3:10pm PT by Eriq Gardner
Fox, ExxonMobil Hit Brakes on "FXX" Trademark Dispute
On the verge of trial, Fox and ExxonMobil have agreed to a deal that puts an end to a two-year-old lawsuit over the FXX network logo.
The multinational oil and gas corporation sued over the FXX logo which incorporated an interlocking X design. Exxon asserted "strong trademark rights in its famous interlocking X marks," and believed that consumers would likely be confused into believing some affiliation, connection or association.
At the time of the lawsuit filing, a spokesperson for FX network responded, "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."
In court papers, Fox pointed to other companies using double-X's and co-existing with Exxon including TJ Maxx, Nexxus, Dos Equis XX and Ferrari XX. Even though Exxon owned a design mark over a stylized "Exxon," Fox believed there were limits to what Exxon could assert. Notwithstanding the argument, a judge refused to dismiss a claim for trademark dilution under Texas law.
Exxon demanded $20 million in damages, plus a royalty and attorney fees, for what it believed was willful infringement.
According to Exxon's court documents, FX employees were aware of the Exxon logo when the FXX logo was created, but failed to do a trademark clearance. Exxon suggested this was "just one example in what has become a pattern of selecting marks with reckless disregard or willful blindness of others trademark rights. Notably, in response to being notified that Ferrari already used FXX, an FX executive stated that 'Well there was the car Infinity FX and that didn't stop us!' "
Fox responded that nobody mentioned Exxon during the creative process and when applying to register its own FXX mark, a search did not turn up anything of Exxon's that was likely to cause confusion or dilution. It pointed to the opinion of an examining attorney at the US Patent & Trademark Office who ruled there was no conflicting marks that would bar registration.
Last August, U.S. District Judge David Hittner granted Fox's bid for summary judgment on the issue of actual damages from direct injury. He pointed to Exxon executive testimony that the plaintiff couldn't identify the loss of sales or other harm caused by the FXX mark. However, the judge left open the possibility that Exxon could show that a reasonable royalty was in order as a measure of actual damages.
The dispute was scheduled to go to a jury trial on November 9. On Friday, though, both sides stipulated to a dismissal with prejudice. Terms of the settlement haven't been revealed. Fox has declined comment.
FX was represented by attorneys at Kilpatrick Townsend & Stockton. Exxon was attorneys at Beck Redden.