Open Window For Blocking Adult Entertainment Sites From Using Your Trademark

September 2011

Earlier this year, the Internet Corporation for Assigned Names and Number (ICANN) approved the execution of a registry agreement with the ICM Registry for the registration of ".xxx" domain names. The .xxx domain names will be made available only to persons in the adult entertainment industry. The purpose of offering a separate .xxx domain name category is to allow sexually explicit material to be designated by its own top-level domain so that parents and others may more easily prevent access to such sites by children, employees, etc.

For a 52-day period beginning September 7 and ending October 29, 2011, owners of federally registered trademarks can place "block requests" to prevent others from registering their trademarks as ".xxx" domain names. In order to place a block request, your trademark must be federally registered, and you will be required to provide certain information concerning your trademark registrations, such as registration dates and trademark classes. Note also that the trademark you are seeking to block must be the same as the trademark you have registered-in other words, you may not block a variation of your trademark unless that variation is also registered with the U.S. Patent and Trademark Office.

The cost to place a ten-year block request is determined by the individual registrar and may range from a couple hundred dollars to several hundred dollars. For a list of accredited registrars, please click here. Members of the adult entertainment industry with registered trademarks may register .xxx domains that incorporate their registered trademarks during the same 52-day period that applies to the block requests. The former is referred to as the "Sunrise A" period, and the latter is referred to as the "Sunrise B" period.

Keep in mind that in order to prove trademark infringement, the trademark owner must show a likelihood of confusion, which usually means that the goods and/or services at issue must be the same or at least "related." For a trademark owner that is not in the adult entertainment industry, likelihood of confusion may be difficult to prove. It is for this reason that the block request alternative has been provided-to protect trademark owners from having their marks tarnished by association with an adult entertainment business. Although trademark dilution statutes protects marks from tarnishment and do not require a showing that the goods or services are related, most dilution statutes (including the federal statute) apply only to "famous" marks. Because most trademarks are not household names, trademark dilution statutes will not be available to the vast majority of trademark owners.

After the "Sunrise B" period for block requests expires on October 28, there will be a "Landrush" period for 18 days beginning November 8 during which only members of the adult entertainment community may register .xxx domains. Priority of registration will not be determined on a first-come, first-served basis; rather, there will be an auction of domain names with more than one interested party.

For more information on the Sunrise A period, please click here. For more information on the Sunrise B period, please click here. For more information on the Landrush period, please click here. Videos explaining each of these periods are also available on the ICM registry website.

For assistance in placing a block request or for legal advice concerning the protection of your trademarks, please contact our office.


Amicable photo of Toni

Antoinette M. Tease, P.L.L.C.