Complaint Cavern Club Nevada

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BORGHESE LEGAL, LTD.

10161 PARK RUN DRIVE, SUITE 150 LAS VEGAS, NEVADA 89145 (702) 382-0200
Paul C. Rapp, Esq. (Pro Hac Vice to be Filed) paul@paulrapp.com THE LAW OFFICE OF PAUL C. RAPP 348 Long Pond Road Housatonic, MA 01236 Phone: (413) 553-3189 Mark Borghese, Esq. Nevada Bar No. 6231 mark@borgheselegal.com BORGHESE LEGAL, LTD. 10161 Park Run Drive, Suite 150 Las Vegas, Nevada 89145 Tel. (702) 382-0200 Fax (702) 382-0212 Attorneys for Plaintiff UNITED STATES DISTRICT COURT DISTRICT OF NEVADA CAVERN CITY TOURS LTD., d/b/a THE CAVERN CLUB, a United Kingdom corporation, v. Plaintiff, ) Case No.: 2:11-cv-1901 ) ) ) COMPLAINT ) ) ) ) ) ) ) )
HARD ROCK CAF INTERNATIONAL (USA), INC., a Florida corporation, Defendant.
Plaintiff, Cavern City Tours Ltd. d/b/a The Cavern Club (the Plaintiff) alleges as follows: NATURE OF ACTION & PROCEDURAL HISTORY 1. This is an action seeking de novo judicial review of a final decision of the
Trademark Trial and Appeal Board (TTAB), an administrative agency of the United States Patent and Trademark Office (USPTO), in Cancellation Proceeding No. 92044795, under 15 U.S.C. 1071(b)(1); for cancellation of Defendants federal trademark Registration No. 2324683 for the mark CAVERN CLUB pursuant to 15 USC 1119, 1052(a), and 1064(c) (false suggestion and fraud); and for unfair competition under 15 USC 1125(a); for trademark
2011-11-27-Complaint.doc
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dilution under 15 1125(c); and for unfair competition and deceptive business practices under the statutory and common law of the state of Nevada, all of which justify that the Court enjoin Defendants further use of the mark CAVERN CLUB. 2. Plaintiff commenced the underlying action at the Trademark Trial and Appeal
Board (TTAB) on August 9, 2005 by filing a Petition to Cancel the Registration of U.S. Federal Trademark Registration No. 2324683 for the mark CAVERN CLUB alleging, among other things, fraud under 15 USC 1064(c) and false suggestion under 15 USC 1052(a). The matter was fully litigated and on September 29, 2011 the TTAB issued an order dismissing Plaintiffs petition. The order is attached hereto as Exhibit A. The entire record below can be accessed in the Internet at http://ttabvue.uspto.gov/ttabvue/v?pno=92044795&pty=CAN. THE PARTIES 3. Plaintiff, Cavern City Tours Ltd. d/b/a The Cavern Club is a corporation
organized and existing under the laws of the United Kingdom, having its principal place of business at 31 Mathew Street, Liverpool, England. 4. Defendant Hard Rock Caf International (USA), Inc., is a corporation organized
under the laws of the State of Florida with its principal place of business located in Orlando, Florida, USA. JURISDICTION AND VENUE 5. This Court has original jurisdiction pursuant to 28 U.S.C. 1331 and 1338 and
15 USC 1021. This Court also has jurisdiction over the state and common law infringement claims pursuant to 28 U.S.C. 1367. 6. Venue is proper in this district pursuant to 28 U.S.C. 1391(b) and (c) in that
Defendant resides in this district and because a substantial part of the events or omissions giving rise to the claims occurred in this district. FACTUAL BACKGROUND 7. The Cavern Club is a legendary nightclub that opened in Liverpool, England in
1957. Plaintiff and its predecessors in interest have used the mark THE CAVERN CLUB for bar, restaurant, and entertainment related services and for promotional merchandise since that
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time. 8. In 1961, The Beatles made their first appearance at the Cavern Club. Between
1961 and 1963, The Beatles performed at the Cavern Club nearly 300 times. In the years that followed, a number of legendary rock and roll bands played at the club, including The Rolling Stones, The Yardbirds, The Kinks, Elton John and The Who. 9. Plaintiff Cavern City Tours Ltd. owns and operates the Cavern Club and the
mark THE CAVERN CLUB. 10. Plaintiff currently owns registrations for THE CAVERN CLUB in classes 25, 41
and 42 in the U.K., in all 25 European Community countries, and in Australia, Hong Kong, Brazil, and Canada. 11. The Cavern Club has been hailed as The Most Famous Club in the World and
is commonly known as the birthplace of The Beatles. Plaintiff has been responsible for the maintenance and popularity of the mark THE CAVERN CLUB. 12. Plaintiff has had hundreds of thousands of U.S. visitors to the Cavern Club, many
of whom bought their tickets in the U.S., including via Plaintiffs website cavernclub.org, in response to Plaintiffs U.S. advertising and promotion of the Cavern Club. 13. Sir Paul McCartney of The Beatles performed before a packed house of 300 at
the Cavern Club in December of 1999 because, as he said, he wanted to end the millennium where it all began. The concert was promoted extensively in the United States and throughout the world. The concert was aired on PBS, ABC and the BBC and was broadcast live over the Internet, including to the U.S. The Internet broadcast had the largest internet audience of any internet event to date and remains among the most-watched internet live events of all time. Amazons U.S. website continues to sell the DVD of the show Paul McCartney Live at the Cavern Club. 14. Cavern Club is also the owner and operator of the Magical Mystery Tour, a
travel destination in which Beatles fans from all over the world travel to Liverpool, England to visit various Beatles-related sites, and particularly the Cavern Club. 15. For over 25 years, the Magical Mystery Tour has been sold directly by 3
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Plaintiff or through numerous U.S. tour operators to thousands of U.S. rock and roll fans. The tour has been promoted extensively in the United States and throughout the world. The Cavern Club is promoted in the U.S. and throughout the world as a feature of the tour. 16. Plaintiff also organizes the annual Mathew Street Festival / Beatle Week in
Liverpool. This event has grown to become the largest free music festival in all of Europe. Hundreds of thousands of visitors, including many from the United States, attend the festival each year. A focus of the festival is the Cavern Club, where Beatles tribute bands from all over the word perform around the clock, and fans line the block around the clock for the opportunity to stand inside the Cavern Club. 17. The Cavern Club has been the subject of several books, film documentaries, and
television shows, has been used as a location set for various Beatles-related films, has been and continues to be mentioned in every kind of media, is a setting for the computer game Rock Band, and is part of the lexicon of every serious fan of rock and roll. 18. In 2007, the Universal and EMI record companies jointly released the 3 CD set
The Cavern: The Most Famous Club In The World in recognition of and to celebrate The Cavern Clubs 50th anniversary. The set was comprised of tracks from groups that had
performed at The Cavern Club over the years including The Beatles, The Rolling Stones, The Who, Queen, Oasis and The Arctic Monkeys. 19. In 2007, SAF Publishing Company released the book The Cavern: The Most
Famous Club In The World , by Spenser Leigh, with a forward by Sir Paul McCartney. 20. In January 2012, the Ludwig Drum Company, the 100 year-old premier U.S.
drum manufacturer, will unveil the Cavern Club Liverpool drum set, pursuant to a license from the Plaintiff. 21. As a result of the extensive promotional efforts of Plaintiff, the substantial
unsolicited media attention it has received, and the relevance of the Cavern Club in the history of The Beatles and rock and roll and the attention generated thereby, the public has come to know and recognize Plaintiffs mark THE CAVERN CLUB and associate it with a single source. THE CAVERN CLUB mark is famous as a matter of law, and it belongs to, and is the
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persona and identity of, the Plaintiff. 22. In mid-April of 1994, during an interview on a major Canadian radio station,
Dave Jones, a director of The Cavern Club and Cavern City Tours, Ltd., revealed Plaintiffs intent to open a number of clubs around the world under the name and mark THE CAVERN CLUB. Subsequently, Plaintiff opened restaurants/nightclubs in Australia and Argentina, licensed the name for others to use elsewhere, and began contemplating a number of other opportunities around the world, including in several locations in the United States. 23. Within a week of Mr. Jones radio interview, on April 24, 1994, Defendant filed
a trademark application for the mark CAVERN CLUB for, inter alia, bar and restaurant services. The application was made on an intent to use basis. Defendants application was allowed on November 5, 1996. After securing the maximum number of extensions of time permitted to provide proof of actual use in commerce, Defendant finally submitted a Statement of Use to the USPTO on November 4, 1999, and the registration was granted to Defendant on February 29, 2000. 24. In Defendants April 24, 1994 application, Defendants corporate representative
provided a sworn statement that he believes the applicant to be entitled to use such mark in commerce; to the best of his knowledge and belief no other person, firm, corporation, or association has the right to use the above identified mark in commerce, either in the identical form or in such near resemblance thereto as may be likely, when applied to the goods and services of such other person, to cause confusion, or too cause mistake, or to deceive. 25. This statement was false and was made with knowledge it was false with the
intent to deceive the USPTO and induce it to grant the registration to the mark CAVERN CLUB to Defendant. 26. The first Hard Rock Cafe opened its doors in London, England in 1971. It was
founded by two music-loving Americans and now claims to maintain a rock and roll sensibility. The Hard Rock has become the worlds leading collector and exhibitor of rock and roll memorabilia. Throughout Defendants history, its owners and developers have been committed to an ever-expanding presentation of rock and roll memorabilia and information, and
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promoting Hard Rocks association with the legends, celebrities and brands identified with this genre of music. Defendant is now a global company with well over 100 bars, restaurants, hotels, and casinos all over the world. Defendant is currently owned by the Seminole Tribe of Florida. 27. Defendant has always been intimately familiar with Plaintiffs mark and its fame
and with The Cavern Clubs paramount position in rock and roll history. Defendants collection includes Cavern Club memorabilia purchased from Plaintiff and its predecessors and from others, including actual bricks from the wall of The Cavern Club, membership cards from The Cavern Club, and innumerable photographs of The Beatles and others performing at The Cavern Club. Defendant displays these items to capitalize on The Cavern Clubs enduring fame. 28. Defendants use of the mark The Cavern Club has been minor and intermittent.
Off and on during the 1990s Defendant had a small special-events room in its Boston facility that it called The Cavern Club. One of the few promotional materials from that time
contained Defendants boast that the room included bricks from 1960s buildings on Mathew Street in Liverpool that undoubtedly soaked in the earliest recordings of the Beatles. 29. During the course of this litigation Defendant moved to different location in
Boston. For a time Defendant was not using the mark Cavern Club at all. It was only after Plaintiff pointed out during the pendency of the TTAB proceeding that there was no Cavern Club in the Defendants Boston facility, in response to Defendants corporate representatives sworn testimony that the CAVERN CLUB mark was still in use in Boston, that the Defendant began referring to its music performance space in its new Boston location as The Cavern Club. 30. Defendant has recently named a small special events room in its Las Vegas
facility The Cavern Club. 31. Defendant has from time to time offered merchandise in the form of t-shirts, hats
and pins bearing the words Cavern Club. A prominent long-time seller of Defendants Cavern Club t-shirts on eBay describes the shirts thusly:
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This t-shirt features on the left sleeve, a Hard Rock Cafe logo. On the front, a brown and yellow logo of The Cavern Club, known as the most famous club in the World (in Liverpool, where The Beatles used to [sic] paly), and New York written underneath. This t-shirt is very simple: plain white with 2 colors silk screen, as it follows the concept of The Beatles and The Cavern Club. There is no Cavern Club in New York: this is a tshirt from Hard Rock Cafe New York, featuring The Cavern Club. This is just one example of customers believing that Defendants use of the mark CAVERN CLUB refers to Plaintiff, Plaintiffs club and Plaintiffs famous mark THE CAVERN CLUB. 32. Defendants infringing CAVERN CLUB mark is identical to Plaintiffs world
famous mark THE CAVERN CLUB and is used for similar services. Such use by Defendant is intended to falsely suggest, a connection with Plaintiff when such connection is neither warranted nor authorized in violation of 15 USC 1052(a). Defendants use points uniquely and unmistakably to Plaintiff and Plaintiffs persona, and is intended to do so. Because of the fame and recognition of Plaintiff and THE CAVERN CLUB mark amongst rock and roll fans for entertainment services, Defendant is obtaining by its conduct the benefit of an association to which it is not entitled. 33. Defendant is neither affiliated nor otherwise connected with Plaintiff, nor with
the services rendered under Plaintiffs mark, THE CAVERN CLUB. Clearly, however, Defendants use of CAVERN CLUB would be recognized as identical when used in connection with restaurant and/or leisure/entertainment services offered at a venue commonly associated with rock and roll; the name CAVERN CLUB cannot be said to refer to anything else. FIRST CAUSE OF ACTION REQUEST FOR REVERSAL OF TTAB DECISION REGARDING FRAUD AND CANCELLATION OF DEFENDANTS U.S. TRADEMARK NO. 2324683 34. Plaintiff alleges and incorporates by reference each and every allegation
contained in Paragraphs 1 through 33. 35. The Trademark Trial and Appeal Board made an erroneous conclusion that the 7
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Plaintiff did not meet its burden of demonstrating that the Defendant obtained the CAVERN CLUB mark fraudulently from the USPTO. 36. The TTAB decision of September 29, 2011 should be reversed and vacated, and
an order should be entered directing the USPTO to cancel Defendants U.S. Trademark No. 2324683. SECOND CAUSE OF ACTION REVERSAL OF TTAB DECISION REGARDING FALSE SUGGESTION AND CANCELLATION OF DEFENDANTS U.S. TRADEMARK NO. 2324683 37. Plaintiff alleges and incorporates by reference each and every allegation
contained in Paragraphs 1 through 36. 38. The Trademark Trial and Appeal Board made an erroneous conclusion that the
Plaintiff did not meet its burden of demonstrating that the Defendants CAVERN CLUB falsely suggests a connection with Plaintiff pursuant to 15 USC 1052(a). 39. The TTAB decision of September 29, 2011 should be reversed and vacated, and
an order should be entered directing the USPTO to cancel Defendants U.S. Trademark No. 2324683. THIRD CAUSE OF ACTION DEFENDANT OBTAINED ITS TRADEMARK FRAUDULENTLY 40. Plaintiff alleges and incorporates by reference each and every allegation
contained in Paragraphs 1 through 39. 41. On April 18, 1994 Defendant filed an application for the mark CAVERN CLUB
with the USPTO. 42. On the application, a corporate representative provided a sworn statement that
he believes the applicant to be entitled to use such mark in commerce; to the best of his knowledge and belief no other person, firm, corporation, or association has the right to use the above identified mark in commerce, either in the identical form or in such near resemblance thereto as may be likely, when applied to the goods and services of such other person, to cause confusion, or too cause mistake, or to deceive.
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43.
This statement was false and was made with knowledge it was false with the
intent to deceive the USPTO and induce it to grant the registration to the mark CAVERN CLUB to Defendant. 44. This constitutes a fraud on the USPTO and as such is grounds for cancellation of
Defendants Cavern Club mark pursuant to 15 USC 1064(c) and an order should be entered directing the USPTO to cancel Defendants U.S. Trademark No. 2324683. FOURTH CAUSE OF ACTION DEFENDANTS USE OF THE MARK CAVERN CLUB FALSELY SUGGESTS A CONNECTION WITH PLAINTIFF 45. Plaintiff alleges and incorporates by reference each and every allegation
contained in Paragraphs 1 through 44. 46. Plaintiff. 47. 48. 49. Defendants Cavern Club mark points uniquely and unmistakably to Plaintiff. Defendant is not connected to Plaintiff. Plaintiff is sufficiently famous that when the mark CAVERN CLUB is used by Defendants Cavern Club mark is virtually identical to the name and identity of
Defendant, a connection to Plaintiff would be presumed. 50. Defendants use of the CAVERN CLUB mark falsely suggests a connection with
Plaintiff and as such Defendants application for the mark was wrongly granted by the USPTO and is grounds for cancellation of Defendants CAVERN CLUB mark pursuant to 15 USC 1119, 1052(a), and 1064(c) and an order should be entered directing the USPTO to cancel Defendants U.S. Trademark No. 2324683. FIFTH CAUSE OF ACTION DEFENDANTS USE OF THE CAVERN CLUB MARK INFRINGES PLAINTIFFS FAMOUS MARK 51. Plaintiff alleges and incorporates by reference each and every allegation 50.
contained in Paragraphs 1 through 52.
Defendants registration for the CAVERN CLUB mark is invalid. 9
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53.
Defendant is using Plaintiffs famous mark for goods and services in interstate
commerce in a manner that is likely to cause and has caused confusion, mistake, or deception as to the affiliation, connection, or association of Defendant with Plaintiff, or as to the origin, sponsorship, or approval of Defendants goods, services, or commercial activities by Plaintiff. 54. 55. Plaintiff has been or is likely to be damaged by these acts. Plaintiff is therefore entitled to an injunction, pursuant to 15 U.S.C 1125,
barring further use of the CAVERN CLUB mark by Defendant. SIXTH CAUSE OF ACTION DEFENDANTS USE OF PLAINTIFFS FAMOUS MARK DILUTES THE STRENGTH OF PLAINTIFFS MARK 56. Plaintiff alleges and incorporates by reference each and every allegation
contained in Paragraphs 1 through 55. 57. 58. Defendants registration for the mark CAVERN Club is invalid. Plaintiffs mark THE CAVERN CLUB qualifies as a famous mark as
measured by the totality of the four factors listed in USC 1025(c)(2). 59. Defendant is making use of the challenged designation as a mark or trade name
in interstate commerce and Defendants use began after the Plaintiffs mark became famous. 60. Considering the six factors listed in 1025(c)(2)(B), Defendants use is likely to
cause dilution by blurring by creating a likelihood of association with Plaintiffs famous mark arising from its similarity to the Plaintiffs famous mark that is likely to impair the distinctiveness of the Plaintiffs famous mark. 61. Plaintiff is therefore entitled to an injunction, pursuant to 15 U.S.C 1025(c)(1)
barring further use of the CAVERN CLUB mark by Defendant. SEVENTH CAUSE OF ACTION DECEPTIVE BUSINESS PRACTICES PURSUANT TO NEVADA REV. STATUTES TITLE 52, CHAPTER 598 62. Plaintiff alleges and incorporates by reference each and every allegation
contained in Paragraphs 1 through 61.

10
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63.
Defendants use of the CAVERN CLUB mark in Nevada constitute false
representations as to source, sponsorship, approval, affiliation, connection, and/or association in violation of Nevada Revised Statute 598.915. 64. Plaintiff is therefore entitled pursuant to Nevada Revised Statute 41.600 an
injunction barring Defendant from using the mark CAVERN CLUB and for an award of attorneys fees incurred in bringing this action. EIGHTH CAUSE OF ACTION COMMON LAW UNFAIR COMPETITION 65. Plaintiff alleges and incorporates by reference each and every allegation
contained in Paragraphs 1 through 64. 66. The Plaintiffs mark THE CAVERN CLUB has become famous throughout the
United States, including the State of Nevada. 67. Defendants deliberate and concerted adoption and use of the Plaintiffs mark is
likely to cause confusion, mistake or deception by virtue of Defendants false representation to the trade and public that such materials sold by the Defendant is sanctioned by the Plaintiff. 68. Defendants use of the CAVERN CLUB mark is likely to confuse and mislead
consumers and the public, and to induce the mistaken belief that Defendant is associated or authorized by the Plaintiff, or that the Defendants marketing, sale and advertising content is endorsed or sponsored by Plaintiff or in some way connected with Plaintiff. This confusion is likely to influence the decision of consumers and the general public. 69. Defendants use of a mark confusingly similar to the Plaintiffs THE CAVERN
CLUB mark constitutes common law unfair competition. 70. By reason of Defendants acts of unfair competition, Plaintiff has suffered and
will continue to suffer substantial damage to its business in the form of loss of goodwill and damage to reputation. 71. Unless enjoined, Defendants acts of unfair competition will cause Plaintiff
ongoing irreparable injury. 72. Plaintiff is therefore entitled to an injunction barring Defendant from further 11
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using the CAVERN CLUB mark.
PRAYER FOR RELIEF WHEREFORE, Plaintiff prays for relief as follows: A. That the Court reverse the September 29, 2011 decision in the matter of Cavern
City Tours Ltd. v. Hard Rock Caf International, Inc., Cancellation No. 92044795, pursuant to 15 U.S.C. 1071(b); and B. That the Court order the Commissioner of Trademarks at the USPTO to cancel
Defendants trademark Registration No. 2324683 CAVERN CLUB; and C. That the Court order that Defendant, its officers, agents, employees, and all those
working in concert with Defendant, be permanently enjoined from using the CAVERN CLUB mark or any other mark that is confusingly similar to Plaintiffs famous THE CAVERN CLUB mark; and D. fees; and E. That the Court grant such other relief as it deems appropriate. That the Court order Defendant to pay Plaintiffs costs and reasonable attorneys
DATED this 27th day of November, 2011. Respectfully Submitted, BORGHESE LEGAL, LTD.
Mark Borghese, Esq. 10161 Park Run Drive, Suite 150 Las Vegas, Nevada 89145 THE LAW OFFICE OF PAUL C. RAPP
Paul C. Rapp, Esq. 348 Long Pond Road Housatonic, MA 01236 Attorneys for Plaintiff
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Complaint Cavern Club Nevada

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BORGHESE LEGAL, LTD.

HARD ROCK CAF INTERNATIONAL (USA), INC., a Florida corporation, Defendant.

contained in Paragraphs 1 through 52.

Defendants registration for the CAVERN CLUB mark is invalid. 9

contained in Paragraphs 1 through 61.

Defendants use of the CAVERN CLUB mark in Nevada constitute false

using the CAVERN CLUB mark.

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