You’ve probably heard about the New York food distributor called Early Bird Foods, which sells “Haulin’ Oats” brand cereal. Hall & Oates wants them to stop. Naming food after celebrities is not news. It’s old. What about the “Mel Brooks” (pastrami, turkey and Swiss) or “Larry David” (corned beef, turkey, pastrami and Swiss) sandwiches at the late, great Stage Deli in New York? Having food named after you was almost like getting your star on the Walk of Fame in Hollywood. If it works for pastrami, doesn’t the same thing apply to granola?
The answer is: maybe yes, maybe no. When you ordered a sandwich at the Stage, did you understand that the name represents a favorite concoction of that star? Probably. Did you think that the celebrity vouched for the quality or supervised its preparation? I’m going to guess no.
Do you think Hall & Oates has gone into the food business? Might you think that, like “Newman’s Own,” they have let someone use their name for a product they like and endorse? If your answer to this is “yes,” you can step into the self-checkout lane marked “infringement.”
If you think that this is more of a play on words or satire, then you will want to check out the “parody,” or “fair use,” lane. You are not confused, you don’t believe this use influences your view of the duo touted as the best-selling musical duo of all time (you could look it up), you don’t find this to make its trademark any less valuable on the products if it wishes to use its mark on other products, and just generally, you “get it.” Haulin’ Oats. Hall & Oates. Very funny.
Did Babe Ruth mind when the “Baby Ruth” candy bar came out? You bet he did. The candy’s maker, Curtiss Candy, insists to this day (well, now Nestlé insists) that the bar had nothing to do with the Sultan of Swat, but was named after President Grover Cleveland’s daughter Ruth, who died at an early age. Of course, the bar made its debut in 1921, just when the Babe was taking over baseball by storm, and a dozen years after little Ruth Cleveland had passed away. Who was this product named after? It didn’t seem like a hard call to make. But, in fact, once someone wanted to put out a bar endorsed by Babe Ruth himself, it was too late. Curtiss was already there. A mere 70 years later, the candy maker and Babe Ruth’s heirs finally came to a licensing deal, and ten years after that there was a short time when the “Baby Ruth” was the official candy bar of Major League Baseball.
Would you believe that Whole Oats Enterprises (owned by Daryl Hall and John Oates) actually owns a federal trademark registration for “Haulin’ Oats” for oatmeal? They just purchased rights early this year from another individual using this mark since 2012. Just as Curtiss could block the Bambino himself from selling a “Babe Ruth” candy bar, Hall & Oates were actually beat to the punch in using what it claimed to be its own name. They had to try to re-claim rights in the name from some other prior user of “Haulin’ Oats” before they could attack Early Bird. A certain Ms. Levine had registered “Haulin’ Oats” with the Trademark Office. Eventually her company worked out a deal with Hall & Oates and sold their trademark rights to the brand. (Rumor is, by the way, that they probably bought it for a song.) But without that deal, maybe Early Bird could have prevailed.
If Early Bird had used the mark since before 2012, then they may have arguments in their favor. If the people who sold the trademark to Hall & Oates never really used this very significantly at all, that would be another weight on Early Bird’s scale.
Otherwise, the question simply comes down to use of identical marks on oatmeal versus granola, which all of a sudden is not such an interesting trademark dispute at all.
This post originally appeared on Forbes