Fox and ExxonMobil have agreed to a settlement ending to a lawsuit over the FXX network logo. In September 2013, Fox launched a new television network under the name and mark FXX; Its logo consisted of the letters FXX in an interlocking X design.
Shortly after that, ExxonMobil sued Fox over the FXX logo which incorporated an interlocking X design. ExxonMobil lodged the complaint against FX Network, Twentieth Century Fox Film Corp., and Twenty-First Century Fox, Inc. in the U.S. District Court, Southern District of Texas (Houston Division) in October 2013.
ExxonMobil 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.
A spokesperson for FX network asserted, "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 said there were limits to what Exxon could assert. Notwithstanding the argument, a judge refused to dismiss a claim for trademark dilution under Texas law.
ExxonMobil demanded USD 20 million in damages, plus a royalty and attorney fees, for what it claimed was willful infringement of its interlocking X design.
According to ExxonMobil's court documents, FX employees were aware of the Exxon logo when the FXX logo was created, but failed to do a trademark clearance. ExxonMobil 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 Foxs bid for summary judgment on the issue of actual damages from direct injury. He pointed to ExxonMobil executive testimony that the plaintiff could not identify the loss of sales or other harm caused by the FXX mark. However, the judge left open the possibility that ExxonMobil 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. Both sides, though, stipulated to a dismissal with prejudice. Settlement terms with Twentieth Century Fox Film Corp. and Twenty-First Century Fox Inc. were not disclosed. Both parties agreed to pay their own costs for the two-year litigation.
