Two little letters have caused a major controversy between corporate giants, culminating in a lawsuit filed by ExxonMobil against FX Networks LLC and its studio affiliates, Twentieth Century Fox Film Corp. and Twenty-First Century Fox Inc. In September, FX launched its new network FXX, complete with a new logo featuring interlocking X’s (pictured at left). ExxonMobil, an oil and gas giant, says this new logo infringes its trademark rights, which have long incorporated an interlocking-X design.

ExxonMobil’s infringement claim is based on the consumer confusion FXX’s new logo might cause in the marketplace. In its complaint [PDF], ExxonMobil includes evidence of Internet postings [subscription required] that show users associating this new FXX logo with ExxonMobil’s longstanding use of its interlocking-X logo. But how many consumers will really confuse this new logo with ExxonMobil’s? Or is the issue one of endorsement and affiliation confusion?

A spokeswoman for FX Networks sent a comment to Bloomberg, saying that “[w]e 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.’” However, ExxonMobil has, for decades, worked on building its brand through the use of trademarks, including some representations of the company using interlocking X’s alone, as well the “Exxon” and “ExxonMobil” branding. ExxonMobil does not want the public to become confused or assume some kind of relationship between the two companies: it has spent many years and millions of dollars building its brand’s goodwill, and it argues that allowing FX Networks continue using its interlocking-X logo would allow the network to capitalize on the brands ExxonMobil has worked to build.

When ExxonMobil requested that FX Networks alter its branding, the company refused, prompting this lawsuit to enjoin the network from using the design. Since trademark infringement claims focus on whether or not consumers will be confused, ExxonMobil is already building its case by compiling comments from the Internet that exhibit some confusion or assumptions that the new FXX logo is somehow associated with ExxonMobil.

At this point, neither company seems ready to back down from an impending fight over the use of interlocking X’s. ExxonMobil’s complaint clearly shows the company is prepared to defend the trademarks and brands it has built over many years. Nevertheless, FX Networks appears willing to fight for its new logo, evidenced by the comments made by its spokeswoman. The costs that these companies will incur, either through litigation or settlement negotiations, show the importance of researching trademarks before use. If FX Networks decides to fight this complaint in court, ExxonMobil will have an uphill battle to prove FX Networks’ new logo causes confusion for consumers in the marketplace.

Andrea Scheder

Image Source

[We maintain (1) that this image is not copyrightable for lack of Feistian originality (text); and (2) that this noncommercial trademark reference is a nominative (or other) fair use of this trademark. --Ed.]

2 Responses to ExxonMobil v. FX Networks: Battle of the X’s

  1. Bradlee Edmondson says:

    Reading ExxonMobil’s complaint in the case (currently only available on for-pay services, like WestLaw, Bloomberg Law, and even the government’s PACER), it claims that its “XX”-only mark is “famous,” along with its “ExxonMobil” and “Exxon” marks. While the latter two are certainly famous for trademark purposes (remember, this is a prerequisite for the broader dilution protection), the XX mark is much more questionable.

    I don’t think ExxonMobil will be able to prove famousness for the “XX”-only mark, but if it can, then the FX Networks’ use of “FXX” would probably be enough to establish dilution, which would allow ExxonMobil to prevent FX from using “FXX.”

    If we think of trademark law as giving up a general right to use language (though only in commerce), this would seem to mean that only ExxonMobile can use the interlocking XX’s, no matter how they are integrated into someone else’s mark. Though this would be a societal policy question, in my personal opinion, that seems like a lot to give up (especially absent compelling evidence that consumers are actually confused).

  2. Bradlee Edmondson says:

    At first I admit I thought this case was a completely ridiculous — you can’t claim infringement (or dilution) of just a small part of a trademark. However, I did a quick trademark search at the USPTO and found that ExxonMobil does have several registered trademarks on a black and white interlocking “XX” design.

    That design looks a lot more like what FX Networks came up with for its interlocking FXX logo, and it gets around the problem of having to claim infringement/dilution of just a part of a mark.

    However, while that does help ExxonMobil a bit, I still think they will lose on summary judgment. First, you can’t claim infringement of a registered mark outside of direct competition. Trademark offices, including the USPTO, require that mark owners categorize the kind of uses they currently (or plan to) make of the mark: pharmaceuticals, ingredients used in pharmaceuticals; airplane parts, etc. These categories are actually very specific. The mark I linked to above is registered for “Polymers, namely hydrocarbon-based plastic resins and tackifying resins for general industrial use,” and that’s it. Now, ExxonMobil does have registrations for identical marks in a number of other categories (search USPTO for “(Exxon)[ON] AND (xx)[MN]“), but none of them relate to delivering services or media content, so I think trademark infringement claims based on those marks will be non-starters for the oil giant.

    Second, you can only make a dilution claim for trademarks that are nationally famous, a pretty high hurdle. While the red ExxonMobil mark is certainly nationally famous, these other “XX”-only marks are certainly not. So I think that knocks out its dilution claims.

    The only way I see this going forward for ExxonMobil is if there are other trademarks I didn’t find in my search (a definite possibility), or on some kind of unfair competition claim (and it’s pretty hard to make this argument when you aren’t competing in the same market).

    It will certainly be interesting to watch how this shakes out.