It May Be “Lights Out” For Merriman’s Lawsuit Against Nike
On Friday, January 8, 2016, Nike, Inc. filed a motion for summary judgment, seeking to put to end to former NFL linebacker Shawne Merriman’s trademark infringement lawsuit.
Merriman filed the suit in April 2014, alleging that he is known as “Lights Out,” and that Nike has infringed on his trademark by selling their “lights out” product line because customers will mistakenly believe Merriman has endorsed it. Merriman stated: “After I was given the nickname “Lights Out” in high school, I decided to create a brand while I was at the University of Maryland. From 2002-2005 I sold approximately 2000 t-shirts printed with the “Lights Out” logo and the money helped pay my way through college. I’ve carefully grown and developed that brand ever since, but Nike still insists on using it.”
Merriman registered the nickname in 2007, and in 2010 it achieved incontestable status that affords the highest trademark protection under federal law. According to the suit, although Nike and Merriman unsuccessfully negotiated to create a “Lights Out” apparel line in 2006, Nike used the name anyway. Merriman was endorsed by Nike during his playing career and appeared in numerous commercials for the brand, most notably Nike’s “Leave Nothing” campaign.
Nike is now asking the California federal court to grant summary judgment in their favor. According to Nike’s motion, Nike customers only see the words “lights out” as a style name, and not prominently displayed in stores. If the customers never saw the words, Nike argues, they could not possibly be confused. Further, Nike argues that surveys prove very few customers recognize “lights out” as a nickname for Merriman. Additionally, Nike contends that their use of “lights out” was “fair use,” because it was “primary descriptive” and used in “good faith.”