Is It Lights Out for Nike’s Lights Out Sports Apparel Line?

This past Monday, former NFL player Shawne Merriman, through his company, sued Nike for trademark infringement and unfair competition in federal court.   Merriman’s company holds two federal trademark registrations for “Lights Out,” with the first covering clothing apparel and the second covering athlete endorsement and promotion of another’s goods and/or services through licensing the athlete’s name and likeness.

The registration will certainly create advantages for Merriman’s company.  Primarily creating a presumption of ownership and validity.   Despite the registration, however, it’ll still be critical for Merriman’s company to demonstrate that consumers know and associate Lights Out with Shawne Merriman the athlete.  Because to function as a trademark, the words, logo or combination of both have to identify a particular source of goods or distinguish competing goods from one another.  And based on the complaint allegations, Merriman’s had the nickname Lights Out since high school through his NFL playing days, and equally important, his company appears to use Lights Out in commerce on clothing apparel.  The critical questions are how Nike is using Lights Out in connection with its sports apparel and whether such use, is likely to cause customer confusion whether Shawne Merriman is associated and/or endorses this particular line.

The complaint is somewhat vague in how Nike uses Lights Out in its sports apparel line.  And in my brief research I didn’t find much other than third party reference to Nike’s Lights Out sports apparel line.  Even the images that were generated through Google didn’t show the words or slogan Lights Out on the sports apparel itself.  However from a product page on Nike’s website, it appears that Nike is indeed using the words to identify and distinguish a particular line of sports apparel.

Nike Image

Because if the use was merely an inference drawn from the chosen color scheme for the sports apparel (black on black or black with vivid neon green), good luck with that.  Or if Nike was using the words as merely an ornamental or decorative feature of the particular sports apparel product, then arguably Lights Out is not being used a trademark, and there’s no trademark infringement.  But based on the website snapshot it appears that Nike is using Lights Out to function as a trademark by carving out a particular sports apparel line.

The second issue is whether Nike’s use of “Lights Out,” is likely to cause customer confusion whether Shawne Merriman is associated and/or endorses this particular line.  And despite the presumptions created by the federal trademark registration, it’ll still be critical for Merriman’s company to show that consumers associate Lights Out with Merriman the athlete.  And as Merriman’s company’s lawyer astutely points out, Nike has a long and well known history of creating athletic sports apparel lines using an athlete’s name or nickname.

It’ll be interesting to see how this case develops, and how Nike chooses to defend the case or whether there’s a quick settlement.  And this topic is an excellent segue into a series of posts that will be featured on The Legal Supplement over the next few weeks.  Athletes seeking to monetize his or her name and likeness through athlete endorsement deals, and looking at the legal mechanics in how this is accomplished through licensing agreements.



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