XX Marks The Spot
Chances are, if you are reading this article on a computer or any other web-enabled device, then during the course of your life you have seen both an automobile and a television. If you have seen both an automobile and a television, then perhaps you may also be familiar with the two companies ExxonMobil and Twenty-First Century Fox, Inc. For those of you who do not recognize those corporations, ExxonMobil is the world’s largest publically traded international oil and gas company. Twenty-First Century Fox, Inc. is one of the largest mass media corporations in the world. In September of this year Twenty-First Century Fox Inc, launched a new network under the name and mark FXX. The fledgling network has established itself as a home for comedies, including It’s Always Sunny in Philadelphia and The League. However, for ExxonMobil this is no laughing matter.
The gas giant has filed a lawsuit in Texas federal court against the network, claiming that FXX’s logo, the letter F followed by interlocking XX’s, infringes on ExxonMobil’s own trademarks, and requests that the network’s pending trademarks be denied. (Read the full complaint here) ExxonMobil has continuously used the “Exxon” trademark since it was filed in 1971, and in 1998 Exxon filed another trademark to protect the use of the interlocking x design that they believe has become synonymous with ExxonMobil’s brand. In FXX’s branding and promotional materials, the network has depicted their logo without including the letter F, only using the interlocking XX’s. Because of this, ExxonMobil contends that FXX’s trademark is capitalizing on the notoriety of the gas company, causing consumers to confuse the two brands, and deceiving the public. ExxonMobil does not want FXX to create the impression that they endorse or are affiliated with the network’s views or programming.
In the complaint ExxonMobil even presented evidence that consumers noted similarity between the two brands. ExxonMobil cites comments on internet message boards which included “It looks like a misprinted Exxon Logo,” and “That FXX logo has got to go, that is awful on a plate. Also, Exxon is going to be pissed.” Complaint at 9, Exxon Mobil Corp. v. FX Networks, LLC, No. 13-cv-02906 (S.D. Tx 2013). Unfortunately, in this dispute, the words of these internet posters might be about as helpful to ExxonMobile as was the Exxon Valdez. The examining attorneys at the United States Patent and Trademark Office should look to the Du Pont Factors established in E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Of the 13 different Du Pont Factors, which range from the similarity of the marks to the potential for confusion, and the market interface between the original mark’s owner and the applicant for the new mark, the most significant would seem to be the nature and extent of any actual confusion.
ExxonMobile, whose trademarks are registered primarily in class 004, reserved for “Lubricants and Fuel” trademarks would not seemingly overlap or infringe on trademarks for the young network which occupy a space in class 038 for “Television Transmission and Broadcasting Services”. To that point Julie Henderson, a spokesperson for FXX noted in an email to Bloomberg, “We are confident that viewers won’t tune into FXX looking for gas or motor oil and drivers won’t pull up to an Exxon pump station expecting to get ‘It’s Always Sunny in Philadelphia.”
Unfortunately it seems ExxonMobile might be standing behind their case, looking at this from the view of Sunny’s Charlie Kelly screaming, “This isn’t over till I say it’s over!”