Former NFL Linebacker Looks to Put Teddy Bear Company’s “Lights Out” For Trademark Infringement
Shawne Merriman, former linebacker for the San Diego Chargers and Buffalo Bills, along with his company Lights Out Holdings, has filed a lawsuit in district court against The Vermont Teddy Bear Company. The suit alleges that the company has used Merriman’s “Lights out” trademark on certain products, including pajamas for adults and children as well as some of its teddy bears.
The complaint, filed in the Southern District of California, alleges trademark infringement, statutory and common law unfair competition, and false endorsement and violation of Merriman’s right of publicity. In terms of damages, Merriman is seeking treble damages, exemplary and punitive damages, statutory damages of up to $2 million, various costs, expenses, and fees, and a preliminary and permanent injunction from any trademark infringement, false endorsement, and unfair business practices by The Vermont Teddy Bear Company.
As explained in a recent Forbes article, in order to succeed on his trademark infringement claim Merriman will have to prove three elements: (1) he has to show that he has a valid, protectable trademark; (2) he has to prove that there is ownership as a trademark; and (3) he needs to demonstrate that the company used a mark similar to his without consent, and in a manner likely to cause confusion among consumers as to its source, sponsorship, affiliation, or approval of the goods. The first two elements should be easy for him to establish, for as the article points out, the U.S. Patent and Trademark Office has granted registration for the “Lights Out” trademark and Merriman has included his company, Lights Out Holding (which is the actual owner of the trademark), as a plaintiff in the case.
The greater challenge will be establishing the third element, specifically the second half. It could be a tough sell to convince the court that consumers will truly believe that Merriman, known for his vicious hits during his NFL playing career, is in some way affiliated with the selling of teddy bears and pajamas. His registration does encompass various clothing, including a specific coverage for night wear, but it still could be a stretch to think any real confusion will arise as a result of Vermont Teddy Bear’s use.
Merriman is no stranger to trademark infringement suits. Earlier this year, he settled an $18 million suit against Nike for their use of the name “Lights Out” in a line of clothing.
Given his willingness to pursue potential trademark infringers with the same relentless nature he used to pursue opposing quarterbacks, it would be wise for companies to think long and hard before using “Lights Out” on any of their products.