Why Hall & Oates Purchased a Trademark Registration for Oatmeal Cereal

Daryl Hall and John Oates make beautiful music together. At least some people say that. Their last names also go together nicely to create an interesting phrase. People have played off the band’s name for decades, but when a cereal company began branding its granola as “Haulin’ Oats”, Hall and Oates decided they needed to put a stop to it and protect their brand name. But even though they have been known as Hall & Oates for years, they were forced to purchase a trademark registration to stop the cereal company.

In the early 1980s, Hall and Oates filed several trademark applications on their combined names. The duo filed in classes related to music and entertainment, along with souvenir related classes. These trademark applications matured into trademark registrations, which allowed the group to protect its brand in areas of commercial interest. While their brand became very recognizable, it did not extend into all classes of goods and services. So when they learned that a New York food distributor called Early Bird Foods was distributing a cereal branded “Haulin’ Oats”, they needed to strengthen their position against Early Bird Foods to protect their brand.

The fundamental standard in trademark law is whether or not there will be a likelihood of consumer confusion. Trademark applications are filed in classes organized by types of goods or services and include a description of the goods and services for which an applicant is seeking to register a mark. If an application is filed in the entertainment related class and matures into a trademark registration, the registrant has trademark rights associated with that class and the identification of goods and services described in the registration. The strength of one mark against another junior mark will depend on a number of factors, including the similarity of the marks and the similarity of the goods and services. So the more similar the goods in the registration of the senior mark to the goods sold with the junior mark, the great protection for the senior mark. The further you get away from the junior mark – a different class and different goods – the less protection the registrant has.

For example, while Hall and Oates have trademark protection in entertainment related classes, it is unlikely consumers would be confused about a motorcycle model called Haulin’ Oats. Consumers probably wouldn’t believe that the source of the motorcycle was the band Hall & Oates. So likewise, when a cereal brand is named Haulin’ Oats, it’s probably too far removed from the music industry for consumers to be confused about the source of the goods.

But Hall & Oates wanted to keep the trademark space around their brand wide and clean, so they found an existing trademark registration that was senior (earlier in date) to Early Bird Foods’ use of its mark. It turns out that a woman in Nashville received a trademark registration on the term “Haulin’ Oats” for oatmeal in 2013. This is just the trademark protection that Hall & Oates needed, so they purchased the trademark registration. Provided the purchase was done properly, the purchased registration should allow them to exert it against Early Bird and prevent them from using the name. The similarities between oatmeal and other cereal products is close and would likely create a consumer confusion about the source of products.

As Hall & Oates discovered, trademark law is not always cut and dried. It you have questions

ACLU Supports the Washington Redskins Trademark

Although the team has decades of history, many people find the name of the Washington professional football team offensive. The Trademark Office sided with this opinion when it cancelled the Washington Redskins’ trademark registration last summer. The Office cited federal trademark law’s prohibition on the registration of disparaging marks. In spite of this latest obstacle however, the Redskins are fighting this ruling tooth and nail, and they now have a new supporter in their corner.

Read the rest of this entry »

Did Macy’s Allow Their Trademark to Go Abandoned

A few decades ago there used to be a lot more variety in department stores. Robinson’s-May, Marshall Field’s, and Meier and Frank used to dot the commercial landscape. But when these stores, along with several others, were acquired by Macy’s in 2005 and subsequently rebranded with the Macy’s masthead and brand name, the overall diversity of department stores took a hit. Now, after several years of dormancy, an enterprising individual is attempting to bring back some of these nostalgic brands and commercially exploit them, selling merchandise bearing the names and logos of these brands on his website. Macy’s has responded by suing for trademark infringement, claiming it is still the owner of these brands, but by shelving them for years, has Macy’s abandoned its trademark registration rights?

Read the rest of this entry »

Sriracha Sauce Trademark Lessons

One of the most popular trends in the food industry over the last decade has been Sriracha. In case you still aren’t sure exactly what it is, Sriracha is a chili sauce made from chili peppers, distilled vinegar, garlic, sugar, and salt. It originated in Thailand and was brought to the United States by Thai immigrants. One of these immigrants, David Tran, began selling the sauce under his Huy Fong Foods brand, which uses a distinctive rooster as its logo. Tran sought trademark registration on his rooster logo, but never on the name Sriracha itself. Now, as the popularity of the sauce has exploded, major players are bringing their own Sriracha sauce to the market, leaving one to wonder if Tran missed out on a huge commercial opportunity. Read the rest of this entry »