Aliso Viejo, CA asked in Trademark, Intellectual Property and Copyright for California

Q: Is it okay to use another company's trademark in my domain, if I'm discussing their product in my forum?

I'm thinking of making a Bionicle discussion forum at the domain bionicleforum.com. I'm concerned that could open me up to a lawsuit from Lego who owns the Bionicle trademark. I'd like to know what you think.

2 Lawyer Answers
Robert P. Cogan
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Answered
  • Trademarks Lawyer
  • San Diego, CA
  • Licensed in California

A: I have no knowledge of whether Lego would sue. It is possible that they could feel that you are creating a false association of the discussion form with Lego. They might also feel that you are creating a likelihood of confusion as to the source of the forum and could argue that this is a classic case of infringement. They could come down on you like a ton of Lego blocks. Using bionicleforum.com probably does not make it clear that this is a third-party forum talking about a Lego product. It does not seem like "truth in advertising."

Adam W. Bell agrees with this answer

James L. Arrasmith
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Answered
  • Sacramento, CA
  • Licensed in California

A: In California, as in other jurisdictions, using another company's trademark in a domain name can be considered trademark infringement, especially if it causes confusion or suggests an affiliation with the trademark owner that doesn't exist. Even if you're only discussing the product, using their trademark in your domain can imply a false sense of endorsement or sponsorship.

There's a legal doctrine called "nominative fair use" that allows you to use a trademark to refer to the genuine product, but it's a defense, meaning you'd assert it in response to a claim of infringement. Using "Bionicle" in your domain might attract legal attention from Lego. To mitigate risk, consider a more generic domain name or clearly disclaim any association with Lego on your site. Nonetheless, it's wise to consult directly with an attorney before proceeding to ensure you fully understand the potential legal implications and risks.

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