Jimmy Fallon’s Latest Legal Battle is “Electric”

Like many public figures, late-night TV host Jimmy Fallon is no stranger to legal disputes. But his latest battle, over his attempt to trademark the name and logo of his production company, is truly “electric.” In March 2023, Fallon filed applications for federal trademark registration for the name Electric Hot Dog and its logo, intending to use them for various goods and services, including entertainment services, board games, and clothing. Both applications were accepted by the appointed Examiner and ultimately were published for opposition— meaning the Examiner found no reason to reject the applications and published them for public comment prior to allowing registration. 

The Opposition: Electric Visual Evolution

In response, Electric Visual Evolution filed an opposition proceeding with the Trademark Trial and Appeal Board, claiming it has prior use of the term “Electric” in connection with clothing and accessories and that allowing the registration of Fallon’s marks for “Electric Hot Dog” for use in connection with clothing will create a likelihood of confusion in the marketplace. While it is clear the marks share the term “Electric” and are to be used in connection with clothing, Electric Visual Evolution may still have an uphill battle. 

What is Likelihood of Confusion?

As an initial matter, likelihood of confusion means a probability of confusion; a “possibility” of confusion is insufficient. Likewise, “marks must be compared in their entireties” and likelihood of confusion cannot be predicated on only part of a mark, while ignoring other parts of the same mark. Since it is the entire mark that consumers perceive, it is the entire mark that must be compared to another mark when determining whether a likelihood of confusion exists. The analysis often includes examination of the appearance, sound, and commercial impressions of the marks at issue. Similarity of the marks in one respect—even a dominant term within the mark—does not automatically result in a finding of a likelihood of confusion. Thus, even marks that share the same term can co-exist on the federal register, like “oatmeal raisin crisp” and “apple raisin crisp;” “Firstbank” and “First Bank Kansas;” and “Crystal Creek” and “Cristal.” As the party bringing the opposition, it will be Electric Visual Evolution’s burden to prove that Fallon’s use of “Electric Hot Dog” on clothing creates a likelihood of confusion with its “Electric” marks. Satisfying that burden will require Electric Visual Evolution to prove that a “reasonable person,” would look at two articles of clothing—one from “Electric” and the other from “Electric Hot Dog” and believe the two came from the same company.

The Challenges Ahead for Electric Visual Evolution

Not much regarding the outcome of this case is certain, given the unpredictable nature of opposition proceedings, but it does appear Electric Visual Evolution has a heavy burden to carry. Fallon’s answer in the proceeding is due October 2, 2024, and will give some insight into how the matter will progress.

For more information about trademark protection and the trademark registration process, see our trademark services practice page.

Klemchuk PLLC is a leading IP law firm based in Dallas, Texas, focusing on litigation, anti-counterfeiting, trademarks, patents, and business law. Our experienced attorneys assist clients in safeguarding innovation and expanding market share through strategic investments in intellectual property.

This article is provided for informational purposes only and does not constitute legal advice. For guidance on specific legal matters under federal, state, or local laws, please consult with our IP Lawyers.

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