Exxon Corp. v. Humble Exploration Co., Inc., Civ. A. No. CA-3-77-0734-J.
| Citation | 524 F. Supp. 450 |
| Decision Date | 29 September 1981 |
| Docket Number | Civ. A. No. CA-3-77-0734-J. |
| Parties | EXXON CORPORATION, et al., Plaintiffs, v. HUMBLE EXPLORATION COMPANY, INC., Defendant. |
| Court | U.S. District Court — Northern District of Texas |
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Patrick F. McGowan, Strasburger & Price, Dallas, Tex., David Ehrlich, David Goldberg, Kaye, Scholer, Fierman, Hays & Handler, Vincent F. Bick, Jr., New York City, for plaintiffs.
David Ford Hunt, Jenkens & Gilchrist, Roger C. Clapp, Dallas, Tex., for defendant.
This is an action for injunction against alleged infringement of the Plaintiffs' trademark and trade name "HUMBLE". The action arises under the Federal Trademark (Lanham) Act of 1946, as amended, 15 U.S.C. § 1051, et seq. Jurisdiction of the Court is grounded upon § 39 of the Lanham Act, 15 U.S.C. § 1121.
Plaintiff, Exxon Corporation, is a New Jersey Corporation and the successor to the Standard Oil Company of New Jersey and its subsidiary, the Humble Oil and Refining Company. Exxon Corporation and its predecessors have been the registered holders of the trademark "HUMBLE" since 1923, and presently hold eleven registrations for variations of that mark, nine of which are incontestable under federal law.
The other three Plaintiffs are wholly owned subsidiaries of Exxon Corporation with their principal place of business in Houston, Texas. Humble Oil and Refining Corporation is a Delaware corporation incorporated in September, 1968. Humble Gas Transmission Company, is a Nevada corporation incorporated in April, 1970. Humble Incorporated is a Delaware corporation incorporated in November, 1972.
The Defendant, Humble Exploration Company, is a Texas corporation incorporated in May, 1974. Humble Exploration Company is engaged in the business of oil and gas exploration in the State of Texas. The Defendant is not affiliated with the Exxon Corporation or its subsidiaries.
The controversy between the parties dates back to November, 1976, when the trademark protection department of Exxon Corporation became aware of the Defendant. On January 11, 1977, trademark counsel for Exxon Corporation notified the Defendant that its trade name, Humble Exploration Company, was an infringement of the Plaintiffs' trademark and trade name "HUMBLE," and demanded that use cease immediately. The Defendant responded by denying the allegation of infringement and refusing to change its corporate name.
The Plaintiffs then filed this action on June 2, 1977, seeking to enjoin the Defendant from use of the word Humble in its corporate name and activity.
The Plaintiffs' use of "HUMBLE" began over half a century ago with the incorporation of the Humble Oil and Refining Company in Texas. From 1917 through 1959 the Humble Oil and Refining Company engaged in all facets of the petroleum business, including petroleum exploration and marketing, and the wholesale and retail of crude oil and refined petroleum products. The Humble Oil and Refining Company used "HUMBLE" as a trade name and as a trademark and service mark for petroleum products and gasoline service stations. During this forty-year period the Humble Oil and Refining Company spent millions of dollars advertising "HUMBLE" in Texas.
In 1959 the Humble Oil and Refining Company of Texas merged with the Humble Oil and Refining Company of Delaware, the marketing arm of the Standard Oil Company of New Jersey. At the time of the merger the Texas corporation transferred its assets, including its trademarks, service marks, and good will to the Delaware corporation. The Delaware corporation continued to operate in the State of Texas under the name Humble Oil and Refining Company.
In the early 1960's the Humble Oil and Refining Company introduced a new marketing system for its products and services. At each service station across the United States a new primary trademark and trade name was adopted — an oval bearing the mark "ENCO" in the Western states and Texas, an oval bearing the mark "ESSO" in the Eastern states, and an oval bearing the mark "HUMBLE" in Ohio. The mark "HUMBLE" was retained as a secondary trademark and trade name, affixed in bold letters to the outer walls of each service station. The Humble Oil and Refining Company name continued to appear on the company's packaged products along with the regional trademark of the particular area of the sale. "HUMBLE" continued to be used as a national trademark on certain packaged products such as "HUMBLETHERM," heat transfer oil.
From 1960 through 1972 the Humble Oil and Refining Company grew to be one of the largest integrated oil companies in the United States. By the end of 1972 the Humble Oil and Refining Company had operations in 45 states with assets in excess of five billion dollars, and annual sales in excess of eight billion dollars. Also, by the end of 1972 over 20,000 gasoline service stations were affiliated with Humble Oil and Refining Company, 2,500 of which were in Texas. Between 1960 and 1972 the Humble Oil and Refining Company spent in excess of five million dollars annually on the advertisement of its trademarks and trade names.
In the early 1970's, the Standard Oil Company of New Jersey began searching for a strong national trademark to replace the regional trademarks "ENCO," "ESSO," and "HUMBLE." On November 1, 1972, after extensive research and testing, the Standard Oil Company of New Jersey changed its name to Exxon Corporation. On January 1, 1973, the Humble Oil and Refining Company merged with the Exxon Corporation and adopted the name Exxon Company U.S.A.
A changeover program was launched in late 1972 to transfer the good will associated with the regional trademarks to the trademark and trade name Exxon. Exxon Corporation spent over twelve million dollars advertising its name change. "ENCO," "ESSO," and "HUMBLE" ovals were removed from the service stations across the country and replaced by Exxon signs. All packaged products bearing the old regional trademarks were relabeled before distribution from the refineries. With the exception of the remaining packaged products at the service station level, the changeover was completed by the middle of 1973.
Since January 1, 1973, all of the business formerly conducted by the Humble Oil and Refining Company has been carried on by Exxon Company U.S.A. In 1979 the company spent more than five hundred million dollars on domestic exploration, one hundred fifty million dollars of which was spent in Texas.
Since the adoption of Exxon on January 1, 1973, the Exxon Corporation and its subsidiaries have neither advertised the "HUMBLE" trademark nor operated publicly under that trade name. However, a limited use of "HUMBLE" has been made pursuant to a resolution passed by the board of directors of Humble Oil and Refining Company before the changeover to Exxon.1 In October of 1973 the marketing division of Exxon Company U.S.A. began soliciting small sales of "HUMBLE" branded products from targeted customers. In 1973 three five-gallon pails of gasoline, totaling $9.28, were sold with the trademark "HUMBLE" affixed over the mark Exxon. No arranged sales of "HUMBLE" branded products were made in 1974. In 1975 the marketing division of Exxon Company U.S.A. solicited sales of "HUMBLE" branded oil in the amount of $57.71, five gallon pails of "HUMBLE" branded gasoline in the amount of $34.35, and "HUMBLE" branded grease in the amount of $48.06. In 1976 sales of "HUMBLE" branded oil were made in the amount of $42.05.
Beginning in the fall of 1977 a more extensive use was made of the "HUMBLE" trademark. At that time Exxon Company U.S.A. began modifying the drumheads of all 55 gallon drums of petroleum products sold for domestic distribution from the Exxon refinery in Baytown, Texas. On each drumhead the trademark "HUMBLE" was stenciled beneath the trademark Exxon. Since September of 1977 over 800,000 drums of petroleum products, totaling more than eighty million dollars have been sold bearing both trademarks.
In addition, after the changeover to Exxon the three Plaintiff subsidiary corporations, Humble Oil and Refining Corporation, Humble Gas Transmission Company, and Humble Incorporated, each retained its Humble trade name.2 Each corporation functions solely for trade name protection, and to that end each corporation has engaged in the limited sale of bulk gasoline and diesel. The marketing division of Exxon Company U.S.A. solicits sales of bulk products from targeted customers. The products are then shipped from Exxon refineries invoiced under the name of one of the three corporations. Since January 1, 1973, those sales have totaled over $395,000.
The Defendant's use of Humble began with its incorporation in May, 1974. In the beginning the Defendant's business was limited to making investments for friends and clients of its founders in the oil and gas operations conducted by others. In the latter part of 1977 the Defendant began to actively engage in the business of oil and gas exploration. Since then the Defendant has engaged in all facets of the exploration business, including geological testing, leasing, and drilling for oil and gas, and the marketing of the oil and gas...
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