Former NFL player Shawne Merriman’s company sued the Vermont Teddy Bear Company over the trademark “Lights Out” last week.
Mr. Merriman’s use of the mark goes back to high school where he earned the nickname after knocking 4 players unconscious during the first half of a football 
game. Query whether such a nickname would arise in the more health conscious environment of football today. The changing views of concussions suffered by football players was recently told in the superbly acted Concussion starring Will Smith as real-life Dr. Bennet Omalue. But, I digress.
The Lights Out nickname stuck with Mr. Merriman when he went to play for the San Diego Chargers. He earned the title of “NFL Defensive Rookie of the Year” and played in the Pro Bowl in Hawaii.
The savvy businessman decided to solidify his Lights Out brand for use even after his glory days in the NFL by forming the company Lights Out Holdings, LLC. He then obtained a federal registration for the Lights Out mark in 2004 for use with “clothing for men, women and children, namely, bottoms, boxer shorts, caps, hats, headwear, night wear, shirts, shorts, sleepwear, t-shirts, and underwear.” According to the Complaint, the company’s products have enjoyed substantial success.
If your child, niece or nephew, owns a teddy bear, there is a good chance it was produced by the Vermont Teddy Bear Company. The company purportedly produces close to 500,000 teddy bears each year that it sells by mail order and over the internet.
For those of you who follow the stock market closely, you may recall that the company used to be traded on the NASDAQ stock exchange under the ticker symbol BEAR, but was later taken private in 2005. Vermont Teddy Bear is no stranger to IP disputes having sued Walt Disney Co. for infringement of its trademark mail-order “Bear Gram” ideas and logo.
In the current lawsuit, Mr. Merriman’s company alleges that the Vermont Teddy Bear Company is using the Lights Out mark for its products, including pajamas. These pajamas are sold online at stores like Walmart for example.
Mr. Merriman’s company sent a cease and desist letter to the Vermont Teddy Bear Company asking them to quit using the mark with its pajamas. The company refused to abandon use of the Lights Out mark. This caused Mr. Merriman to file a lawsuit against the company alleging trademark infringement, unfair competition, false endorsement and violation of the right of publicity.
Will it be “lights out” for the teddy bear company’s use of the mark? Only time will tell.