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Trademark Alert:.XXXtra Concerns for Trademark Owners: The New .XXX Domain Name

The newest domain extension—.xxx—is about to make its debut, much to the chagrin of trademark owners who wince at the prospect of use of their trademark as a domain in an online space purportedly reserved for the adult entertainment industry. If you are concerned, you will want to apply to block .xxx domain names that correspond with your marks. You must act before October 28, 2011.

Q. When can I file to block these domains?
A. September 7, 2011 through October 28, 2011 (the "Sunrise" period) for owners of trademark registrations. Otherwise you have to wait until December 6, 2011 (the "General Availability" period) to apply.

Q. When can I file to block these domains?
A. September 7, 2011 through October 28, 2011 (the "Sunrise" period) for owners of trademark registrations. Otherwise you have to wait until December 6, 2011 (the "General Availability" period) to apply.

Q. What do I need to apply?
A. You must own a trademark or service mark registration from a country where you use the mark.

Q. Once I apply, am I guaranteed the .xxx domain name reservation?
A. No. During the Sunrise, applicants in the adult entertainment industry are given priority where they also own a trademark registration or have a domain name registration for your mark. Applications submitted during General Availability, however, are accepted on a first come, first-served basis.

Q. What do I get out of this?
A. If your application is successful, the domain name that corresponds exactly with the word or words in your mark will resolve to a page indicating the domain name is not available for registration.

Q. Where do I apply?
A. We'll be happy to handle the application for you, or if you prefer to do it yourself, go to www.icmregistry.com.


Sally M. Abel (sabel@fenwick.com) is the chair of the Trademark Group and a partner in the Mountain View office of Fenwick & West LLP, in the Intellectual Property Group.

Katie McKnight (kmcknight@fenwick.com) is an associate in the Mountain View office of Fenwick & West LLP, in the Intellectual Property Group.

Stephen R. Garcia (srgarcia@fenwick.com) is also an associate in the Mountain View office in the Intellectual Property Group.

For more information, please contact the Trademark Group at Fenwick & West at trademarks@fenwick.com.


©2011 Fenwick & West LLP. All Rights Reserved.

This update is intended by Fenwick & West LLP to summarize recent developments in the law. It is not intended, and should not be regarded, as legal advice. Readers who have particular questions about these issues should seek advice of counsel.

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