Update: XX Marks the Spot: ExxonMobil vs. FXX in the Battle for Interlocking X’s
Last October, ExxonMobil sued 21st Century Fox over the FXX network’s logo. Exxon claims that it owns a registered design mark over a stylized Exxon and that FXX Network was confusing consumers and diluting Exxon’s mark by interlocking the X’s in its own logo. More specifically, Exxon claims that the FXX logo “is likely to cause confusion, to cause mistake, or to deceive customers and potential customers of the parties…as to some affiliation, connection, or association of Defendants’ business with ExxonMobil.” Exxon does not cite any specific evidence that consumers are confused about the source of origin of the FXX logo, but it does point to Internet postings from those who are “making an association.” Based on these findings, Exxon is claiming trademark infringement, a Lanham Act violation, dilution, unjust enrichment and unfair competition. The multinational gas and oil company is demanding a permanent injunction, trebled damages, and accounting of Fox’s profits resulting from Fox’s “wrongful activities.” When asked about the suit, a spokeswoman for FX Network responded, “this lawsuit is entirely meritless. 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.” a
In a brief in December, Fox pointed out that it already owned a federal trademark on FXX in “standard character” form, and that this trademark was sufficient to bar Exxon’s state-based dilution claim. A “standard character” form trademark consists of only words, letters, or numbers. In addition to this, Fox has two pending applications to register FXX in “special form,” which is a trademark that consists of stylized words, letters, numbers and/or a design element such as a logo. Fox said that registering for the stylized trademark, as well as the standard character form, protects the company from infringement not just of the words but also of the stylization. Fox used the below example of trading on stylization rather than words.
Exxon responded to Fox’s claim that a standard character form trademark would cover all of the rights and benefits of registration in a design or stylized mark by saying that this reasoning would lead to “absurd and illogical results.” Exxon said that if Fox’s reasoning was true, it could take McDonald’s famous “Golden Arches” and the fast food chain could not assert a state dilution claim to challenge such use.
Fox’s next brief raised a few issues in response to Exxon’s accusations. First, Fox points out that it is only claiming protection from a state dilution claim. Fox says that Exxon can still bring a federal dilution claim against Fox, and based on case law, should be bringing an action under the federal dilution statute rather than state dilution. Fox also points out that Exxon still can bring suit under federal trademark infringement, federal unfair competition, and common law trademark infringement. Fox says that these remedies would ensure that there would be no “absurd and illogical results” that Exxon was so worried about. Secondly, Fox said that Exxon did not understand the distinction between stylized marks and design marks. Fox contends that the wording of the mark necessarily includes stylized variations, and that it is entitled to all depictions of its standard character mark. Fox further explains the stylized vs. design mark by saying that a stylized version of a mark is the “stylized form of the block letter registration”, while “a design mark consists of or contains matter beyond the words,” such as graphics or designs. Fox provides examples of this in its brief with the images below, stating the two images on the left contain a “design” and the marks on the right are “stylized.”
In the battle of these two powerful companies, it will be interesting to see who comes out victorious in the interpretation of trademark law.