ExxonMobil settles trademark-infringement lawsuit against Fox

ExxonMobil Corp. has agreed to settle a trademark-infringement lawsuit over the FX Network LLC’s use of a logo that the oil giant claimed was similar to its own interlocking X mark, a few weeks before jury trial was supposed to begin.

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.

In September 2013, Fox launched a new television network under the name and mark FXX, and used an interlocking X to promote the network. Its logo consisted of the letters FXX in an interlocking X design.

ExxonMobil claimed it had invested millions of dollars developing and promoting its interlocking X logo, starting as early as 1971. Since 1987, ExxonMobil also claimed it has continuously used the Interlocking X as a stand-alone mark to promote its sale of motor fuels and other products and services.

ExxonMobil said in court filings that it “has actively policed and protected its EIX Marks, and has on numerous occasions taken action against others who used or attempted to register other marks incorporating a similar interlocking X design.”

The company said that “Because of these actions, ExxonMobil’s use of the interlocking X design featured in its EIX Marks has been substantially exclusive.”

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.

However, Fox pointed to other companies using double-X’s, including TJ Maxx, Nexxus, Dos Equis XX and Ferrari XX. Even though ExxonMobil owned a design mark over a stylized “Exxon,” Fox said there were limits to what Exxon could assert.

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.

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 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 case was scheduled to go to a jury trial in early November. However, both sides stipulated to a dismissal with prejudice last Friday.

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