We not only believe that “branding” is not an obsolete concept in the digital age; it’s actually more important and relevant than ever, whether we're talking about brand guardianship via social media or building complete and positive online customer experiences that align with your brand.

But now there’s another interesting, if regrettable, opportunity for marketers to act to protect their company trademarks in the digital age. (Thanks to Brian Gregg and his colleagues at our local intellectual property firm, McNees Wallace & Nurick LLC, for bringing this to our attention in their latest issue of Intellectual Property News, from which I am borrowing heavily in this post. Don’t take this post or the MWN newsletter as specific legal advice.)  

As of September 7, 2011 the Internet Corporation for Assigned Names and Numbers (ICANN) will begin offering .xxx domain registrations. While the intent is to reduce malware, SPAM, and intellectual property infringement, this development also represents an opportunity for your company’s trademarks to become associated with an .xxx domain and website.  

Fortunately, there is something you can do, but only if you act quickly. There is an opt-out period (called Sunrise B) for owners of registered trademarks who do not want their trademarks to appear in an .xxx domain owned by a third party. The opt-out period runs from September 7 to October 28, 2011. After the opt-out period ends, you won’t be able to block the purchase by third parties of .xxx domains which contain your trademarks.

Note that this only applies to federally registered trademarks as of September 1, 2011 and does not pertain to state registrations, common law marks, unregistered marks, business names, or other domains. And it won’t allow you to block similar marks, only your exact marks. Oh, and there is a fee, expected to be between $200-$300, to block each .xxx domain and that protection would protect your trademark for up to 10 years. Good grief!

You can get more information by visiting ICM Registry's Sunrise B page.

And, in the great tradition of “if you can’t beat ‘em, buy ‘em”, the next best way to prevent a third party from registering a name that’s important to you is to do it yourself, defensively. As counter to your corporate values as it may be, owning the .xxx domain for your trademarks or terms likely to be confused with your trademarks may be the best defense against abuse of your trademarks.

While this may be more of a concern to B2C companies, you need to decide for yourself whether to worry about your B2B trademarks taking a walk on the wild side. Or at least make sure that your IP attorneys are all over this. Now!