Hall and Oates Sues Granola Company “Haulin’Oats”
Classic trademark cases involve two restaurants vying to use a particular look  or a celebrity complaining to a clothing company for using a name that is too close to their stage name . Trademark issues come up when the two parties are involved in industries that are “next door neighbors,” or at least “close cousins.” However, a recent complaint filed in the state of New York is quite unique: a rock and roll band is suing a granola company for using a name that sounds too similar to their band name.
The plaintiffs in this case are Whole Oates Enterprises. The sole partners are Daryl Hall and John Oates. They are known as the popular musical duo, Hall & Oates.  The defendants are Early Bird Foods & Co., LLC.  They are a company that relocated to Brooklyn, New York in 2014. Early Bird Foods & Co., LLC. makes and sells a line of granola products. 
The plaintiffs currently own four registered trademarks. Three of them are the name “Daryl Hall And John Oates.” These three registered trademarks are respectively for musical sound recordings/video sound recordings, Tee-Shirts/Sweat Shirts, and Entertainment Services Rendered by a Vocal and Instrumental Group. Since fans of the musical duo have been referring to the band as “Hall and Oates,” the plaintiffs also claim common law trademark ownership of the name “Hall and Oates.”  The plaintiffs also own, via assignment, the registered trademark, “Haulin’ Oats” for food delivery with a beginning use date of March 1, 2012.  This name has been used in connection with the sale of oatmeal since 2014. 
The central claim in this lawsuit is that the defendant’s product “Haulin’Oats” is not only close to the plaintiff’s registered trademark “Daryl Hall and John Oates,” it is identical to the plaintiff’s registered mark “Haulin’ Oats.” The plaintiffs claim that this causes unlawful consumer confusion. 
The Lanham Act
The two statutory causes of action applied in the complaint are under the Lanham Act Sections 32 and 43(a).  Both causes of action are for likelihood of confusion, which is determined by courts using a balancing test called the Polaroid Factors.  Different jurisdictions use similar or slightly different factors, but they usually contain the following eight factors: (1) strength of the mark, (2) degree of similarity between the two marks in question, (3) proximity of the two products, (4) the likelihood that the plaintiff will bridge the gap between the two products, (5) evidence of actual confusion, (6) the defendant’s good faith in adopting the mark, (7) the quality of the defendant’s product, and (8) the sophistication of buyers. The one big difference between Lanham Act Sections 32 and 43(a) is that the former is the cause of action brought to protect a registered trademark and the latter does not require a registered trademark. If, by balancing the aforementioned factors, the court finds that there is sufficient likelihood of confusion between the plaintiff and defendant’s marks, the defendant will generally lose its right to do business using that mark.
As mentioned earlier, the plaintiffs have registered trademarks in both “Daryl Hall and John Oates,” in connection with their musical group, as well as “Haulin’ Oates,” in connection with their oatmeal products. This satisfies the Section 32 requirement for having a registered trademark. The allegations are that the defendant’s mark is likely to cause confusion in consumers, in violation of the aforementioned Lanham Act because they are colorable imitations of the plaintiff’s “Daryl Hall and John Oates” mark and “Haulin’ Oates” mark.
“Daryl Hall and John Oates”
Here, the band is a world famous musical duo who has been actively performing and recording since the 1970s.  Though the full title of “Daryl Hall and John Oates” doesn’t sound like the defendant’s “Haulin’ Oats” mark, a large portion of the band’s fans refer to the band as “Hall and Oates,” which sounds quite similar to the defendant’s mark when said out loud.  The product under the plaintiff’s mark “Daryl Hall and John Oates” (CDs and concert tickets) don’t seem to be too close to the products under the defendant’s mark “Haulin’ Oats” (granola), as one is music and the other is granola products. However, the rock and roll band already registered for the trademark and is doing business in selling oats under the name “Haulin’ Oats.”  Just with this cursory look at some of the factors, it is difficult to see how there would be much confusion when someone is looking for the band’s music and stumbles upon an advertisement for granola (or vice versa).
Though the plaintiff’s “Haulin’ Oats” mark’s famousness is unclear, the fact that it is a registered trademark makes the strength inherently strong.  Also, the word marks of the two parties are identical. The issue of proximity of products is a tricky one. Though both are similar products in that they are both oats and granola food products, it doesn’t seem like the products are physically too close to each other, since both products are only available at select retail locations, as opposed to large, franchise grocery stores. Of course, Googling “Haulin’ Oats” with the intention of buying oat or granola products could potentially lead customers to reach either the plaintiff or defendant’s site.  With regards to the likelihood that the plaintiff will bridge the gap between the two products of music and food, this has already happened as evidenced by the plaintiff’s registration of the “Haulin’ Oats” trademark for oat products. 
An interesting factor here is the sophistication of purchasers. Given today’s subculture that is obsessed with healthy eating, it could be possible that the customers are on the sophisticated side. As a fan of online shopping and granola products, I can imagine a new customer looking for one of the party’s products and stumbling upon the wrong seller’s site without realizing.
Are There Any Possible Defenses For The Defendant
Since the plaintiff’s mark “Haulin’ Oats” is used to sell oats, one defense that can be brought up is that the plaintiff’s mark is merely descriptive. A valid trademark can only be obtained if the mark is distinctive (either inherently or through secondary meaning).  If a mark is deemed to be merely descriptive of the product, it cannot be trademarked.  The defendant can probably argue to have the plaintiff’s trademark registration cancelled on this ground, thus nullifying the Section 32 cause of action. 
Another possible defense is priority. Generally, the person who is the first one in the world (or in a particular region) to use the mark in the manner in question wins (totally or gets partial rights of trademark use).  If the defendant was using the “Haulin’ Oats” mark before the plaintiff registered his mark or started using it, there might be some argument for a defense there.
Pay Attention When You Go Shopping
We’ll see what the court says, but the plaintiff’s argument does seem stronger for their “Haulin’ Oats” mark. After all, how confused can someone be when they are looking for a healthy snack and find a CD instead? Regardless of the outcome of the case, if you want to purchase oats or granola from either party, make sure you do your research so that you are buying exactly what you want from the correct people.
 15 USC §1114; 15 USC §1125
 Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961)
 http://www.scribd.com/doc/257771660/Whole-Oats-Ent-v-Early-Bird-Foods-Hall-Oates-v-Haulin-Oats-Trademark-Complaint; http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4803:17xrnl.2.1
 http://www.haulin-oats.com/Retail-Locations-.html; http://earlybirdfoods.com/buy/
 Abercrombie & Fitch Co. v. Hunting World 537 F.2d 4 (2nd Cir. 1976)
 Abercrombie & Fitch Co. v. Hunting World 537 F.2d 4 (2nd Cir. 1976)
 15 USC 1052
Cover Photo by: DeShaun Craddock under Creative Commons License.