Avoiding Unwanted "Adult-eration" of Trademarks as .xxx Domain Names
Basics of U.S. Patent Law

Avoiding Unwanted "Adult-eration" of Trademarks as .xxx Domain Names

Timothy J. Lockhart 

In March 2011 the Internet Corporation for Assigned Names and Numbers (ICANN) approved .xxx as a sponsored top-level domain (TLD) intended for use by members of the "adult entertainment industry"—purveyors of pornographic and other adult-oriented websites. On September 7, 2011, registrars for the new .xxx, or "dot triple x," domain-name registry began accepting both registrations for .xxx domain names and requests by trademark owners to reserve (in effect, block the registration of) .xxx names that include their marks.

Sunrise: What You Need to Know

The timeline for the rollout of the .xxx domain will include the "sunrise" stages common to launches of most new TLDs. The "Sunrise A" and "Sunrise B" stages opened on September 7 and, as presently scheduled, close on October 28. The Sunrise A stage will give members of the adult entertainment industry a "grandfather right" to register as .xxx domain names (1) the names they own in other TLDs such as .com or .net, and (2) trademarks in which they have verifiable rights.

Simultaneously, the Sunrise B stage will give trademark owners who are not members of the adult entertainment industry the opportunity to reserve names corresponding to their registered trademarks, thus providing the owners the opportunity to block their marks from being used by third parties in .xxx domain names. To take advantage of that blocking option, a trademark owner must have had a registration (in any country) for its mark prior to September 1, 2011.

Ineligible for reservation are marks that include the text ".xxx," marks that are the subject of pending applications (including Madrid applications), registrations on the U.S. Supplemental Register, "dead" registrations, and marks in which all of the textual portions have been disclaimed.

The textual portion of any eligible mark must exactly match (subject to certain character-transcription rules) that portion, or "label," of the domain name to the left of the .xxx label. In addition, the textual portion must be at least 3 but no more than 63 characters in length and must contain only the letters A-Z (case insensitive), the numbers 0-9, or hyphens (but no hyphens may be in the first or last character positions or in the third and fourth positions).

Sunrise B applicants will pay a non-refundable one-time fee for submitting each reservation request. The fee has not been publicly announced but reportedly will be approximately U.S. $200-$300 per mark. Any reservation granted will be permanent, subject to potential changes in the registry agreement and to the registry’s confirmation from time to time that the relevant trademark is still registered and therefore still eligible for reservation protection.

Owners of the same mark as used with different goods or services may submit separate reservation applications, but their application fees will not be refunded or apportioned. (All Sunrise B applications will be treated as having been submitted at the same time.) The publicly available WHOIS information for all reserved domain names will state only the name of the relevant registry, not the names of any of the trademark owners who requested reservation. A reservation of a .xxx domain name will not result in a registration for that name or give a trademark owner any additional rights (such as transfer rights) in the reserved name.

Applicants who compete for the same .xxx domain name during the Sunrise A period will have to bid against each other for that domain name. If a Sunrise B applicant seeks to block a .xxx domain name sought to be registered by a Sunrise A applicant, the Sunrise A applicant will receive the registration. However, the Sunrise A applicant will receive an Intellectual Property (IP) Claim with information about the Sunrise B applicant’s claimed trademark rights. Receipt of the IP Claim will prevent the Sunrise A applicant from alleging in any subsequent dispute between the parties that it did not have notice of the Sunrise B applicant’s rights.

Landrush and General Availability

Per the current schedule, members of the adult entertainment industry will be able to register .xxx domain names in the “Landrush” stage from November 8 to November 25 without having to meet the qualifications for registering during Sunrise A. First-come, first-served registration begins on December 6 (General Availability) when anyone may register a .xxx domain name, with members of the adult entertainment industry obtaining registrations that point to websites and other entities obtaining registrations that do not point to websites. General Availability will be the earliest opportunity for trademark owners that are not members of the adult entertainment industry to obtain non-resolving registrations of domain names that consist of typographical errors of their trademarks, their trademarks plus key terms (abcwidgets.xxx), or common-law marks.

Launch of the .xxx TLD

The British Internet company, ICM Registry, LLC, first proposed the .xxx TLD in 2000 and re-proposed it in 2004. Various advocacy groups opposed those proposals, and ICANN rejected the idea of a .xxx TLD three times before finally approving it this year. Although a number of registrars will be authorized to register .xxx domain names and to set their own prices for such registration, ICANN has appointed ICM Registry to launch the .xxx TLD.

Note: A longer form of this article appeared in the September 1, 2011, issue of the International Trademark Association’s INTA Bulletin.

Basics of U.S. Patent Law

Timothy J. Lockhart

When most people hear the term "intellectual property," they think of patents even though patents are only one of the four major types of intellectual property. (The others are copyrights, trade secrets, and trademarks.) However, patents are certainly a classical form of intellectual property—the U.S. Constitution mentions "securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries." Thomas Jefferson, an inventor himself, acted as a patent examiner while serving as U.S. Secretary of State.

What many people do not understand, however, is that a patent right is not the right to "practice"—basically, make, use, or sell—the patented invention but rather the right to exclude others from practicing it. Thus, one may own a patent on an invention but still not be able to practice that invention. For example, a person who has a patent on a computer chip might not be able to manufacture the chip if someone else has a patent covering an entire computer.

Unlike the other three forms of intellectual property, which do not have to be registered to exist, a patent exists only if it is granted by a national patent body. In the United States, that body is the Patent and Trademark Office (PTO) in Alexandria, Virginia. Under the international Patent Cooperation Treaty, a U.S. patent application may serve as the basis for obtaining patent protection in other countries that are parties to the treaty.

U.S. patent law, which is exclusively federal, recognizes three types of patents:

  • Utility patents, which protect inventions, including processes such as those performed by certain computer software or those constituting some business methods;

  • Design patents, which protect the ornamental design of a functional item; and

  • Plant patents, which protect certain types of invented or newly discovered plants.

Utility and design patents are by far the most common of the three types. The owner of an issued patent should give notice of those patent rights by using the patent number on or in connection with the patented invention or design, and the owner of a patent application should give notice by using "Patent Pending."

Only actual inventions are entitled to patent protection; abstract ideas, natural phenomena, and laws of nature are not. To qualify for protection by a U.S. patent, an invention must meet three criteria. The invention must be novel (new), useful, and non-obvious to someone having ordinary skill in the relevant "art" (the relevant technology or industry).

Under U.S. law, an invention is considered novel if it is not covered by "prior art" (earlier technology publicly disclosed in some way) and has not been on sale or otherwise publicly disclosed for more than one year. After more than a year of public disclosure, an inventor loses the ability to obtain a U.S. patent. However, in many other countries any significant public disclosure of an invention may preclude obtaining a patent on that invention.

In the United States, utility patents and plant patents last for 20 years from the application filing date, and design patents last for 14 years from the issuance date. Patents may not be renewed although they may be extended under certain circumstances. A patent application must be filed in the name of the individual inventor, but the inventor can and often does assign a pending patent application or an issued patent to another entity such as a company. Businesses with employees who may create work-related inventions should consider having their employees agree in advance to such assignments.

Because of the need to conduct a prior-art search before preparing an application, the complexity of the application itself (with highly technical drawings, specifications, and claims), and the lengthy process of prosecuting the application at the PTO, obtaining a utility patent is usually expensive, often $20,000 or more (and sometimes much more). Thus, businesspeople should keep in mind that simply because one may be able to obtain a patent does not mean it is necessarily cost-effective to do so.

An inventor or business considering applying for any type of patent protection should seek counsel from an experienced patent lawyer or agent authorized to file patent applications with the PTO. Likewise, an inventor or business considering licensing patent rights or engaging in litigation over such rights should consult a lawyer who has worked in those areas (for which no PTO authorization is required). One should note that lawyers experienced with patent applications are not always experienced with patent licensing or litigation and vice versa.

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