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Trademark law can be colorful.
Last October, ExxonMobil sued 21st Century Fox over the FXX network’s logo. According to a lawsuit filed in Texas federal court, the multinational oil and gas corporation said it owned a registered design mark over a stylized EXXON and that by interlocking the X’s in its own logo, the FXX Network was confusing consumers and diluting ExxonMobil’s mark.
Since then, attorneys from both sides have been lobbing well-decorated legal briefs at each other. Here’s how this battle is playing out:
In December, Fox noted it already owned a federal trademark on FXX in “standard character” form. Fox also has two pending applications to register FXX in “special form” — its logo with interlocking X’s — but that the “standard” registration was sufficient to bar ExxonMobil’s state-based dilution claim. Why then register for the stylization too? Fox pointed to The Coca-Cola Company. According to Fox, “Coca-Cola also registered the stylized version of its mark because it (rightly) anticipated something like the [above], which does not use the words but instead trades on the stylization.”
Fox also told a Texas judge that Exxon had made a “strategic decision” not to oppose its standard character FXX registration at the Trademark Office. The entertainment company said that was “no suprise” given that Exxon had previously admitted that many firms used two X’s side by side. With pictures of companies including TJ Maxx, Nexxus, Dos Equis XX and Ferrari XX, Fox added, “Indeed, Exxon has a long history of coexistence with a plethora of standard character mark registrations containing an ‘XX’ element.”
Exxon responded that Fox’s reasoning would lead to “absurd and illogical results.” The gas giant said that if it was true that a registration in standard character form would lead extend all the rights and benefits of registration in a design or stylized mark, Exxon could take McDonald’s famous “Golden Arches” and the fast food chain couldn’t assert a state dilution claim to challenge such use.
In an attempt to demonstrate Fox’s allegedly “outrageous” argument, Exxon pointed to the city of Amarillo, Texas, who according to the plaintiff, “recently had an unfortunate situation where its new logo was purportedly copied from an existing design, resulting in a redesign of the logo and leading the local newspaper to sponsor a parody logo contest.” Exxon noted the above entry, which it said would “obviously violate the design marks of eight different trademark owners.” Accepting Fox’s theory, Amarillo could use this logo without fear of being sued, says Exxon.
Fox had to take Exxon to trademark school over this. The entertainment conglomerate said that the oil conglomerate didn’t know the distinction between stylized marks and design marks. So Fox drew a picture. According to its brief, “Nobody would contend that a ‘standard character’ registration covers the ‘designs’ on the left (above), but everyone would agree that the standard character registrations of COCA-COLA and UT include the ‘stylized letters’ on the right.”
And so, the case plays on. Fox looks to show its registration over the standard “FXX” means something. Exxon insists that Fox has crossed the lines with the interlocking X’s and that the pendency of its attempts to register a stylized form is what most matters.
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