Former San Diego Chargers player Shawne Merriman and his company Lights Out Holdings, LLC have moved for summary judgment against Nike, which it sued a year ago for trademark infringement and false endorsement in California Federal Court.
Merriman is seeking $18 million in statutory damages as well as Nike’s gross profits on the false endorsement claim, along with attorney’s fees.
In the underlying lawsuit, Merriman claimed that in late 2006 he entered into negotiations with Nike to sell his LIGHTS OUT line of apparel. Negotiations between Merriman and Nike were unsuccessful, according to the complaint. Nevertheless, “Nike decided to use the LIGHTS OUT clothing brand anyway.”
Merriman alleged that he “earned” his “Lights Out” nickname in high school when he “knocked out four opposing players in one football game. 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 as a last resort, not only to protect my brand, but to protect other athletes who are trying to develop a brand.”
The LIGHTS OUT trademark registration covers a broad range of apparel, including “clothing for men, women and children, mainly, bottoms, boxer shorts, caps, hats, headwear, nightwear, shirts, shorts, sleepwear, sweatshirts, tank tops, tops, t-shirts, underwear,” according to Merriman. He added that because his 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.”
The Motion for Summary Judgment
Merriman, who is represented by Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC, sought summary judgment “based on undisputed facts” that were illustrated in his lawsuit.
His attorneys focused in particular the “likelihood of customer confusion” as a “determinative issue” in relation to his false endorsement claim.
“Merriman has a highly visible persona due to his time in the NFL and his subsequent television jobs and charitable works,” according to a press release. “He was also a prominent endorser of Nike’s products for a number of years. He is probably most recognizable to sports and athletic enthusiasts, which is the market Nike’s Lights Out targets, according to the filing. ‘Under the law of false endorsement, likelihood of customer confusion is the determinative issue’”
The motion also noted that Nike’s actions “were willful, and done despite expressly deciding not to obtain rights to the Lights Out® trademark from Merriman.” The motion describes Nike’s actions as “blatant counterfeiting.”
Merriman played for the Chargers from 2005 to 2010, even filming commercials for Nike in that time.
