United States District Court Southern District of California

Case 3:17-cv-00194-JAH-NLS Document 7 Filed 02/24/17 PageID.
56 Page 1 of 14
1 Stephen D. Lucas (SBN: 074726)

Email: slucas@lucashaverkamp.com
2 LUCAS & HAVERKAMP LAW FIRM APC
9171 Towne Centre Drive, Suite 325
3 San Diego, CA 92122
Telephone: (858) 535-4000
4 Facsimile: (858) 535-4001
(Local Counsel)
5
Douglas A. Rettew (pro hac vice application in process)
6 Email: doug.rettew@finnegan.com
Anna B. Naydonov (pro hac vice application in process)
7 Email: anna.naydonov@finnegan.com
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
8 901 New York Avenue, NW
Washington, DC 20001-4413
9 Telephone: (202) 408-4427
Facsimile: (202) 408-4400
10
11 Attorneys for Defendant

UNDER ARMOUR, INC.
12
13 UNITED STATES DISTRICT COURT

14 SOUTHERN DISTRICT OF CALIFORNIA
15
16 LIGHTS OUT HOLDINGS, LLC., a Case No.: 17-cv-00194-JAH-NLS

California Limited Liability Company,
17 and SHAWNE MERRIMAN, an
individual UNDER ARMOUR, INC.S ANSWER
18 AND AFFIRMATIVE DEFENSES
19 Plaintiffs, DEMAND FOR JURY TRIAL
v.
20
21
UNDER ARMOUR, INC., a Maryland
22 corporation
23 Defendants.
24
25
26
27
28
1 17-cv-00194-JAH-NLS
UNDER ARMOUR, INC.S ANSWER AND AFFIRMATIVE DEFENSES
DEMAND FOR JURY TRIAL
Case 3:17-cv-00194-JAH-NLS Document 7 Filed 02/24/17 PageID.57 Page 2 of 14
1 Defendant Under Armour, Inc. (Under Armour), through its counsel, answers
2 Plaintiffs Lights Out Holdings, LLC (LOH) and Shawne Merrimans (Merriman)
3 (collectively Plaintiffs) Complaint as follows:
4 THE PARTIES
5 1. Under Armour is without knowledge or information sufficient to form a
6 belief as to the truth or falsity of the allegations of Paragraph 1 and, accordingly, denies
7 them.
9 belief as to the truth or falsity of the allegations of Paragraph 2 and, accordingly, denies
10 them.
11 3. Admitted.
12 4. Denied; many of the alleged actions discussed in the Complaint are not of
13 [Under Armour], its agents, and/or its licensees.
14 JURISDICTION AND VENUE
15 5. Under Armour admits that this Court has subject matter jurisdiction over
16 Plaintiffs federal claims. Under Armour denies any liability or wrongdoing and/or that
17 any relief to Plaintiffs is appropriate.
18 6. Under Armour admits that this Court has subject matter jurisdiction over
19 Plaintiffs federal claims. Under Armour denies any liability or wrongdoing and/or that
20 any relief to Plaintiffs is appropriate.
21 7. Under Armour admits that this Court has supplemental jurisdiction over
22 Plaintiffs state law claims. Under Armour denies any liability and that any relief to
23 Plaintiffs is appropriate.
24 8. For purposes of this litigation only, Under Armour admits that this Court
25 has personal jurisdiction over it in this case. Under Armour denies all allegations that it
26 engaged in trademark infringement, unfair competition, breach of contract, or any other
27 unlawful practices and that Plaintiffs are entitled to any damages or relief. Under
28 Armour is without knowledge or information sufficient to form a belief as to the truth
2 17-cv-00194-JAH-NLS
1 or falsity of the allegations of Paragraph 8 pertaining to the location of the alleged

2 protected intellectual property in this action and, accordingly, denies them. Except as
3 expressly admitted, Under Armour denies all other allegations of Paragraph 8.
4 9. For purposes of this litigation only, Under Armour admits that venue is
5 appropriate in this Court. As noted above, Under Armour denies liability and that any
6 relief to Plaintiffs is appropriate. Except as expressly admitted, Under Armour denies
7 the remaining allegations of Paragraph 9.
8 FACTUAL ALLEGATIONS
9 10. Under Armour admits that Shawne Merriman is a former San Diego
10 Charger NFL football player. Under Armour denies that Mr. Merriman owns and/or
11 created any nationally recognized brand.
13 belief as to the truth or falsity of the allegations of Paragraph 11 and, accordingly,
14 denies them.
15 12. Under Armour denies all allegations that the purported Lights Out
16 nickname has national or international prominence, or that it is readily associated
17 with Shawne Merriman or his alleged career. Under Armour is without knowledge or
18 information sufficient to form a belief as to the truth or falsity of the remaining
19 allegations of Paragraph 12 and, accordingly, denies them.
20 13. Under Armour denies the allegation that Plaintiffs acquired any valid
21 trademark rights in the phrase Lights Out in 2007. Under Armour is without
22 knowledge or information sufficient to form a belief as to the truth or falsity of the
23 remaining allegations of Paragraph 13 and, accordingly, denies them.
24 14. Under Armour admits that, according to the U.S. Patent and Trademark
25 Offices (PTO) online records, on July 31, 2007, Loomworks Apparel, Inc. recorded
26 a purported assignment of Registration No. 2885212 to Shawne Merriman. Under
27 Armour also admits that, according to the PTO online records, on January 29, 2008,
28 Merriman recorded a purported assignment of Registration No. 2885212 to LOH.
3 17-cv-00194-JAH-NLS
1 Except as expressly admitted, Under Armour denies the remaining allegations of

2 Paragraph 14.
3 15. Under Armour admits that, according to the PTO online records, Exhibit A
4 is a copy of the registration certificate for Registration No. 2885212. Under Armour
5 denies, however, that the registration certificate reflects the current status of the
6 registration because numerous goods have been abandoned/deleted from the
7 registration and are no longer covered by the registration. Under Armour admits that,
8 according to the PTO online records, Exhibit B is a copy of the purported assignment
9 from Merriman to LOH, that LOH is listed as the current owner of Registration No.
10 2885212, and that LOH filed an incontestability affidavit for the registration, which the
11 PTO accepted. Because Plaintiffs assertion that Registration No. 2885212 purportedly
12 enjoys a priority date of February 10, 2003 is a legal conclusion, no response is
13 required. Except as expressly admitted, Under Armour lacks sufficient knowledge and
14 information to form a belief as to the remaining allegations of Paragraph 15 and,
15 accordingly, denies them. Further, to the extent Paragraph 15 asserts that Under
16 Armour has used Lights Out as a mark or a source identifier, Under Armour denies
17 those allegations.
18 16. Under Armour admits that LOH filed an incontestability affidavit for
19 Registration No. 2885212 and that the PTO accepted it. Because the contention that
20 Registration No. 2885212 purportedly enjoys an incontestable federal trademark
21 registration is a legal conclusion, no response is required.
22 17. Under Armour admits that, according to the PTO online records, LOH is
23 the listed owner of Registration No. 3990916 and that the registration identifies the
24 following services: Online retail store featuring sporting goods, sports memorabilia,
25 clothing; promoting the goods and services of others through the issuance of product
26 and service endorsements by a sports celebrity, and through advertising appearances for
27 products and services by a sports celebrity. Because Plaintiffs assertion that
28 Registration No. 3990916 purportedly enjoys a priority date of April 24, 2007 is a
4 17-cv-00194-JAH-NLS
1 legal conclusion, no response is required. Except as expressly admitted, Under Armour

2 lacks sufficient knowledge and information to form a belief as to the remaining
3 allegations of Paragraph 17 and, accordingly, denies them. Further, to the extent
4 Paragraph 17 asserts that Under Armour has ever used Lights Out as a mark or a
5 source identifier, Under Armour denies those allegations.
6 18. Under Armour admits that, according to the PTO online records, LOH
7 filed an intent-to-use trademark Application Serial No. 86888080 for the mark LIGHTS
8 OUT for Footwear and athletic footwear in International Class 25, and that the
9 application published for opposition on June 21, 2016. Because Plaintiffs assertion
10 that the application enjoys a priority date of January 27, 2016 is a legal conclusion,
11 no response is required. Except as expressly admitted, Under Armour lacks sufficient
12 knowledge and information to form a belief as to the remaining allegations of
13 Paragraph 18 and, accordingly, denies them. Further, to the extent Paragraph 18 asserts
14 that Under Armour has ever used Lights Out as a mark or a source identifier, Under
15 Armour denies those allegations.
16 19. Under Armour denies that the alleged LIGHTS OUT Marks have enjoyed
17 substantial success or popularity. Under Armour is without knowledge or information
18 sufficient to form a belief as to the truth or falsity of the remaining allegations of
19 Paragraph 19 and, accordingly, denies them.
20 20. Denied; Under Armour has never made a shoe called the Curry 3 Lights
21 Out and has never caused any third parties to market its sneakers in connection with
22 that phrase. To the extent Paragraph 20 alleges articles/activities by third parties,
23 Under Armour is without sufficient knowledge or information to form a belief as to the
24 truth or falsity of such allegations and, accordingly, denies them.
25 21. Denied; Under Armour has never made a shoe called the Curry 3 Lights
26 Out. To the extent Paragraph 21 alleges anything else about these third parties, Under
27 Armour is without knowledge or information sufficient to form a belief as to the truth
28 or falsity of such allegations and, accordingly, denies them.
5 17-cv-00194-JAH-NLS
1 22. Denied; Under Armour has never made a shoe called the Curry Lights
2 Out. For sake of completeness, Under Armour admits that professional basketball
3 player Steph Curry promotes some of its products (including basketball sneakers) and
4 appears in some of its advertising.
5 23. Under Armour admits that it used the ubiquitous descriptive phrase
6 Lights Out (and the variant Play lights out) in connection with a basketball-related
7 mobile game. Under Armour denies that it has ever promoted any Curry Lights Out
8 Sneakers and the remaining allegations of Paragraph 23.
9 24. Under Armour admits that it has used the phrase hit the lights
10 descriptively and ornamentally on some of its t-shirts. Under Armour denies the
11 remaining allegations of Paragraph 24, including that hit the lightswhich conveys a
12 completely different commercial impression, in the context of a completely different
13 sportis confusingly similar to any of Plaintiffs alleged marks.
14 25. Denied.
15 26. Under Armour admits that, in order to settle a dispute Under Armour
16 believed was meritless, it entered into a settlement agreement with Plaintiffs on March
17 11, 2015 and that the language of the agreement speaks for itself. Under Armour
18 denies that the agreement was a result of its prior unauthorized use Plaintiffs 212
19 LIGHTS OUT Mark, as the agreement specifically provides that it does not
20 constitute an admission of liability, culpability, negligence, or wrongdoing on the part
21 of anyone, and will not be construed for any such purpose. Indeed, the Parties
22 specifically acknowledge that this settlement is a compromise of disputed claims and
23 that each party expressly denies any and all liability, culpability, negligence or
24 wrongdoing. Under Armour denies breach of the agreement, any wrongdoing, and the
25 remaining allegations of Paragraph 26.
26 27. Under Armour admits that Plaintiffs contacted it alleging breach of the
27 March 2015 settlement agreement and demanded that Under Armour cease and desist
28 from using lights out on November 29, 2016. Under Armour admits that it rejected
6 17-cv-00194-JAH-NLS
1 Plaintiffs claims and refused to acknowledge that its conduct was infringingbecause
2 it wasnt (and isnt). Except as expressly admitted, Under Armour denies the
3 remaining allegations of Paragraph 27.
4 28. Under Armour admits that it has continued to sell t-shirts with the
5 descriptive phrase hit the lights. Under Armour denies that it ever marketed or sold
6 any Curry Lights Out Sneakers. Under Armour denies the remaining allegations of
7 Paragraph 28.
8 29. Under Armour admits that it rejected Plaintiffs groundless infringement
9 claims, and accordingly denies that its conduct is infringing and/or otherwise wrongful.
10 Except as expressly admitted, Under Armour denies the remaining allegations of
11 Paragraph 29.
12 FIRST CAUSE OF ACTION
13 TRADEMARK INFRINGEMENT
14 (Lights Out Holdings Against Under Armour)
15 (15 U.S.C. 1114, 1125 et seq. and Common Law)
16 30. Under Armour repeats and reincorporates by reference its answers to
17 Paragraphs 1-29.
19 the listed owner of Registration No. 2885212 and that it filed an incontestability
20 affidavit, which the PTO accepted. Because Plaintiffs allegation the LOH has priority
21 of use is a legal conclusion, no response is required. Except as expressly admitted,
22 Under Armour denies the remaining allegations of Paragraph 31.
24 the listed owner of Registration No. 3990916. Because Plaintiffs allegation the LOH
25 has priority of use is a legal conclusion, no response is required. Except as expressly
26 admitted, Under Armour denies the remaining allegations of Paragraph 32.
27 ///
28 ///
7 17-cv-00194-JAH-NLS
2 the listed owner of an intent-to-use Application Serial No. 86888080. Except as
3 expressly admitted, Under Armour denies the remaining allegations of Paragraph 33.
4 34. Under Armour denies that LOH owns any valid and/enforceable common
5 law rights in any asserted marks. Because Plaintiffs allegation the LOH has priority of
6 use is a legal conclusion, no response is required. Under Armour denies the remaining
7 allegations of Paragraph 34.
8 35. Denied.
9 36. Denied.
12 denies them. Under Armour expressly denies that its conduct is infringing and/or
13 otherwise unlawful and/or that Plaintiffs are entitled to any damages or other relief.
14 38. Denied.
15 39. Denied.
16 40. Denied.
17 41. Denied.
18 42. Denied.
19 43. Denied.
20 SECOND CAUSE OF ACTION
21 UNFAIR COMPETITION
22 (Lights Out Holdings Against Defendant)
23 (15 U.S.C. 1125(a))
25 Paragraphs 1-43.
27 the listed owner of Registration No. 2885212 and that it filed an incontestability
28 affidavit, which the PTO accepted. Because Plaintiffs allegation the LOH has priority
8 17-cv-00194-JAH-NLS
1 of use is a legal conclusion, no response is required. Except as expressly admitted,

2 Under Armour denies the remaining allegations of Paragraph 45.
4 the listed owner of Registration No. 3990916. Because Plaintiffs allegation the LOH
5 has priority of use is a legal conclusion, no response is required. Except as expressly
6 admitted, Under Armour denies the remaining allegations of Paragraph 46.
8 the listed owner of an intent-to-use Application Serial No. 86888080. Except as
10 48. Denied.
13 denies them. Under Armour expressly denies that its conduct is infringing and/or
14 otherwise unlawful and/or that Plaintiffs are entitled to any damages or other relief.
15 50. Denied.
16 51. Denied.
17 THIRD CAUSE OF ACTION
18 Cal. B&P 17200 et seq. AND COMMON LAW UNFAIR COMPETITION
19 (Plaintiffs Against Defendant)
21 Paragraphs 1-51.
22 53. Denied.
23 54. Denied.
24 55. Denied.
25 56. Denied.
26 57. Denied.
27 ///
28 ///
9 17-cv-00194-JAH-NLS
1 FOURTH CAUSE OF ACTION

2 STATUTORY FALSE ENDORSEMENT
3 (Shawne Merriman Against Defendant)
4 (15 U.S.C. 1125 et seq.; Cal. Civil Code 3344; and Common Law)
6 Paragraphs 1-57.
7 59. Under Armour denies that Merriman enjoys any nationwide celebrity
8 status and/or that the commonplace phrase Lights Out is a uniquely distinguishing
9 characteristic of his celebrity persona. Under Armour is without knowledge or
10 information sufficient to form a belief as to the truth or falsity of the remaining
11 allegations of Paragraph 59 and, accordingly, denies them.
12 60. Denied.
13 61. Denied.
14 62. Denied.
15 63. Denied.
16 64. Denied.
17 65. Denied.
18 66. Denied.
19 67. Denied.
20 68. Denied.
21 69. Denied.
22 FIFTH CAUSE OF ACTION
23 BREACH OF CONTRACT
24 (Plaintiffs Against Defendant)
26 Paragraphs 1-69.
27 71. Admitted.
28
10 17-cv-00194-JAH-NLS
1 72. Under Armour admits that it entered into a settlement agreement with
2 Plaintiffs on March 11, 2015 and that the agreement speaks for itself. Because
3 Plaintiffs allegations that the agreement is valid, enforceable, and supported by
4 adequate, mutual consideration are legal conclusions, no response is required.
5 73. Under Armour admits that it entered into a settlement agreement with
6 Plaintiffs on March 11, 2015 and that the agreement speaks for itself. Except as
10 denies them.
11 75. Denied.
12 76. Denied.
13 77. Denied.
14 AFFIRMATIVE DEFENSES
15 First Affirmative Defense
16 The Complaint fails to state a claim upon which relief may be granted.
17 Second Affirmative Defense
18 Plaintiffs infringement and/or breach-of-contract claims against Under Armour
19 fail because Under Armour has not marketed or sold any footwear (including Curry
20 sneakers) in connection with the phrase Lights Out.
21 Third Affirmative Defense
22 Under Armours alleged use of the phrase lights out and/or hit the lights is
23 not a trademark use and/or constitutes fair use.
24 Fourth Affirmative Defense
25 Plaintiffs claims fail because the weak, commonplace phrase lights out fails to
26 function as a trademark. This phrase is used by multiple third parties in the sports and
27 apparel industries and/or is used ornamentally and thus does not serve to identify
28 Plaintiffs goods or distinguish them from the goods offered by others.
11 17-cv-00194-JAH-NLS
1 Fifth Affirmative Defense

2 As a result of Plaintiffs maintenance of his alleged trademark rights through
3 false and/or fraudulent declarations and/or representations, Plaintiffs claims are barred
4 by the doctrine of unclean hands.
5 Sixth Affirmative Defense
6 Plaintiffs claims are barred by the doctrines of laches, waiver, estoppel, and
7 acquiescence.
8 Under Armour reserves all affirmative defenses under Rule 8(c) of the Federal
9 Rules of Civil Procedure and any other defenses in law or equity that may now exist or
10 in the future be available based on discovery and further factual investigation in this
11 case.
12 WHEREFORE, Under Armour prays for judgment as follows:
13 A. that the Complaint be dismissed in its entirety with prejudice;
14 B. that judgment be entered in favor of Under Armour and against Plaintiffs;
15 C. that Plaintiffs be denied all relief requested;
16 D. that Under Armour be awarded its costs and reasonable attorneys fees
17 incurred in defending against the Complaint; and
18 E. for such further and additional relief as this Court deems proper.
19 DEMAND FOR JURY TRIAL
20 Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Under Armour
21 demands trial by jury on all claims in this case.
22
Respectfully submitted,
23
LUCAS & HAVERKAMP LAW FIRM
24
25 Dated: February 24, 2017 By: s/ Stephen D. Lucas

STEPHEN D. LUCAS (SBN: 074726)
26
slucas@lucashaverkamp.com
27 Attorney for Defendant
28 UNDER ARMOUR, INC.
12 17-cv-00194-JAH-NLS
1
Of Counsel:
2
Douglas A. Rettew
3
doug.rettew@finnegan.com
4 (pro hac vice application in process)
Anna B. Naydonov
5
anna.naydonov@finnegan.com
6 (pro hac vice application in process)
FINNEGAN, HENDERSON, FARABOW,
7
GARRETT & DUNNER, LLP
8 901 New York Avenue, NW
Washington, D.C. 20001-4413
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
13 17-cv-00194-JAH-NLS
CERTIFICATE OF SERVICE
1
2 I am over the age of 18 and not a party to this adversary proceeding. I am

3 employed in San Diego County, State of California. My business address is 9171
4 Towne Centre Drive, Suite 325, San Diego, California 92122; telephone number (858)
5 535-4000; email address: dfisher@lucashaverkamp.com.
6 On February 24, 2017, I serve the following document described as:
7 UNDER ARMOUR, INC.S ANSWER AND AFFIRMATIVE DEFENSES
8 DEMAND FOR JURY TRIAL
9 on the following interested parties as follows:
10 Andrew D. Skale
11 askale@mintz.com
Wynter L. Deagle
12
wldeagle@mintz.com
13 MINTZ LEVIN COHN FERRIS GLOVSKY AND POPEO P.C.
3580 Carmel Mountain Road, Suite 300
14
San Diego, CA 92130
15 Telephone: (858) 314-1500
Facsimile: (858) 314-1501
16
17 Attorneys for Plaintiffs

LIGHTS OUT HOLDINGS, LLC
18
and SHAWNE MERRIMAN
19
20 BY CM/ECF ELECTRONIC SERVICE: By transmitting electronically the

21 document(s) to the recipients designated on the courts CM/ECF electronic
service list.
22
23 I declare that I am employed in the office of a member of the bar of this court at
24 whose direction the service was made. Executed this 24th day of February, 2017, at San
25 Diego, California.
26 s/ Diane Fisher
Diane Fisher
27
28
14 17-cv-00194-JAH-NLS

United States District Court Southern District of California

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Case 3:17-cv-00194-JAH-NLS Document 7 Filed 02/24/17 PageID.

1 Stephen D. Lucas (SBN: 074726)

11 Attorneys for Defendant

13 UNITED STATES DISTRICT COURT

16 LIGHTS OUT HOLDINGS, LLC., a Case No.: 17-cv-00194-JAH-NLS

1 or falsity of the allegations of Paragraph 8 pertaining to the location of the alleged

1 Except as expressly admitted, Under Armour denies the remaining allegations of

1 legal conclusion, no response is required. Except as expressly admitted, Under Armour

1 of use is a legal conclusion, no response is required. Except as expressly admitted,

1 FOURTH CAUSE OF ACTION

1 Fifth Affirmative Defense

25 Dated: February 24, 2017 By: s/ Stephen D. Lucas

2 I am over the age of 18 and not a party to this adversary proceeding. I am

17 Attorneys for Plaintiffs

20 BY CM/ECF ELECTRONIC SERVICE: By transmitting electronically the

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