Tampa, Fla. – Douglas McDonald and Ty Giltinan, both Intellectual Property attorneys at Carlton Fields, authored an article “Could Your Trademark End Up as an Adult Website?” on www.TMCNet.com, an integrated marketing media company servicing niche markets within the communications and technology industries.
Their article discusses the risks that businesses could soon encounter with the newly created domain, .xxx, for use by the adult entertainment industry. McDonald and Giltinan say that there are chances that those adult websites securing their domains, could use the same trademark as a business, however when searched online, it would appear as a .xxx, rather than the businesses .com domain.
“The problem is that many non-adult-oriented businesses may not want their trademarks associated with such websites, which some may find offensive. Accordingly, the operator of the .xxx domain is providing a process to enable owners of federally registered trademarks to block others from registering those marks in the .xxx domain. This will prevent adult entertainment companies from associating their activities with prior-established trademarks used by non-adult-entertainment businesses.”
McDonald and Giltinan go on to share that businesses can take action to try and protect their trademarks. “There will be a brief period of fifty days, September 7, 2011 - October 28, 2011 (the “Sunrise B period”), during which the owners of those federally registered trademarks may submit an application to the domain operator, along with a fee of between $200-$300 per mark, to have that trademark blocked from being used in connection with the .xxx domain.”
If the applications are successfully completed, that domain name will be blocked for 10 years from any use in conjunction of the .xxx domain. McDonald and Giltinan point out that only domain names that exactly match the registered trademark are eligible for this kind of protection.
They also note that during the “Sunrise B period,” verified members of the adult entertainment industry can also apply for early registration of .xxx domain names. But as McDonald and Giltinan state, this is “provided those applicants currently possess either verifiable trademark rights in the term to be used with the .xxx domain or own exactly matching domain names in some other top level space, such as .com, .bus, .net, .us., etc.”
McDonald and Giltinan say that whatever action a business decides to take with respect to the new .xxx space will depend on a number of factors like:
- Asking yourself how important your marks are to your business
- Asking yourself how damaging it would be if an adult site were to start using a similar domain name in the .xxx space.