Former NFL linebacker Shawne Merriman is suing Nike for trademark infringement and unfair competition over its Lights Out apparel line, according to a lawsuit filed in U.S. District Court in San Diego.
According to a press release, the former San Diego Chargers player is alleging unfair competition and trademark infringement of his LIGHTS OUT brand, which has been synonymous with Merriman his entire career. The suit was filed by his company, Lights Out Holdings, LLC in California Federal Court and demands immediate injunctive relief to stop Nike’s actions, and millions of dollars of damages including “statutory damages of up to $2 million per content mark per type of goods or services sold, offered for sale or distribution . . .” as noted in the complaint.
“I earned my ‘Lights Out’ nickname in high school when I knocked out four opposing players in one football game,” said Merriman. “I made things official by securing the federal rights to my LIGHTS OUT trademark and have been using it ever since. I am suing Nike, not only to protect my brand, but to protect other athletes who are trying to develop a brand after their professional career, like myself.
The LIGHTS OUT trademark registration covers a broad range of apparel: “clothing for men, women and children, mainly, bottoms, boxer shorts, caps, hats, headwear, nightwear, shirts, shorts, sleepwear, sweatshirts, tank tops, tops, t-shirts, underwear.” Because Merriman’s company has had rights in the LIGHTS OUT mark for so long, the trademark has been deemed incontestable by the U.S. Patent and Trademark Office
In late 2006 or 2007, according to the lawsuit, Nike entered into negotiations with Merriman for a LIGHTS OUT line of apparel. Negotiations between Merriman and Nike were unsuccessful but, according to the complaint, “after these discussions Nike decided to use the LIGHTS OUT clothing brand anyway.
The suit demands a preliminary and permanent injunction from trademark infringement and related unfair business practices by Nike in addition to a damages amount to be determined at trial, disgorgement of Nike’s profits and treble damages for willful infringement.
Nike hasn't responded to the lawsuit.