As you may recall, we advised clients some months ago that the Internet Corporation for Assigned Names and Numbers (also known as ICANN) established a top-level domain (.xxx) for the adult entertainment industry. This new domain will be overseen and administered by the ICM Registry.

Owners of federally registered trademarks (marks listed on the principal register with the U.S. Patent and Trademark Office on or before September 1, 2011) only have until this Friday, October 28, 2011, to block their trademark from being utilized with the .xxx domain.

For a fee of roughly $300-$400, owners of registered trademarks can block their trademark from being utilized as an .xxx domain for 10 years. For example, a contractor with the registered trademarks of “Serious” or “Handyman Hal” in regard to the home improvement and remodeling industry can prevent a member of the adult entertainment industry from registering www.serious.xxx or www.handymanhal.xxx.

Of course, should a contractor or manufacturer otherwise find their registered trade name utilized under an .xxx domain in the future, they would still be able to consider an anti-cyber squatting or trademark infringement claim under various federal and state laws. But if there is a potential risk, however small, of the existing trademark being utilized in the adult entertainment industry under an .xxx domain, the ability to inexpensively block that possibility from occurring for the next 10 years seems like a much more favorable cost-benefit analysis for a business to undertake now.
If you would like Berenson LLP to protect your portfolio of trademarks from the .xxx registrations, please make sure to contact us as soon as possible.