Although the intent of the .XXX top-level domain is for it to be used in the adult context, brands not in this space may wish to protect their image by proactively registering a .XXX domain containing their registered trademarks. The new top-level domain .XXX will become available to the adult community starting on November 8th, 2011 and then open to the general public on December 6, 2011.  The ICM Registry, sponsor of the .XXX top-level domain, is giving registered trademark owners a special window of time (open now until October 28, 2011) to reserve domains ending in .XXX which contain their registered trademark.  Such special registration will protect registered .XXX domains from falling into the hands of a third party.

An applicant wishing to protect its rights in this reserved window must submit a reservation request with ICM corresponding to its trademark before October 28, 2011.  Registration through GoDaddy costs approximately $200 and requires a trademark owner to apply for registration by filling out a form online.  Only registered trademarks having registration dates before September 1, 2011 and still in full force and effect qualify for this special domain registration.  Further, the trademark registration must be issued as a national registration in a respective country, not simply a pending national trademark application or a State trademark registration. For example, an applicant with a United States trademark registration issued before September 1, 2011 that is still in full force and effect may seek protection under this reserved window.

After December 6, 2011, any registered .XXX domain through this early registration process will resolve to a standard informational page reflecting the status of the domain as reserved.

If trademark owners do not register a .XXX domain in this special window of time, any available .XXX domain will be allocated to members of the adult community submitting a request.  Then, starting on December 6, 2011, registration opens to the general public and anyone, whether in the adult community or otherwise, may register these domains.  Although trademark owners may be able to obtain domains registered using their trademark after this special registration window, it may be a more involved path than taking advantage of this reservation process prior to October 28, 2011.

For more information about protecting your brand on the Internet, please contact info@theiceloop.com.

On Friday, March 18, 2010, the World Intellectual Property Organization (WIPO) published statistics comparing 2009 trademark filings under WIPO’s Madrid System for the International Registration of Marks (Madrid) to filings made in 2008. In total, and as noted in the WIPO article available HERE, Madrid filings decreased 16 percent in 2009, with several countries reporting double-digit decreases. For example, countries in the top 40 by total number of filings such as (in order by number) Germany, Benelux, Italy, Spain, Denmark, the Czech Republic, Sweden, Portugal, Latvia, Liechtenstein, Greece, Lithuania, Belarus, Monaco, and Romania all had more than 20 percent fewer filings, with Portugal having the largest percentage decrease at 60.8 percent. A number of countries had more Madrid filings in 2009 as compared to 2008, such as (in order of total number of filings) the European Union (3.1 percent), Japan (2.7 percent), the Republic of Korea (33.9 percent), Hungary (14.5 percent), Croatia (17.5 percent), and Singapore (20.5 percent). The United States filed 13.1 percent fewer applications in 2009 than in 2008. Complete statistical data for the top 40 2009 filing countries dating back to 2005 are available at the link referenced above.

On April 19-22, 2010, the World Intellectual Property Organization (WIPO) will be hosting its Twenty-Third Session of the “Standing Committee on the Law of Trademarks, Industrial Designs, and Geographical Indications” in Geneva, Switzerland. This meeting (WIPO meeting link HERE), will cover several topics, including “Grounds for Refusal of All Types of Marks,” “Technical and Procedural Aspects Relating to the Registration of Certification and Collective Marks,” “Draft Questionnaire Concerning the Protection of Names of States Against Registration and Use as Trademarks,” and “Possible Areas of Convergence in Industrial Design Law and Practice,” with materials currently available in PDF format for each topic on the WIPO link above. For example, the documentation in connection with the Grounds for Refusal references 16 individual reasons, including signs not constituting a trademark, lack of distinctiveness, descriptiveness, genericness, functionality, public order and morality, and deceptiveness, to name a few. A formal draft agenda (PDF link HERE) is also available, noting the topics to date and the order in which they will be presented.