Law Uncategorized

Shawne Merriman Battles Nike Over "Lights Out" Trademark

The former NFL linebacker sued the sports apparel powerhouse for alleged trademark violations, but can he win?

(Kevin Hoffman/USA TODAY Sports)
(Kevin Hoffman/USA TODAY Sports)

Shawne Merriman and his company, Lights Out Holdings LLC, filed suit in California Federal Court seeking an injunction and up to $2 million per item against Nike for their new “Lights Out” clothing line.

The former NFL linebacker turned WWE superstar got the nickname “Lights Out” for the knockout hits he would deliver on the football field and currently sells apparel with the tag “Lights Out” on his official website.

In the suit, Merriman alleges that he and Nike entered into talks in late 2006 for a “Lights Out” clothing line, but after negotiations fell apart Nike released the clothing line anyway.

It’s hard to believe Nike’s in-house counsel would be surprised by the lawsuit given their previous negotiations with Merriman and instead took the calculated risk to release the clothing line believing they could easily quash or settle a suit from Merriman and his legal team.

Trademark Protection

Trademarks are phrases, logos, words, symbols, designs or any combination thereof used to identify and distinguish the source of the goods of one party from those of others. Owners of trademarks have the exclusive right to use the mark in the course of business but must have a bona fide use in commerce to be protected.

In order to be protected, a trademark must be distinctive and not merely descriptive. In other words, it must be used to differentiate your goods, products or services from another and not simply a description of your product.

Merriman’s “Lights Out” trademark was approved in 2011. The US Patent and Trademark Office listing can be found here.  Lights Out Holdings LLC also trademarked the term “Sack or Die” and “This Swag’s For You.”

Shaky Legal Grounds

Items under the Nike line do not include the words or phrase “Lights Out” anywhere on the clothing – only the famous Nike swoosh adorns the apparel.  “Lights Out” appears to simply be a term used to describe a Nike product, not distinguish it.

If the phrase “Lights Out” is not present anywhere on the clothing, is Merriman’s trademark even being challenged in this case?  His trademark prevents anyone from using “Lights Out” on football or sporting equipment, and Nike never did that with the clothing line.

My guess is that Merriman’s legal team doesn’t truly expect to win against Nike’s top-class lawyers, but is instead stretching for pennies on any sort of settlement–a possible but not probable outcome.

With Merriman’s football career over and his wishful wrestling career just beginning, pennies will do just fine.

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