YNOT – Caballero Video has agreed to recall all DVDs in the adult studio’s Ben & Cherry’s video line, at least delaying a trademark infringement lawsuit filed by Vermont-based ice cream company Ben & Jerry’s Homemade Inc.
In addition, according to a consent injunction signed by Caballero’s president and approved by U.S. District Judge Lewis Kaplan, the studio will destroy all marketing and other materials used to produce the 10 titles in the Ben & Cherry’s series.
The agreement came one day before the litigants were to face a hearing scheduled to take place Wednesday in Manhattan. Kaplan previously enjoined the sale of the DVDs but did not require further action.
Ben & Jerry’s, which for 30 years has employed provocative flavor names like Schweddy Balls and Karamel Sutra to market ice cream and related dessert confections, filed suit against North Hollywood, Calif.-based Caballero parent company Rodax Distributors Inc. Sept. 5. The lawsuit claims the Ben & Cherry’s name, logo and product titles are confusingly similar to the ice cream maker’s trademarked intellectual property. Among the titles to which Ben & Jerry’s objects are Hairy Garcia (after the ice cream flavor called Cherry Garcia), New York Fat & Chunky (New York Super Fudge Chunk), Americone Cream (Americone Dream), Boston Cream Thigh (Boston Cream Pie) and Peanut Butter D-Cups (Peanut Butter Cup).
According to the lawsuit, Caballero intentionally attempted to harness the goodwill Ben & Jerry’s has generated with its fun-loving approach to product marketing.
