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ExxonMobil Wins First Round in Lawsuit Over Fox's FXX Network Logo

A judge says that Fox's "standard character" trademark registration isn't enough to X out a dilution claim

Exxon Mobile Logo FXX Logo Split - H 2013

A Tex(x)as federal judge will allow ExxonMobil's claim that cable TV's FXX Network is diluting its trademark by interlocking the X's in a logo. To hold otherwise, concluded the judge on Monday, might lead to a lot of cross people at the U.S. Trademark Office.

The multinational oil and gas corporation brought the lawsuit last October, alleging that it has a design mark over a stylized Exxon and has continuously used it since 1971. The logo of the FXX Network, it says, "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."

When the lawsuit was filed, it was ridiculed by a spokesperson for the network, who said, "We are confident that viewers won't tune in to 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."

But when it came time to challenge the claims in court, attorneys for the entertainment company focused first on killing a claim under Tex(x)as state law that FXX diluted Exxon.

That brought both sides to Houston with XXcellently decorated legal briefs.

According to Fox, the state dilution claim was barred by the simple fact that it had registered FXX in "standard character" form. (It is also seeking to register FXX in "special form.") The defendant argued that Exxon had made a "strategic decision" not to oppose its standard character FXX registration, and that it was no surprise given that there were other double-X companies out there including TJ Maxx, Nexxus, Dos Equis XX and Ferrari XX.

Exxon shot back that registration in standard character form was only a limited benefit. If not, then the gas company could use McDonald's' stylized "M" in its famous "Golden Arches" without recourse. Or at least, without a dilution claim.

What seems to be the winning argument, though, is the prospect of a society that's so stylish, individuals and corporations begin fighting each other at the Trademark Office in anticipation of being ripped off.

"A standard character mark provides different protections than a special form mark, and as acknowledged by Defendants, parties have numerous reasons for often seeking registration of marks under one format, but not the other," writes Tex(x)as Judge David Hittner. "Based on the plain language of the statute, the Court therefore concludes that the phrase 'that mark' does not encompass unregistered stylized variations of a registered standard character mark. … A contrary interpretation could lead to a result of owners of trademarks featuring letters or numbers in design form necessarily opposing any trademark applications that incorporate the letters or characters for which the trademark owners' design marks cover."

It only took 10 months of litigation to get to this conclusion. The lawsuit now proceeds on ExxonMobil's other trademark and unfair competition claims too.

Email: Eriq.Gardner@THR.com
Twitter: @eriqgardner