Recently, former San Diego Chargers and Buffalo Bills linebacker, Shawne Merriman, and his company, Lights Out Holdings, LLC, moved for summary judgment in their fight to prohibit Nike from using or associating with Merriman’s nickname, “Lights Out.” In the motion, Merriman seeks up to $18 million in statutory damages, in addition to attorneys’ fees and all gross profits obtained from Nike’s use of the slogan.
For those unfamiliar with the dispute, Merriman announced his plans to sue the global athletic apparel conglomerate in April 2014, stating the company’s use of his moniker constituted false endorsement under the Lanham Act – the United States federal trademark statute, which prohibits, among other things, the use of any symbol or device that is likely to deceive consumers as to the association, sponsorship, or approval of the goods or services by another person. Specifically, Merriman’s lawsuit alleged that Nike, through the creation of its ‘Lights Out’ apparel line, falsely associated itself with the ex-football player and created a likelihood of consumer confusion regarding Merriman’s endorsement of the goods in the marketplace. At the time of filing the lawsuit, Merriman stated the following:
“I earned my ‘Lights Out’ nickname in high school when I knocked out four opposing players in one football game. I made things official by securing the federal rights to my LIGHTS OUT trademark and have been using it ever since. I am suing Nike as a last resort, not only to protect my brand, but to protect other athletes who are trying to develop a brand.”
As an athlete, it is important to protect any rights – whether it be a right of publicity, trademark, copyright, or any other similar intellectually property right – the athlete may develop throughout his or her career. Looking specifically at trademarks, not only does applying for and achieving registration provide an additional stream of revenue during a playing career, but it also sets the athlete up with professional opportunities off the field once the play clock has officially hit zero through the establishment of licensing agreements granting third parties customizable use of the athlete’s right. The first step to protection is ensuring you have a mark worth protecting; in order to prevail on a Lanham Act claim, one must show that the trademark is valid and protectable, and that the other party’s use of a substantially similar, if not identical, imitation is likely to cause consumer confusion.
It is rather difficult at times to determine whether one’s mark is protectable under the Lanham Act, as the mark must be inherently descriptive or been afforded ‘secondary meaning’ in the eyes of consumers in order to receive protection. Additionally, the word or phrase to be trademarked must be available prior to being registered with the United States Patent and Trademark Office (USPTO). As a preliminary examination, it is best to seek out a seasoned intellectual property law firm, such as HEITNER LEGAL, to conduct a search on all applicable databases and provide analysis regarding the inherent descriptiveness of the mark. Once completed, only time stands between the athlete achieving full protection and registering his or her mark with the USPTO.