Trademark Law

Ice Cream Maker Ben & Jerry's Wins Lookalike Porn Movie TRO; Boston Cream Thigh, Other DVDs Nixed

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It might seem unlikely that those who enjoy Ben & Jerry’s gourmet ice cream would think the Vermont-based maker of trademarked flavors such as Chocolate Fudge Brownie, Peanut Butter Cup and Boston Cream Pie has anything to do with similar sounding porn flicks such as Chocolate Fudge Babes, Peanut Butter D Cup and Boston Cream Thigh.

But the ice cream company has persuaded a federal court in Manhattan to grant a temporary restraining order banning California-based Caballero Video from continuing to market and sell 10 DVD titles in its “Ben & Cherry’s” porn series, reports Reuters.

Bolstering Ben & Jerry’s claim that the parody creates a likelihood of confusion between the two brands is look-alike packaging on the porn DVDs that, like the ice cream containers, features clouds and cows.

U.S. District Judge Lewis Kaplan also ordered Caballero, which apparently is operated by co-defendant Rodax Distributors Inc., to appear in court on Sept. 12 and show cause why a permanent injunction should not issue, according to Reuters and the Money & Co. page of the Los Angeles Times.

Although the news agency says a woman who answered the phone at Caballero’s office declined to comment, NECN spoke with the owner of a Northeastern adult novelty store chain who defended the concept.

“In general I don’t think anyone would get confused and think it has anything to do with Ben & Jerry’s brand image,” said Kayce Massey.

Her Good Stuff stores, which are located in New Hampshire and Vermont, don’t carry any of the Ben & Cherry’s products. However, she pointed out that the porn industry has long parodied pop culture icons such as comic book superhero Captain America and the Pirates of the Caribbean story line promoted by Disney.

In a written statement, the ice cream maker told New England Cable News:

“Ben & Jerry’s filed a lawsuit on Wednesday, September 05, 2012 to halt the production and sale of pornographic material which utilized Ben & Jerry’s likeness. The ice cream maker acted to protect its company, brand, products and image. This is a clearcut issue where the video company is imitating Ben & Jerry’s logo, flavor names and trade dress to sell their products. We have taken prompt legal action to stop the manufacturing and sale of these materials.”

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