FT. MYERS, Fla.—Vivid Entertainment filed a trademark infringement lawsuit Monday against an inactive corporate entity called J&B PB and a Floridian named Jose Basura, who opened a Palm Bay, Florida club called Vivid Cabaret Nightclub in 2011. The suit appears to be an effort to keep the defendants from continuing to use Vivid’s mark, which the complaint alleges they plan to do.
The complaint argues, “Defendants are intentionally using or imitating Plaintiff’s Trademark with the intent of causing confusion, mistake and/or to deceive ordinary customers into believing that Defendants are in some way affiliated, associated, or connected to Plaintiff in order to unfairly trade upon Plaintiff’s wide recognition and goodwill for their own commercial gain.”
The complaint also contains a rather complicated list of alleged events that have led to the current suit, which we republish here in the same numbered order they are listed in the complaint:
24. In or about April 2011, Defendants began using or imitating Plaintiff’s Trademark in the operation of “Vivid Cabaret” nightclub located at 2586 Palm Bay Rd., Palm Bay, Florida 32905 (“Vivid Cabaret Nightclub”), and in promotion and advertising of its goods or services.
25. In or about April 2011, Defendants began using or imitating Plaintiff’s Trademark on www.vividcabaret.com (“Infringing Website”) to promote and advertise Vivid Cabaret Nightclub and its goods and services.
26. Baserva is the registered owner of domain name <vividcabaret.com> (“Infringing Domain Name”).
27. In or about November 2011, Baserva and J&B sold all of the assets of Vivid Cabaret Nightclub to Vivid, LLC.
28. From April 2011 through November 2011, Defendants used Plaintiff’s Trademark in the operation of Vivid Cabaret Nightclub, and in the promotion, advertisement, and sale of its goods and services and Defendants commercially gained from the sale of a nightclub bearing Plaintiff’s Trademark, Vivid Cabaret Nightclub.
29. On December 4, 2012, Plaintiff sent Vivid, LLC a cease and desist letter demanding that Vivid, LLC discontinue use of Plaintiff’s Trademark in connection with the operation of Vivid Cabaret Nightclub.
30. On December 13, 2012, Vivid, LLC confirmed that it purchased Vivid Cabaret Nightclub on or about December 2011 from J&B.
31. On May 10, 2013 Vivid, LLC agreed to cease using or imitating Plaintiff’s Trademark in the operation of Vivid Cabaret Nightclub. As part of the Agreement, Vivid, LLC assigned and transferred unto Plaintiff the entire right, title, interest and goodwill in and to the name “Vivid,” including all rights in and to the name “Vivid” (including all domain names containing the word “vivid”).
32. On April 10, 2013, Plaintiff sent Baserva and J&B a cease and desist letter demanding that Baserva discontinue use of Plaintiff’s Trademark and to take immediate steps to transfer the Infringing Domain Name to Plaintiff.
33. On April 10, 2013, Baserva responded to Plaintiff’s cease and desist letter and admitted to registering the Infringing Domain Name to market and advertise Vivid Cabaret Nightclub.
34. Defendants are using or imitating Plaintiff’s Trademark on social media websites, including but not limited to Facebook, to promote and advertise Vivid Cabaret Nightclub and its goods and services.
35. On April 23, 2013, Defendants filed a trademark application for the mark “Vivid Cabaret,” for nightclubs, namely adult entertainment services, (the “Trademark Application”) and submitted a specimen with Trademark Application that he is currently using the mark “Vivid Cabaret” at Vivid Cabaret Nightclub. A copy of the Trademark Application specimen is attached hereto as Exhibit “11.” Defendants are using or imitating Plaintiff’s Trademark on the Trademark Application.
36. Defendants plan on opening and operating other adult entertainment nightclubs, in addition to Vivid Cabaret Nightclub, using or imitating Plaintiff’s Trademark.
37. Despite the sale of Vivid Cabaret Nightclub to Vivid, LLC, J&B is still using Plaintiff’s Trademark on the Infringing Website and, upon information and belief, commercially gaining from the continued advertisement and promotion of the Infringing Website and/or the Infringing Domain Name.
Vivid Entertainment Group is seeking any profits derived from the alleged infringement, temporary and permanent injunctions against Baserva, the transfer of vividcabaret.com to Vivid Entertainment, attorney’s fees and a directive from the court ordering Baserva to “deliver up for destruction all containers, labels, signs, prints, packages, wrappers, receptacles, advertising, promotional material or the like in possession, custody or under the control of Defendant bearing a trademark found to infringe Plaintiff’s trademark VIVID rights, as well as all plates, matrices, and other means of making the same.”
The complaint can be read here.
