Taking down quarterbacks to sportswear giants: trade mark dispute “kicks off” between former NFL pla

Article written by: Penny Catley    |   Thursday 24th April 2014

Another trade mark dispute has “kicked-off” in the world of celebrity catchphrases:

Last week Shawne Merriman, former NFL line-backer for the San Diego Chargers, filed a lawsuit in the United States against global sportswear giant Nike (Lights Out Holdings, LLC v. Nike, Inc., 3:2014 cv00872). Merriman earned the moniker “LIGHTS OUT” during high school when he purportedly knocked out four players on the opposing team in one game.  The lawsuit alleges that Nike entered into negotiations with Merriman for a LIGHTS OUT-branded clothing line. After negotiations stalled, Nike went ahead and apparently launched a line of LIGHTS OUT apparel.

In 2007, Merriman had diligently filed a federal trade mark application in the United States to register the mark LIGHTS OUT. The mark was registered in 2009 in respect of various goods including footballs, sporting goods, clothing and sports memorabilia.

Merriman is now suing Nike for trade mark infringement and unfair competition, seeking an injunction and statutory damages of up to US$2 million per item. In a statement, Merriman admitted to suing Nike “as a last resort, not only to protect [his] brand, but to protect other athletes who are trying to develop a brand after their professional career.”

This case not only demonstrates the power of “celebrity” when it comes to effective branding and advertising; it also illustrates the basic premise that securing registration of a trade mark is essential  to protect what has or is likely to become, in commercial terms, a lucrative badge of origin.

As in New Zealand, proceedings for statutory trade mark infringement can only be brought by an owner of a registered trade mark. While various protection mechanisms are available to owners of unregistered trade marks, the “trade mark registration”, to use a Super Bowl analogy, is the “Vince Lombardi Trophy” of trade mark security – something that all trade mark owners should aspire to. Only a registered trade mark owner has the exclusive right to use, sell or authorise others to use that mark for certain registered goods within the country of registration.

The Merriman case also demonstrates the importance of keeping ideas and brand strategies confidential during business planning and development. A balance needs to be struck between effectively communicating your “game-plan” and keeping the risk of IP theft to a minimum. The importance of establishing IP ownership parameters from the outset is also significant when approaching potential investors or sponsors. 

Nike is yet to comment on Merriman’s lawsuit, so we shall have to wait and see if its defence is as strong as an NFL line-backer’s.
In the meantime, talk to Baldwins’ trade mark experts for support getting you off the bench and onto the IP playing field.

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