Lights Out for Nike, Trademark Holder Says

SAN DIEGO (CN) - Nike knowingly infringed upon a clothing brand founded by former NFL star Shawne Merriman, Lights Out Holdings claims in Federal Court.

Lights Out Holdings sued Nike; they are the only parties to the lawsuit.

Merriman, who retired from the NFL in 2013, acquired the U.S. Registration for his "Lights Out" brand of clothing in 2007. Merriman assigned those rights to Lights Out Holdings.

Lights Out Holdings claims the registration became incontestable on Sept. 15, 2010. Lights Out apparel is sold at Wal-Mart and ShawneMerriman.com.

Lights Out Holdings claims Nike entered into negotiations with Merriman in 2006 or 2007 about a Lights Out apparel line. The negotiations were unsuccessful, but Nike used the Lights Out brand anyway, the plaintiffs say.

"Nike uses the Lights Out mark for the Lights Out apparel line that distinguishes the clothing from other clothing lines and brands, and indeed has attained substantial success as a result of the powerful trademark," the complaint states. "The clothing includes a wide variety of target markets, including general sports apparel, football products (e.g. jerseys), and baseball apparel, all of which plays off of the goodwill associated with the Lights Out mark.

"Nike knew that the Lights Out mark belonged to Shawne Merriman, and on information and belief was aware of the '212 Registration specifically protecting the mark for a broad array of apparel. Nike's adoption of the Lights Out mark for use with apparel was intentional and a knowing violations of Lights Out's valuable rights. Nike has made substantial sales of the Lights Out apparel since it began its infringement.

"Immediately after Lights Out saw that Nike was using its Lights Out mark, Lights Out contacted Nike.

"When Lights Out demanded that Nike cease and desist use of the Lights Out mark in December 2013, Nike refused to acknowledge that its conduct was infringing, and instead has continued selling the Light [sic] Out apparel up to the present. Despite repeated efforts to negotiate a resolution without litigation, Nike has refused to acknowledge its substantial infringement of the Lights Out brand."

Lights Out Holdings seeks a ruling prohibiting Nike from further infringement and punitive damages for trademark infringement and statutory and common law unfair competition. Lights Out Holdings is represented by Benjamin L. Wagner of Mintz Levin Cohn Ferris Glovsky Popeo.

Merriman, a linebacker, earned the nickname "Lights Out" after knocking four opposing players unconscious in one half during a high school football game. After starring at the University of Maryland, Merriman joined the Chargers and earned Defensive Rookie of the Year honors after the 2005 season. Recently, Merriman joined World Wrestling Entertainment, according to the Baltimore Sun.

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