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Federal judge sides with ExxonMobil on logo dilution by Fox FXX Channel

By: J. Werner
| Published 08/31/2014

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HOUSTON, Texas -- The oil company that proclaimed itself “America’s leading Energy Company,” has won the first round in protecting its interlocking Xs in the Exxon logo, which replaced the previous logo, ENCO (taken from the first two letters of the two words.)

'Exxpect' ExxonMobil to proceed with litigation.


After ten months, a federal judge has sided with the Exxon Mobil Corporation and allowed the oil company to proceed with its trademark dilution claims against Fox’s FXX Network over the interlocking double “XX” design in their logo. ExxonMobil is claiming that under Texas state law, the FXX is diluting the commercial impact of Exxon logo. Although ExxonMobil filed its suit in federal court, one of the claims it made against FXX was actually under Texas trademark dilution law.

This latest action is yet another by the oil giant to fiercely protect it’s Exxon logo since its introduction in 1972, per Tim Russell, author of Fill ‘er up!, the same year Exxon introduced it’s cartoon tiger with the slogan…”Put a tiger in your tank.” The tiger has become synonymous with the Exxon brand, and symbolic for the tenacity with which ExxonMobil goes after companies who infringe on their logos and iconic symbols. Ironically, their tiger was ferociously attacked by the Kellogg Company for being all too similar to ‘Tony the Tiger,’ the cartoon that has endorsed Frosted Flakes since the cereal was introduced in 1951. In that instance, ‘first mover advantage’ was not necessarily an advantage when going into a catfight with one of the world’s largest corporations.

In the case of Exxon versus Fox FXX, first mover advantage has come into play because the Texas' trademark dilution law would allow Exxon to prove it had a "famous" mark, its interlocking "XX" logo, in the state of Texas prior to the Fox Network’s FXX channel, allowing a court to block Fox from using the "XX" part of its logo anywhere in the state, and since FXX is a national cable network, Texas is not excluded.

It all comes down to ‘exxactly’ how the trademarks are registered. Fox registered a standard character trademark for "FXX," which was not opposed by Exxon. Standard character marks provide general protection over a name and spelling; federal courts have ruled that they do not make any claims on font, color, or size. In contrast, special form trademarks protect design elements like the interlocking Xs. Fox had not acquired a special form trademark for its interlocking Xs. Since there was no special form trademark covering the issue, there was no federal preemption of Exxon's claim about the style element of the two overlapping Xs.

Although most trademark claims under state law are preempted by federal law under the Lanham Act, federal judge, David Hittner, determined that in this case, Exxon could sue under Texas law, due to it relying on the difference between a standard character and "special form" trademark...that the double X is interlocking, making it unique, unlike other double-X companies: TJ Maxx, Nexxus, Dos Equis XX.

Judge David Hittner writes, “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. 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."

This is not the first time Exxon has ‘exxacted’ its pound of flesh for an infringement of the iconic interlocking XXs. Shortly after launching the Exxon brand, a mail order business immediately listed holiday greeting cards in its Christmas catalog, displaying Merry XXmas with interlocking Xs. The catalog company was promptly contacted, and the holiday cards were discontinued. Over forty years later, ExxonMobil will still sharpen its claws when its logos are infringed upon, thus the reason previous logos...Humble, ESSO, ENCO, are still used strategically in the organization.

The judge's ruling doesn't mean Exxon has won its Texas trademark dilution claim; it has just won the right to continue litigating the issue. ‘Exxpect’ ExxonMobil to go the distance.

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