For trademark owners outside of the adult entertainment industry, the availability of the new .xxx top-level domain presents a concern. You have spent time and money building your brand, and probably don’t want a company to start using YourBrand.xxx to provide pornographic materials.

Now until October 28, 2011 (the “Sunrise B” period), all registered trademark owners can preemptively block a company from using its trademarks in connection with a .xxx domain name registration. You can block registration of a domain matching your trademark by submitting an application for the same domain name, assuming that no competing qualified application for the same domain name is filed by a verified member of the adult entertainment industry. The application fee is about $200, and blocks the domain from registration for a term of 10 years. Once the application is approved, the domain name registrar will show up as the owner of the site (rather than your company), so your company will not be shown as the owner of a .xxx site.

To be eligible, the registered trademark associated with request to block a .xxx domain name registration must be issued prior to September 1, 2011. Further, the domain name sought must correspond to the entire text of a word or stylized trademark provided that the textual component has not been disclaimed or excluded from the registration.

In the event a trademark owner misses (or is ineligible for) the Sunrise B Period, it may submit a .xxx reservation request once the general availability period opens on December 6, 2011. At that time, though, it will be competing against the general public for the domain name.

We are highly recommending that owners of federally-registered trademarks use the Sunrise B to protect their brands against potential .xxx registrations. It is much easier to block these names now than to engage in a legal fight later. Companies with large portfolios of trademarks may wish to pick and choose the .xxx names to block, but companies with a few key marks should consider blocking all of them.

If you would like assistance in identifying eligible trademarks during the Sunrise Period or assistance in making these applications, please contact Brooke Johnson at 253.620.6499 or bjohnson@gth-law.com.