Welcome to the intellectual property blog for West & Associates. As experts working on the cutting edge of legal matters we will work diligently to provide the most current information available about Patent, Trademark and Copyright Licensing, Procurment (Prosecution) and Litigation. Additional information can always be accessed directly on the United States Patent & Trademark Office website (www.uspto.gov), the U.S. Copyright Office website (www.copyright.gov) or the website for West & Associates (www.westpatentlaw.com).


.XXX websites and affects upon Trademarks
September 7th started off a new issue for Trademarks in regards to .xxx adult websites.  As of this date, the Adult Industry can begin applying or preregistering .xxx domains; while a Trademark holder of a non-Adult Industry mark can begin to block their Trademark from becoming a .xxx domain.  How does this work, what is the timeline, and what does it cost?

Under this new law, there are three phases to the timeline.

Phase 1:

Sunrise Period - From September 7, 2011 until October 28, 2011.

Sunrise A applies to Adult Industry Members that wish to preregister a domain name under the new .xxx Top Level Domain (TLD) for any .com, .net, .biz etc. that they are currently using in order to protect their continued use.

Sunrise B applies to anyone that currently has a Trademark and wishes to block any .xxx from utilizing their trademarked name as a .xxx domain for 10 years.  If you do not act by October 28, 2011 to block an .xxx domain from scooping up your trademark, you may lose out completely.

Phase 2:

Land Rush Period: From November 6, 2011 – December 6, 2011.

The Land Rush Period is for the Adult Industry only.  This is the time for the Adult Industry to try and tie up any .xxx domains that have not been blocked or preregistered during the Sunrise A or Sunrise B periods.  No other individuals may lay claim to a .xxx domain during this time, unless they are in the Adult Industry.

Phase 3:

General Registration from December 6, 2011 onward.

During the General Registration time period, anyone may register any other .xxx domain name not already taken during the first two phases.  If you haven’t already preregistered or blocked a domain prior to this point in time, you have the lost the ability to block under Sunrise B, and it becomes a first come first serve registration for the remainder of .xxx domains.

Cost to Block:

The cost to block a Trademark from becoming a .xxx domain for 10 years ranges between $200 - $300.


Trademark Selection Guide:

Selection of a good trademark can be critical to the success of your product or service. You should spend time (for a few hours to several days) carefully selecting your trademark. You should take the following into consideration when selecting your mark:

Good Trademarks should be:

     • Unique

          o Dissimilar to other marks being used for the same goods or services

     • Evocative of an idea related to your goods or services

          o “Elephant” for computer memory—Elephants are alleged to have good memories and the product
              is memory. Thus, there is a subtle connection between the mark “Elephant” and the goods

     • An adjective

     • Words and/or graphics

          o If you include graphics, then your mark MUST be used with those graphics at all times, otherwise a
             new application may be required.

          o If you use words only, then you can change any associated graphics at any time, without the need to
             file any new applications.

Good Trademarks SHOULD NOT be:

     • Expressly descriptive of the goods or services

          o While possible, this triggers a special set of rules for examination and may cause problems in
             registering your trademark

     • The generic term to describe the goods or services—Generic terms are not registerable

          o For example: If I make shoes, I cannot register a trademark for “shoes”

     • A noun