Ex-San Diego Chargers linebacker Shawne Merriman is suing Nike for trademark infringement in federal court in California. The former NFL star and Nike reached a contract impasse in 2006 when they tried to negotiate the terms for a line of apparel featuring “Lights Out” on the products. Merriman was nicknamed “Lights Out” after knocking four players from an opposing team out unconscious during a single game.
Merriman filed the suit in U.S. District Court in April accusing Nike of trademark infringement and unfair business practices after Nike began using “Lights Out” on a line of baseball apparel and shoes.
Merriman claimed that he registered the trademark “LIGHTS OUT,” and that by selling the baseball gear, Nike is infringing on that trademark. Merriman is also pointing to his “on-going use” of his “LIGHTS OUT” trademark registration. He points to February 2014, when he announced a partnership with a company called Lights Out Disposal as a spokesperson for the waste recycling company.
However, Nike claims that all Merriman bought was an old, unrelated trademark in the category of “loungewear and intimate apparel for women.” Nike says that Merriman has also abandoned his rights to the trademark because it hasn’t been used to sell intimate women’s apparel since Merriman bought the mark from prior owner Loomworks in 2007. Nike’s pleading also calls Merriman’s purchase of the Loomworks mark “false or fraudulent.”
While all of the facts in this case are not yet public, there are several lessons to be learned from the initial stages of the Merriman case:
- First, it is crucial for athletes (and businesses in general) to have experienced legal representation when negotiating major contracts with global companies. Merriman’s contract negotiations with Nike over the “Lights Out” product line broke down at some point in 2006 or 2007. It is possible tht, had Merriman’s counsel been more sophisticated in dealing with the Nikes of the world, Merriman may have been able to strike a similar deal on better terms with Nike or another apparel company.
- Second, it is crucial that businesses retain competent business and intellectual property counsel in any trademark registration. Trademark registrations are only valuable in the relevant categories in which they are registered. Here, it appears that Merriman bought an old mark covering the category of women’s underwear, and is now attempting to claim that the registration should cover Nike’s baseball shoes. It is possible tht, had he retained experienced IP counsel, who would have registered the mark in the appropriate categories, this could have been avoided.
- On-going use of any registered trademark is crucial. Here, it would appear that after Merriman bought the Loomworks mark, he did not continue using and defending that mark in connection with the registration. Again, it is important for businesses to consult with experienced IP counsel to avoid these kinds of lapses, or assist in taking steps to help demonstrate a clear pattern of on-going use of the mark. Trademarks are a “use it or lose it” situation, and this is a good example of Merriman’s potential to lose rights for not using a mark.
With more than 25 years of experience representing professional athletes, and individuals and businesses in the areas of sports law, intellectual property, and business litigation, James J. “Jim” Thomas II is recognized as an expert across Georgia. If you or your business needs assistance in sports law, intellectual property, business ventures, handling complex business litigation, or in the analysis, evaluation, and resolution of existing and potential litigation in sports law or intellectual property cases, give Jim a call at 404-869-5248, email him today to set up a consultation, or visit www.litigationatlanta.com online.