Ben & Jerry's who names its ice cream flavors by playing off names and words recently filed a lawsuit against a pornography studio, Caballero Video ("Caballero") for titling its films by playing off the flavors of Ben & Jerry's ice creams. For example, Caballero boasts titles such as "Boston Cream Thighs," "Peanut Butter D-Cups," and "Chocolate Fudge Babes." Ben & Jerry's ice cream flavors include "Boston Cream Pies," "Peanut Butter Cups," and "Chocolate Fudge Brownie." The lawsuit includes other aspects of Ben & Jerry's intellectual property, but what caught my interest was the suing Caballero for doing essentially what Ben & Jerry does in naming its flavors. My guess would be if it was not a pornography company doing the "Ben & Jerry-ing" Ben & Jerry's would not be as upset.
The Lanham Act provides additional protection for "famous" trademarks by way of dilution. Dilution refers to the unauthorized acts that tend to blur or tarnish the famous trademark by using it in a disparaging or unsavory way. As you may imagine, this cause of action often targets the pornography industry. One of the elements of a dilution cause of action is that the use of the trademark by the defendant (Caballero) dilutes the quality of plaintiff's (Ben & Jerry's) trademark by diminishing the capacity of the plaintiff's mark to identify and distinguish plaintiff's goods and services. For a refresher on trademark basics go here.
Needless to say, Ben & Jerry's succeeded in obtaining an injunction to stop Caballero from selling its Ben & Jerry series of titles. However, Ben & Jerry's will still need to prove that Caballero's titles "dilute" its trademarks. Because Caballero "borrowed" other aspects of Ben & Jerry's labeling, it may have an easier time showing dilution.