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Posts in Trademark Law
ExxonMobil Sues FXX Claiming Trademark Infringement


The television industry was abuzz last week when ExxonMobil, one of the most successful oil companies in the world, filed a lawsuit against another world-class conglomerate, Twentieth Century Fox Television.  Why would a U.S. television network be the target of a lawsuit from a company that brings us gasoline at the local pump?

The answer lies in two crossed letters where "XXes”  mark the spot!

Take a look at the two logos below.  Exxon has been using its double-x symbol for decades (even before its association with Mobil). Fox just started the edgy FXX network (an offshoot of the FX Network) in the last year and ExxonMobil claims that "FXX," is infringing on its  US registered trademark by causing confusion in the marketplace.

The first question you might ask is, "What is a 'trademark'?

A "trademark" is a word or symbol that identifies the source of goods or services. Think of it this way:  when you see the iconic “Coca-Cola” symbol, you know that the drink inside the can comes from the Coca-Cola Company and the liquid inside is the drink we have all come to associate with that mark.  “Coca-Cola” is a U.S. Registered Trademark of the Coca-Cola company.

The United States is not the only country that affords trademarks protection under its laws. Trademarks are protected by laws throughout the world when they are legally registered and/or established by continuous use in the marketplace. The highest form of trademark protection in the U.S. is obtained through a registration process with the US Patent and Trademark Office (USPTO).  The 'Exxon' trademark has been registered with the USPTO  and in use since 1971.

So do you think that the FXX Network’s mark causes confusion in the marketplace with ExxonMobil?

Take closer look --

What is your reaction?

A spokesperson for the network told Bloomberg News that they 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."

Quips aside, we won't know the answer to this question right now, but the dispute between two titans points out some things that every business person should know.

First of all, branding your product or service is serious business. The task requires knowledge of the law and careful planning.  It can be difficult to create a new name that hasn't already been taken or that won’t infringe upon an existing mark.

For example, all of us do-it-yourself Californians know that the 'Home Depot' brand is identified by its name and color (bright orange). If someone started a business called ‘Home Center’ and branded it with the same type and color as Home Depot, would that be infringement? Would you be confused as to the ownership of the business?

In simple terms, if a mark is confusingly similar and a reasonable consumer would think there is a commonality of ownership, that's not permissible under the law.

So what should we conclude as the titans of industry battle it out in the courtroom (or settle in the boardroom)?   It is very important to research any proposed mark before it is put into use with a business to avoid the headaches (and legal costs) that will follow if you unknowingly create confusion in the marketplace.  Or as the age-old adage goes, “An ounce of prevention is worth a pound of cure!”

Read Full Complaint Here

Apple Calls Out the Kettle

Apple has had some difficulties obtaining a trademark for its App Store. The App Store runs on iOS (iPhone Operating System) and Mac OS X (Computer Operating System). Of course, the road bump they have hit has something to do with a little company named Microsoft. Microsoft filed an objection to Apples “App Store” trademark stating that the mark is too “generic”.  Apple shot back at Microsoft and the U.S. Patent and Trademark Office saying that they should be allowed to the ownership of the trademark just like Microsoft is allowed to own the mark to its operating system, “Windows”. Microsoft has had many challenges in the past registering the mark “Windows” due to its generic nature. This sounds to me like the pot is calling the kettle black.

Kudos to Chipotle's In-House Counsel

Chipotle Ad

While waiting in line to order delicious Chipotle tacos, I saw a sign advertising Chipotle's burritos in a box for large parties. The sign read: "THE REALLY BIG NATIONALLY TELEVISED FOOTBALL GAME PARTY IN A BOX". I figured that they were referring to the Superbowl and I wondered why they just didn't use the word "Superbowl". So, I did a quick Google search. The NFL owns the Trademark to the name "Superbowl" and many other marks relating to "The Big Game". They are very, very well protected. Here is just a brief example of the terms:

Without clear permission of the NFL, broadcasters and other media may not use the following terms or images: "Superbowl", "Superbowl Sunday", the Superbowl logo, "NFL", "National Football League", "AFC", "American Football League", "NFC" or "National Football Conference".

The Trademarks listed above can be licensed for a price. For example, if you wanted to put the word "Superbowl" on a bag of chips, you would have to pay a licensing fee. So, maybe Chipotle's ad was their legal teams way of getting around the licensing fee. If so, kudos to you In-House Counsel. OR, was it intentional? The ad does fit very well with their company brand and advertising style. If the concept of the ad was to be clever by not using the word "Superbowl", I still give props to Chipotle's legal department and, in addition, their advertising team for legally and with great brilliance conveying their message.

Choosing Your Brand: What’s in a Name?

Have you ever heard of American Family Life Assurance Company?  Admittedly, it’s a pretty lousy name from a branding point of view – it’s boring, institutional and cold.  Equally unimpressive in the world of trademarks as well.

We normally think of trademarks on a spectrum, from least likely to obtain registration (i.e., least distinctive) to most likely (inherently distinctive).  It goes something like this:

Generic – common names for products, virtually unprotectable from a registration standpoint.  Think “Bread” for bread.  No, really.  It’s that bad.

Descriptive – established meaning used to describe goods and services within that meaning, no imagination required to know what they mean, not protectable.  Think “Fast Car” for the new Ferrari.

Suggestive – crossing over into distinctive, require imagination to connect to goods or services.  Think “Greyhound”.

Arbitrary – think “Apple” for computers – no relation to the product/goods and services

Fanciful – invented or coined as a mark, never existed before.  Think “XEROX”

What we often encounter is emotional attachment to marks and branding at early stages of development, without thinking it all the way through.  By not thinking it through, I mean not consulting a professional to do some diligence before all the inertia is thrown at a new product, service, or brand.  Establishing a mark means layers of evaluation – where does it fit on the spectrum?  Who else is in the market?  How far do we need to look?  Obtaining federal trademark registration is a big deal and it carries with it a host of big remedies and powers.  Registration alone doesn’t mean you have a great mark, nor that it enjoys its own real space in the market and can be enforced with conviction.  Take the time to investigate the marketplace before you launch, brand, market, or even circulate a business plan.   Find a qualified professional to help you navigate the maze.

American Family Life Assurance Company rebranded as……yes, AFLAC.  AFLAC gave birth to the duck that we all know.  Quite a difference.