxx.

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