FX facing mark’s F-X-Xtinction?

The name seemed silly from the moment those commercials started to run. You know them — the ones with the cast members of It’s Always Sunny in Philadelphia speaking to each other in what sounds, to the naked ear, like Swedish. The ad spots changed as the summer season rolled out on FX, but the punchline of each promo was always the same, with one cast member saying the name of the channel that the great comedy show was moving to. Repeat after Danny DeVito: “F-X-X.” These commercials were followed by the new channel’s logo, imploring fans of It’s Always Sunny … or The League to follow their favorite, upstart shows over to the new, upstart network.

But with the network’s September launch, Twentieth Century Fox, owner of FX and FXX, has caused quite an uproar in, of all things, the oil and gas industry. Two days ago, Exxon Mobil Corporation, better known as ExxonMobil, filed a lawsuit in federal court in the Southern District of Texas titled Exxon Mobil Corporation v. FX Networks, LLC, Twentieth Century Fox Film Corporation, and Twenty-First Century Fox, Inc., No. 13-cv-02906. ExxonMobil seeks unspecified damages for the defendants’ alleged trademark infringement, false designation of origin under the Lanham Act, dilution (federal and state), unfair competition in its use of the FXX mark and seeks to invalidate Twentieth Century Fox’s pending application for registration of the mark in the United States Patent and Trademark Office.

In the Complaint, the global gas and oil giant explains that it has used the EXXON mark, in which the Xs are “interlocking,” since 1971, meaning that Exxon has allegedly been using the mark continuously, in commerce, for over 40 years. Further to this point, in 1987 Exxon allegedly began using the interlocking X mark by itself — simply XX — and in 2000, after Exxon’s merger with Mobil, the supercompany began to use EXXONMOBIL, with the interlocking Xs.

The FX Network launched in 1994 and is now fairly standard in the typical cable subscriber’s home; as of August, the network could be found in, approximately 97 million homes. A month after that particular census was taken, FX launched FXX, replacing the now-defunct Fox Soccer Channel (of which the Insider was a big fan). According to the complaint, the defendants identify and promote the FXX network using “a logo that consists of the letters FXX in an interlocking X design,” a fact which seems indisputable.

ExxonMobil alleges that FX and Twentieth Century Fox have even gone so far as to promote the new network without the F preceding the mark (simply as XX, with interlocking Xs) in “at least one trailer” for the network shown on FX. However, despite the fact that “ExxonMobil [allegedly] contacted representatives of [the d]efendants expressing concern over their use” of the marks herein, and “requesting that [the d]efendants amend the FXX Logo to remove the interlocking X design … [the d]efendants refused this request.” Confused? So is the Insider. Twentieth Century Fox clearly has some explaining to do.

But does it have to change its proposed mark or modify its application for registration? While the Insider may be confused, the likelihood of confusion amongst consumers for either company’s products (gas or a new television network) is sure to be low. This hasn’t stopped ExxonMobil’s attempt to cite to, of all things, several message boards and comment sections to articles regarding FX’s upfronts, where it introduced FXX and its new logo, as “proof” of this likelihood of confusion. But there’s a problem with the “proof”. The commenters they cite to are not confused by the use of the mark. Indeed, while most of the commenters fancy themselves amateur (or, for all we know, professional) attorneys (“It looks like a misprinted Exxon logo” and “I agree, makes me think of the Exxon logo”), just because the mark may conjure up or may be evocative of Exxon’s interlocking Xs does not necessarily bring it into the realm of trademark infringement.

In any event, it does not appear that any of these readers are confused about sponsorship. No one thinks that ExxonMobil is, in some way, the originator or approves of the new mark. (As one commenter put it, “That FXX logo has to go, that is awful on a plate. Also, Exxon is going to be pissed.” This person is clearly not confused over sponsorship.) Further, while we mentioned that interlocking Xs in FXX are arguably evocative of those of ExxonMobil, the fact is that the second X is an addition to FX, and not just the X in FX (it’s really FX-X) — thus, ExxonMobil is arguably taking this out of context. While we’re at it, the mark “XXX” from the eponymously-titled Vin Diesel movie appears to have interlocking Xs, as well. But for some reason, with all due respect to Mr. Diesel, the movie, which made $200 million, didn’t cause quite the commotion that FXX has in the gas and oil company’s boardroom. It appears that this may have more to do with Rupert Murdoch’s deep pockets, and less to do with interlocking Xs than ExxonMobil is letting on.

An answer or motion is due from Twentieth Century Fox and FX in a couple of weeks. In the meantime, you can be sure that you won’t be seeing Danny Devito speaking in any language on your Gas Pump TV any time soon.

 

SOURCE: ECF Docket, Exxon Mobil Corporation v. FX Networks, LLC, Twentieth Century Fox Film Corporation, and Twenty-First Century Fox, Inc., No. 13-cv-02906, Southern District of Texas, Houston Division.

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