California Intellectual Property Blog


Former NFL Star Shawne Merriman Takes on Nike Over Use of “Lights Out” Trademark

Closeup of American Football on FieldSan Diego – According to a complaint filed recently in U.S. District Court, former NFL player Shawne Merriman is suing Nike for its use of the phrase “Lights Out,” alleging trademark infringement and unfair competition. In the court filings, the standout linebacker details how he sought federal trademark protection of the phrase back in 2007 and how he has been using it since even before that.

Merriman claims that nickname came as a result of an incident in which he left four fellow players unconscious in one single play in a high school football game. Ever since that time and his subsequent earning of the nickname “Lights Out,” Merriman alleges that he employed it to his own commercial advantage, purposefully using it throughout his successful NFL career, naming a celebratory after-play dance after it and forming his own company, Lights Out Holdings LLC based on the moniker.

Indeed, documents on file with the United States Patent and Trademark Office (USPTO) show that the former Number 56 filed a trademark application in 2007 for “Lights Out” in two classes for ” Action figures; collectable toy figures; molded toy figures; play figures; toy figures” and “Promoting the goods and services of others through licensing of the identity, name, nickname, and image of a sports celebrity.” After going back and forth with the USPTO for over five years, the trademark was finally registered on November 13, 2012.

A quick search of Nike’s website shows the company’s use of “Lights Out,” on clothing and shoes, including baseball pants and soccer cleats. Though the athletic apparel and footwear giant has yet to take any formal action in response to the complaint, Merriman is demanding that it immediately cease all sales of goods branded with the name. He is also seeking unspecified damages.

Merriman played in the NFL for a total of seven seasons, from 2005 to 2012, and was a pro bowl selection for three of those years. He is mainly known for his standout performance as a linebacker for the San Diego Chargers, where he led the NFL in quarterback sacks in 2006 and recorded almost 40 sacks between 2005 and 2007. After a string of injuries, Merriman signed with the Buffalo Bills for a short period before he officially retired in March of 2013.


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