Ben & Jerry’s X-Rated Trademark Dilution Case
Ben & Jerry’s has sued Rodax Distributors, producers of adult DVDs under the brand name “Ben & Cherry’s.” Allegedly, Rodax’s oeuvre includes such masterpieces as “Peanut Butter D-Cups” and “Boston Cream Thigh.” OK, the last one is sort of clever.
“But wait,” you say. “Isn’t a trademark necessarily related to the commercial goods and services provided by the owner? Clearly neither Ben nor Jerry is involved in the adult film business; how can they assert trademark rights against Rodax?”
That’s true for the more common claim of trademark infringement. However, there’s another path available to certain trademark owners. Trademark Dilution is a claim by a trademark owner that the use of the mark by the defendant would diminish the goodwill embodied in the trademark – even if the defendant is not using the mark in connection with similar goods or services. What does that all mean?
First of all, a claim of trademark dilution can only be asserted by the owner of a famous trademark. The mark must be nationally well known. Ford, Disney, Coca-Cola, and, yes, Ben & Jerry’s, are the types of marks that would clearly qualify for protection under the Trademark Dilution Revision Act of 2006.
There are two forms of trademark dilution: Dilution by Blurring and Dilution by Tarnishment.
Dilution by Blurring
Dilution by Blurring applies where the defendant’s use of the mark would diminish the uniqueness of the mark. This is probably the most common type of trademark dilution. Let’s say you open up a computer repair shop and name it Coca-Cola Computer Repair. Even though Coke isn’t in the business of fixing your PC, the law recognizes that if there are a number of other businesses with the same name as a famous mark, the commercial impact of the mark will be impacted. As a result, Coca-Cola would have the right to bring a trademark dilution claim against your shop, even though you are not competing directly with their products.
Dilution by Tarnishment
This claim can be asserted when the defendant’s use of the mark would negatively impact the reputation of the mark. Ben & Cherry’s adult videos is a perfect example of dilution by tarnishment. If the mark (and for the purposes of this discussion, we will consider Ben & Cherry’s so similar to the original mark as to be practically identical) becomes associated in the eyes of consumers with pornography, the goodwill attached to a family-friendly, environmentally-positive ice cream brand will presumably be damaged.
This looks like a fairly straightforward example of trademark dilution by tarnishment (and possibly blurring). Of course, there are other potential claims to be made by Ben & Jerry’s, and presumably Rodax will assert some sort of defense, but it does provide some insight into the often-misunderstood concept of trademark dilution.