You may know about Shawne Merriman, the former standout linebacker for the San Diego Chargers. You may even know that Mr. Merriman's nickname is "Lights Out," which he earned while playing high school football due to his ability to deliver big hits on the gridiron. But you likely don't know that Merriman has developed his nickname into a brand owned by his company, Lights Out Holdings, LLC. The company owns several federal registrations of the mark "Lights Out," along with over a dozen pending applications at various stages of the registration process.
So, it is clear that Merriman understands the importance of protecting his brand through registration. It is also clear that he isn't afraid to defend his rights. Back in April of 2014, he sued Nike, Inc. for (among other things) infringement of the "Lights Out" mark after Nike allegedly used the mark on clothing, despite allegedly knowing the mark belonged to Merriman as a result of previous negotiations between the parties. That suit is ongoing. On Tuesday, April 5, 2016, Merriman filed a new suit against a new foe: The Vermont Teddy Bear Company, Inc. You can check out the complaint here.
Apparently, The Vermont Teddy Bear Company came out with a line of cute and cuddly "Lights Out" pajamas in early 2015. It seems doubtful to me that they intended the same concussion-inducing, consciousness-losing connotations for the phrase "Lights Out" that Mr. Merriman came to be known for but, hey, I'm not a marketer, so what do I know?
In both suits, Merriman and his company allege trademark infringement, unfair competition, false endorsement, and violation of Merriman's right of publicity. To achieve success short of settlement, Merriman will have to prove three elements to recover damages on his infringement claim: (1) that he has a valid, protectable trademark; (2) that there is ownership of the trademark; and (3) that the allegedly offending parties are using the mark without consent in a manner likely to cause confusion among ordinary consumers as to the source, sponsorship, affiliation, or approval of the goods being sold.
Merriman shouldn't have any trouble with the first two elements given his registrations. So, as these things often do, the question comes down to the third element. Time will tell if a jury will decide that there is a likelihood of confusion between Merriman's trademarks and Nike's use or The Vermont Teddy Bear's use. If either case gets that far, I'll report back on the ultimate result.
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