Hall & Oates Suing Breakfast Company Over Haulin' Oats Granola... And For A Pretty Good Reason

from the under-oats dept

Mon, Mar 9th 2015 3:49am — Timothy Geigner

As someone with only a mild and very uneducated interest in music, I am of course a huge fan of the band Hall & Oates. Private eyes, man, they're watching you, and all that. Hall & Oates, can apparently get very unhappy when things are named after them, as we saw when a bunch of drunken weirdos decided to name a SuperPAC after the band. The band, of course, couldn't go for that and got them to shut the whole thing down. And, now, according to the Guardian, the famed rocking duo are going one-on-one with the most unlikely foe: granola. Cue outrage about rockers feeling entitled:

Rather than being flattered by the promise of rolled oats and maple syrup mix that, Early Bird insists, is “perfect by itself or as the base for a breakfast parfait creation”, Daryl Hall and John Oates claim “the name and mark Haulin’ Oats is an obvious play upon Plaintiff’s well-known Hall & Oates mark, and was selected by defendant in an effort to trade off of the fame and notoriety associated with the artist’s and plaintiff’s well-known marks.”

The pair have brought the case in the Brooklyn federal court, where they claim the food company have infringed their trademark with a “phonetic play on Daryl Hall and John Oates’ well-known brand name”.

Now, if you hadn't noticed, two bandmates from the 80's and a freaking granola company probably aren't in the same industries, aren't competing with one another, and customers won't be confused at all into thinking a granola parfait is either Daryl or John, their personalities notwithstanding. So it seems like this should be tossed out, right? Well, maybe not.

Deep within the lawsuit (but not in the Guardian article linked above) is another bizarre tidbit. Apparently, a few years ago, someone else registered a "Haulin' Oats" trademark and started selling oatmeal with that brand. Rather than freak out and sue, representatives for Daryl and John resolved the whole thing amicably, with the other company agreeing to assign the trademark to the rockers and continue to sell their Haulin' Oats oatmeal -- in exchange for a royalty based on sales. You can see that trademark here. As Hall & Oates note in their lawsuit:

Plaintiff is the owner, via assignment, of the mark HAULIN’ OATS that is used in connection with the sale of oatmeal and the provision of food delivery services. Plaintiff is the owner of United States Trademark and Service Mark Reg. No. 4,345,444 for the mark HAULIN’ OATS in International Class 30 for oatmeal and in International Class 39 for food delivery, which mark has been in use since March 1, 2012.

And here's how it all came about:

In 2014, Plaintiff became aware that an entity named Haulin’ Oats, a partnership organized under the laws of California and based in Nashville, Tennessee, was also utilizing the mark HAULIN’ OATS in connection with the sale of oatmeal and the provision of food delivery services.

Thereafter, Plaintiff and Haulin’ Oats entered into a business relationship whereby Haulin’ Oats assigned to Plaintiff its trademark and service mark rights in and to the mark HAULIN’ OATS (including the United States Trademark and Service Mark Registration identified above) and Plaintiff granted a royalty-based license back to Haulin’ Oats.

Based on that, the lawsuit actually makes a lot of sense -- though you wouldn't get any of that from the Guardian's coverage.

There are some bizarre parts in the lawsuit, such as Hall & Oates arguing that because they once put oats on an album cover there might be confusion:

That seems difficult to take seriously. But, rather than this just being a case of the rockers freaking out over someone making a play on their name (as implied in the Guardian piece), this actually has a legitimate basis: two different companies came up with the same play on the duo's name, and the rockers actually worked out a reasonable deal with the first, and now that they own the trademark, they're the ones who have to file against the other company using the same name.

257771660 Whole Oats Ent v Early Bird Foods Hall Oates v Haulin Oats Trademark Complaint (PDF)257771660 Whole Oats Ent v Early Bird Foods Hall Oates v Haulin Oats Trademark Complaint (Text)

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Filed Under: daryl hall, granola, hall & oates, haulin' oats, john oates, journalism, reporting, trademark

29 Comments

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AJ, 9 Mar 2015 @ 4:01am

Nice word play....
"couldn't go for that" I see what you did there.
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That Anonymous Coward (profile), 9 Mar 2015 @ 4:11am

We bullied the last idiots to try this into giving us stuff, and now we have the power to crush this group.

They "own" the mark so they have a valid case, but how we arrived at this is a nice story about IP & who ever has the largest warchest gets the toys.
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5UpMushroom, 9 Mar 2015 @ 4:46am

I'm generally 100% in agreement with the folks that get upset when a big company rolls over a smaller one in a different market with a team of lawyers at the wheel, but in this case, even if they didn't own the "Haulin' Oats" trademark, it seems perfectly reasonable to go after the little guy. I would feel the same if a clothing company came out with "Lady Gagaloshes" or if Mcdonalds decided to rename their Big Mac "Notorious B.I.G Mac".
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Anonymous Coward, 9 Mar 2015 @ 4:48am

How many generations of humans have to be born and die before this particular duo and their estate cease their extortion racket?

I'm pretty sure my adult kids have never heard of these two has-beens.

Thank Osiris the Pharaohs never thought of this. If everyone did it we would have run out of words we could use without being sued about a thousand years ago.
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Anonymous Coward, 9 Mar 2015 @ 6:27am

Bakeries from around the world, and Mother Nature herself should have to pay Foghat royalties for their 1973 album Rock and Roll for its cover photo of a rock and a roll.

Wiki pic: http://en.wikipedia.org/wiki/Rock_and_Roll_(1973_album)
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Anonymous Coward, 9 Mar 2015 @ 6:28am

Argh the 'auto-link' drops off the final '_(1973)' that is a part of the link...
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David, 9 Mar 2015 @ 6:35am

Re:
But think where we'd be if the Pharaos had patented the concept of a plague. Why, nobody would have been able to invent patent law because it clearly infringes on the blight-upon-a-land concept.
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Anonymous Coward, 9 Mar 2015 @ 7:13am

Re:
Yeah. It's perfectly reasonable for them to go after this company, since they have a food trademark - but they only HAVE the food trademark in the first place because they entered into an agreement with that first company. And if here it would have been ridiculous to go after the company WITHOUT this other trademark, then it was ridiculous to go after the first company in the first place. Even if it was settled out of court.
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Anonymous Coward, 9 Mar 2015 @ 7:26am

Quaker Oats
Wonder if Hall and Oates ever received permission from Quaker Oats to use the Quaker guy on their album cover. After all, wouldn't people be confused by Hall and Oates and think they were somehow related to Quaker Oats, especially with the box of Whole Oats on the album cover. /s
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Cheryl, 9 Mar 2015 @ 7:31am

not so cut and dried
Well in this case, "Haulin' Oats" refers to the more crass "Haulin' ass". Not meant to tie in with the overly sensitive 80's band, though their ego seems to think so. Also, this granola company has used this name for many years. The aging rock duo only recently acquired the mark. Probably in an effort to stop the granola sales. Just my take on it.
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Cheryl, 9 Mar 2015 @ 7:31am

not so cut and dried
Well in this case, "Haulin' Oats" refers to the more crass "Haulin' ass". Not meant to tie in with the overly sensitive 80's band, though their ego seems to think so. Also, this granola company has used this name for many years. The aging rock duo only recently acquired the mark. Probably in an effort to stop the granola sales. Just my take on it.
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Anonymous Coward, 9 Mar 2015 @ 9:02am

Re: not so cut and dried
"Haulin' Ass". Maybe that could be them of their next album.
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Anonymous Coward, 9 Mar 2015 @ 9:03am

Re: Re: not so cut and dried
the name of
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Anonymous Coward, 9 Mar 2015 @ 9:32am

Another hit in the making
Oh, oh, here they come, watch out boys they'll chew you up. They're bran eaters.
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Anonymous Coward, 9 Mar 2015 @ 9:35am

Re:
If the trademark didn't already exist I would be against Hall & Oats. First I have never heard of Hall & Oats, and second Haulin' Oats sides exactly like granola or something similar. The first thing that came to my mind when I read the title of the company was a wheelbarrow full of oats being hauled into a barn. I believe your examples are poor because you chose a famous name and tried to convert it to a product. To me, Haulin' Oats looks like a product and the Musicians have a similar name.
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Peter CM (profile), 9 Mar 2015 @ 12:15pm

This doesn't bode well for my new brand of Boston baked beans for kids.
I was going to call it "Baby Beanies."
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Andrew D. Todd, 9 Mar 2015 @ 12:19pm

Trademarks for Nasty Food.
I don't know if this is a fundamental truth, but you would have to pay me to eat that kind of breakfast. A decent sort of light breakfast would be a "cafe complete," more or less. Coffee, according to your preferred method; orange juice from the refrigerator; some kind of fresh roll, even if it's only a hot dog bun, toasted in the toaster oven; and a jar of marmalade or raspberry jam, likewise kept in the refrigerator. Cheap, tasty, fast to prepare, and not a trademark in the thing. If you're stopping by a decent convenience store, on your way to work, you might expect to get some fresh fruit for a couple of dollars. An apple, an orange, a banana, or a cup full of grades or cherries. Good food is almost always generic, and, far from being driven by trademarks, it is named by Department of Agriculture nomenclature.

If you want to go up a notch, there is the famous "Kibbutz Breakfast," in which all food groups are represented.

https://www.techdirt.com/articles/20120703/14403819570/tv-analyst-kids-love-netflix-disn ey-should-break-them-that-nasty-habit.shtml#c789

The mere fact of something being effectually trade-markable is a point against it.
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art guerrilla (profile), 9 Mar 2015 @ 12:31pm

Re:
yes, thank you, annoyed the author glossed over that: on the face of it, it was wrong *then*, and it is wrong *now*, regardless of the 'legality' of it, as far as the original bullying that made a deal that didn't have to be...

evidently, two wrongs do make a right...
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OGquaker (profile), 9 Mar 2015 @ 12:37pm

Far more ass's than horses
I call H.S.
You can kill your horse with to rich a diet; thus the phrase 'feeling his oats'.
Horses were the transportation of my fathers childhood, thus the term 'teamster'. How the fringing can these music losers ever hold on to a trademark consisting of two words from common speech? I guess Americans haven't pulled wagons in commercial use for a requisite three years.
Just insert 'hauling oats' into Google'® https://books.google.com/ngrams/
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Anonymous Coward, 9 Mar 2015 @ 3:47pm

Re: Trademarks for Nasty Food.
some kind of fresh roll, even if it's only a hot dog bun
Interestingly enough, I think there are more than a few TD readers for whom this is prohibited.
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Anonymous Coward, 9 Mar 2015 @ 5:03pm

God forbid the fudge company would want to name their product Packin' Fudge. Frivolous IMHO.
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Coyne Tibbets (profile), 9 Mar 2015 @ 9:00pm

Hauling Notes
So what does that mean for my "Hauling Notes" app?
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nasch (profile), 9 Mar 2015 @ 9:06pm

Re: Trademarks for Nasty Food.
Steel cut oats would be a lot better for you than a hot dog bun.
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5upmushroom (profile), 10 Mar 2015 @ 7:01am

Re: Re:
i don't know... this sounds an awful lot like the very famous "I'm a kid so I've never heard of Elvis Parsely or whatever his name is" strategy. I don't listen to Hall and Oates and I couldn't name a single song of theirs, but it's not as if they are some second rate act. It's pretty much a guarantee that the Oat mfg naming their product know exactly who they are and fashioned their product's name after them.

I agree though, it does seem fishy if you don't know who they are. The trouble is that most everyone knows who they are, outside of your group of friends. Ask someone over the age of 30.

Also... really? You've never heard of them? The bad hair, the bushy mustache? It's like classic late 70s and early 80s bad fashion.
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John Fenderson (profile), 10 Mar 2015 @ 8:25am

Re: Re: Re:
I've always considered Hall & Oates to be the perfect representation of the '80s, both the good and bad parts.
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Anonymous Coward, 10 Mar 2015 @ 3:51pm

Mr. Geigner, maybe you should look into schooling Techdirt contributor Tim Cushing on intellectual property
Glad that the author of THIS Techdirt article appreciates the foul committed by the infringers, as opposed to Tim Cushing in his veritable hit-piece against Don Henley personally in the Techdirt article "Don Henley Sues Clothing Retailer Over Its Use Of Common English Words" where the infringer marketed shirts called "Henleys" with a single ad that reads, "DON A HENLEY and TAKE IT EASY." For the younger folks, "Take It Easy" was a big hit for The Eagles (of which Don Henley was a member) back in the day.
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Barbara Waxer (profile), 12 Mar 2015 @ 4:01pm

Hmm, look at the licensed Haulin Oats names
The company that sells the oatmeal with the licensed name has these gems on their products: My Cherry Amour, Scarborough Pear, and...Gettin Figgy Wit It. Now you know Will Smith ain't playin'. Who knows about Stevie Wonder and Simon or Garfunkle
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nasch (profile), 12 Mar 2015 @ 4:26pm

Re: Hmm, look at the licensed Haulin Oats names
Who knows about Stevie Wonder and Simon or Garfunkle

Scarborough Fair is a traditional song anyway, they would have no claim over a play on the title, only their specific arrangement and performances of it. I do like Gettin Figgy Wit It though.
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bradjj (profile), 6 Feb 2021 @ 4:07am

Really Nice
It is a big piece of information from your side. But we would miss our breakfast if we miss their timings of Hardees. Don't forget to know the breakfast hours from https://thebreakfasthours.com/hardees-breakfast-hours/ and Items unique for breakfast, Lunch.
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