Thursday, May 8, 2008    Text size: 

A federal magistrate judge has ordered a settlement conference as both parties appear to be deadlocked in a resolve over the marquee name owned by both companies.

Vivid Entertainment claims that the San Jose nightclub with the same name is infringing on the name it's used for film, Internet, mobile, retail and licensing business for years.

Vivid Entertainment, the largest adult film producer with numerous divisions in the straight and gay categories, is best known for its "Vivid Girls,” a stable of adult starlets.

The Los Angeles-based company has even gotten into the nightclub business itself. Vivid Entertainment in 2005 granted a license with Las Vegas Venus Corp. for the operation of a Vivid nightclub at the Grand Canal Shoppes at the Venetian Resort Hotel Casino in Las Vegas, which closed last year.

But when the Studio 8 nightclub in San Jose needed some freshening up last year, owners decided on a new name — Vivid.

The 22,000-square-foot club, which claims to “bring South Beach-style nightlife to the Bay Area,” is located in the middle of downtown San Jose and is one of the largest clubs in the region. It offers $250 bottle service and is “lavishly decadent,” according to its website.

It only took a month for Vivid attorneys to get wind of the name change and they promptly sent cease-and-desist letters demanding owners of the club to discontinue use of the name.

According to the suit, the club's owners — a group of investors who incorporated the club as Diamond S.J. Enterprise — filed papers with the U.S. Patent and Trademark Office to grant them a registered trademark shortly after receiving the cease-and-desist letters.

Vivid Entertainment claims that the San Jose nightclub owners not only have borrowed its corporate signage and identity, but that club owners continue to operate www.vividsj.com, exploiting its trademark despite a disclaimer on its website that it is not affiliated with Vivid Entertainment.

Vivid Entertainment attorneys further said that using the Vivid mark “is likely to cause confusion, mistake or deception in the minds of the public."

As a result, Vivid Entertainment is asking for unspecified damages and an injunction against the club owners barring them from using the name.

Both attorneys representing the two Vivids — Paul Cambria for Vivid Entertainment, and Anthony Pagkas for Vivid, the San Jose nightclub — did not respond to XBIZ for comment.