Included a “.com” in your trademark registration? It would seem like a tattoo obtained during a wild spring break, you’re stuck with it.
It’s just one of the trademark practices from the dot-com era that is tripping up trademark owners for the .xxx sunrise period.
Many trademarks include a “.com”. However, during the .XXX Sunrise, trademark owners cannot drop letters to obtain a domain. So, a trademark such as “example.com” is eligible for “examplecom.xxx” but not for “example.xxx”.
This policy goes against many other standards. For instance, the trademark industry, including the dispute policy, federal courts and the USPTO, long ago decided that for a trademark that included an extension, the extension was immaterial.
But under the rules for the .XXX sunrise, a trademark like “tm.com” is not eligible for “tm.xxx”. It would be eligible only for “tmcom.xxx”. Simply dropping the “.com” is not allowed.
However, there is solution for trademark owners. They can file an amendment 7 with the USPTO to have the “.com” removed from their trademark. There is still time to do this before the .xxx sunrise period ends.
The change will also benefit trademark owners in the up-coming ICANN trademark clearinghouse as well.