A s I write this, I’m curious how many of TYL’s readers actually remember the music group Hall & Oates. While I can’t say that I was rocking out at their concerts in the mid-1980s, I do remember my mom blasting their songs on the radio (“Kiss on My List,” “Private Eyes,” and, my personal favorite, “Maneater”) as she drove me to swim team practice. But, I digress.
This past March, the recent inductees into the Rock and Roll Hall of Fame filed a trademark infringement lawsuit against Early Bird Foods & Co. in New York federal court. Early Bird sells various flavors of granola, including “Haulin‘ Oats,” which apparently doesn’t sit well with the former rockers. Whole Oats Enterprises v. Early Bird Foods & Co., Case No. 1:15-cv-01124 (E.D.N.Y.).
The music group—operating under the name Whole Oats Enterprises—alleges that Early Bird is trading off of the fame and notoriety of the pop icons’ success. Specifically, Whole Oats alleges trademark and service mark infringement and unfair competition under the Lanham Act (15 U.S.C. § 1051, et seq.) and New York state common law. Congress enacted the Lanham Act in 1946 pursuant to its power under the Commerce Clause. The act governs trademark registration and infringement. The owner of a federally registered mark is protected under the act from another’s use of similar marks that are likely to result in confusion among consumers or, if the mark is “famous” (a term of art), dilution of the mark. States can also enact laws to protect trademark owners; these laws are concurrent with the federal law and not preempted by the act. Most states’ laws track the federal law, but it is important to review the specific jurisdiction’s laws in this area (statutory and common law) to best protect your client and their mark.
Typically, the first step when your client is concerned that another company is trading off of its mark is to send a cease-and-desist letter. Registrants take infringement of their intellectual property rights very seriously. Companies make a substantial investment in registering and protecting their name and marks. Federal law also requires registrants to protect their marks by policing unauthorized use of the marks. Of course, if your well-crafted cease-and-desist letter falls on deaf ears, litigation is likely to follow. According to the complaint filed by Whole Oats, it seems that this was the case here.
Based on the docket, Mr. Hall and Mr. Oates’s trip to the courthouse was short and sweet. The parties settled the lawsuit before getting deep into the throes of litigation, and the complaint was voluntarily dismissed at the end of April. Looks like “She’s Gone”—at least until the next company tries to trade off the fame of this musical duo.