Exxon Corp. v. Oxxford Clothes, Inc., Nos. 96-20398

CourtUnited States Courts of Appeals. United States Court of Appeals (5th Circuit)
Writing for the CourtBefore KING, GARWOOD and PARKER; GARWOOD
Citation109 F.3d 1070
PartiesEXXON CORPORATION, Plaintiff-Appellee, v. OXXFORD CLOTHES, INC. and Oxxford Clothes XX, Inc., Defendants-Appellants.
Decision Date10 April 1997
Docket Number96-20520,Nos. 96-20398

Page 1070

109 F.3d 1070
42 U.S.P.Q.2d 1417
EXXON CORPORATION, Plaintiff-Appellee,
v.
OXXFORD CLOTHES, INC. and Oxxford Clothes XX, Inc.,
Defendants-Appellants.
Nos. 96-20398, 96-20520.
United States Court of Appeals,
Fifth Circuit.
April 10, 1997.
Rehearing and Suggestion for Rehearing
En Banc Denied May 14, 1997.

Page 1072

Appeals from the United States District Court for the Southern District of Texas.

William Charles Slusser, Richard S. Siluk, Claudia Wilson Frost, Joan Alison Juban, Baker & Botts, Houston, TX, for Exxon Corp.

Alex A. Alston, Jr., Terryl Kimbrell Rushing, Alston, Rutherford & Van Slyke, Jackson, MS, Thomas Clower Harvey, Jr., Nashville, TN, Steve W. Rosenblatt, Rosenblatt & Redano, Houston, TX, for Oxxford Clothes, Inc. and Clothes XX, Inc.

Before KING, GARWOOD and PARKER, Circuit Judges.

GARWOOD, Circuit Judge:

Defendants-appellants Oxxford Clothes, Inc., and Oxxford Clothes XX, Inc. (Oxxford), appeal the district court's judgment dismissing Oxxford's affirmative defense of naked licensing and Oxxford's state law dilution counterclaim in this trademark dispute with plaintiff-appellee Exxon Corporation (Exxon). We affirm.

Facts and Proceedings Below

Both the "Exxon" mark and the complementary stylized interlocking "XX" symbol have been used by Exxon since the early 1970's, both marks receiving federal registration in 1972. In 1949, Oxxford federally registered as a trademark the name "Oxxford," written in the romanized alphabet but not including any stylized or interlocking "XX" design.

Page 1073

For more than two decades Exxon has aggressively protected its mark from infringement and/or dilution by seeking out and negotiating with other companies using marks similar to its own. In lieu of conclusive litigation, many of these companies opted to enter "phase out" agreements with Exxon in which the other company agreed that after existing stores of stationary, advertising materials, and products bearing the offending mark were exhausted, use of that mark would be discontinued. These phase out periods afforded the potentially infringing or diluting companies time to develop and implement a new mark. The phase out agreements did not contain any quality control mechanisms ensuring the quality of goods or services offered under the offending mark during the phase out period. 1

In 1993, Oxxford began using a trademark featuring an interlocking "XX" design virtually identical to that long previously registered by Exxon. Exxon filed suit against Oxxford 2 in October of 1994, complaining that Oxxford's use of the interlocking "XX" design infringed its federally-registered trademark, diluted Exxon's mark, and otherwise constituted an unfair business practice. Exxon amended its complaint twice, ultimately dropping all but its Texas law dilution claim. 3

In response to Exxon's second amendment of its complaint, Oxxford filed an amended answer raising a bevy of affirmative defenses, prime among these being an assertion that Exxon's phase out agreements with other allegedly infringing and diluting companies constituted "naked licenses." The gist of Oxxford's argument was that these agreements, insofar as they authorized third parties to continue to use infringing or diluting marks with Exxon's knowledge and approval, were "licenses"; and, because these "licenses" contained no quality control provision, they were "naked licenses" which, under prevailing law, could lead to forfeiture of Exxon's rights in its licensed marks.

On May 31, 1995, Oxxford filed a counterclaim alleging that, under Texas law, Exxon's use of its trade name, "Exxon" (without regard to the interlocking "XX" design), had diluted or tarnished its name and registered mark, "Oxxford." The basis of Oxxford's claim was a purported ease of association between "Exxon" and "Oxxford" which might lead aspects of Exxon's alleged corporate reputation for general greed and environmental destructiveness to be negatively attributed to Oxxford. The requested relief was that Exxon be enjoined from using its registered marks.

Both parties filed a plethora of motions, the pertinent ones for purposes of this appeal being cross-motions for summary judgment on Oxxford's affirmative defenses, motions by Exxon to dismiss Oxxford's dilution counterclaim and to strike portions of that counterclaim, and a motion for partial summary judgment by Oxxford challenging Exxon's laches defense to its counterclaim.

On March 18, 1996, the district court entered a memorandum opinion and order in which, inter alia, it granted Exxon summary judgment on Oxxford's affirmative defense of naked licensing. The district court concluded that Exxon's phase out agreements were not licenses because, contrary to Oxxford's assertion that the agreements permitted

Page 1074

third parties to continue misleading uses of Exxon's mark, the phase out agreements were in fact an appropriate mechanism for halting such activities, i.e., legal settlements which ultimately secured Exxon's rights in its marks while avoiding the time and expense associated with trademark litigation. The district court also opined that the allegedly infringing and/or diluting companies which were party to these phase out agreements would have had no interest in being associated with Exxon and thus no reason to consent to the quality control provisions; therefore, imposing such a condition would have led these third parties to balk at entering the phase out agreements, limiting the utility of these devices in the resolution of trademark disputes. Finally, noting that the failure to prosecute or pursue infringers or diluters does not necessarily result in forfeiture of the trademark holder's exclusive rights in the mark, the district court posited that "[i]t would be anomalous for the Court to find facts supporting abandonment because Exxon has a strong enforcement program."

The district court also rendered summary judgment in Exxon's favor on Oxxford's tarnishment-dilution counterclaim. The district court rested its ruling on three separate determinations: 1) "Oxxford" is not a distinctive mark; 2) Oxxford failed to show that its mark had been used in an "unwholesome context" by Exxon; and 3) because Oxxford knew of the similarity between the marks for over twenty years and failed to act, the counterclaim is barred by laches. Based on the dismissal of Oxxford's counterclaim, the district court also granted Exxon's motion to strike those allegations in Oxxford's counterclaim impugning Exxon's reputation.

The district court entered an order certifying the dismissal of Oxxford's counterclaim as a partial final judgment under Federal Rule of Civil Procedure 54(b). The district court also certified the order dismissing Oxxford's affirmative defenses for interlocutory appeal pursuant to 28 U.S.C. § 1292(b). 4 Oxxford timely noticed an appeal from the Rule 54(b) judgment, and also petitioned this Court for interlocutory appeal under section 1292(b). Permission to pursue an interlocutory appeal was granted, and both appeals were docketed and later consolidated for purposes of oral argument and final disposition.

Discussion

Oxxford appeals the district court's grant of summary judgment rejecting its affirmative defense of naked licensing and its tarnishment-dilution counterclaim. 5 Accordingly, the admissible evidence proffered by Exxon "must demonstrate the absence of a genuine issue of material fact, but need not negate the elements of [Oxxford's claim and defense]." Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir.1994) (en banc) (citations omitted) (internal quotation marks omitted). If Exxon meets this burden, then Oxxford is compelled to go beyond its pleadings and designate, by competent summary judgment evidence, specific facts which demonstrate genuine triable issues. Celotex Corp. v. Catrett, 477 U.S. 317, 324-325, 106 S.Ct. 2548, 2553-2554, 91 L.Ed.2d 265 (1986). This formula does not vary where Exxon is the plaintiff challenging Oxxford's affirmative defense; because Oxxford bears the ultimate burden of persuasion at trial on its naked licensing defense, it must (provided Exxon has met its summary judgment burden) present admissible evidence legally sufficient to sustain a finding favorable to Oxxford on each element of that defense.

Page 1075

Crescent Towing & Salvage Co. v. M/V Anax, 40 F.3d 741, 744 (5th Cir.1994). In reviewing the district court's judgment, we consider the record de novo. Wittorf v. Shell Oil Co., 37 F.3d 1151, 1154 (5th Cir.1994).

I. Naked Licensing Defense

We consider first Oxxford's claim that the district court erred in granting Exxon summary judgment on Oxxford's affirmative defense of naked licensing. 6 A naked license is a trademark licensor's grant of permission to use its mark without attendant provisions to protect the quality of the goods or services provided under the licensed mark. Moore Business Forms, Inc. v. Ryu, 960 F.2d 486, 489 (5th Cir.1992); Taco Cabana Intern., Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1121 (5th Cir.1991), aff'd, 505 U.S. 763, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). A trademark owner's failure to exercise appropriate control and supervision over its licensees may result in an abandonment of trademark protection for the licensed mark. Id. See Carl Zeiss Stiftung v. V.E.B. Carl Zeiss, Jena, 293 F.Supp. 892, 918 (S.D.N.Y.1968) ("a 'naked' license may be the basis for an inference of abandonment where the licensor maintains no control over the quality of goods made by the licensee") (emphasis added; citation omitted), aff'd as modified, 433 F.2d 686 (2nd Cir.1970), cert. denied, 403 U.S. 905, 91 S.Ct. 2205, 29 L.Ed.2d 680 (1971). Because naked licensing is generally ultimately relevant only to establish an unintentional trademark abandonment which results in a loss of trademark rights against the world, 7 the burden of proof faced by third

Page 1076

parties attempting to show abandonment through naked licensing is...

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176 practice notes
  • Goldman v. Williams, Civil Action No. H–14–433.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas
    • April 1, 2015
    ...which the nonmovant bears the burden of proof. See Celotex Corp., 477 U.S. at 322, 106 S.Ct. 2548; Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 1074 (5th Cir.1997).If the moving party carries its burden, the nonmovant may not rest on the allegations or denials in his pleading but mu......
  • Cottonwood Financial Ltd. v. the Cash Store Financial Serv. Inc., Civil Action No. 3:10–CV–1650–N.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Northern District of Texas
    • March 31, 2011
    ...that tarnishes or appropriates the goodwill and reputation associated with the plaintiff's mark.” Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 1081 (5th Cir.1997) [hereinafter Oxxford ] (citing 3 J. Thomas McCarthy, Trademarks and Unfair Competition §§ 24:67–69 (2d ed. 1984) [herein......
  • Lottinger v. Shell Oil Co., No. CIV. A. H-99-2103.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas
    • May 16, 2001
    ...505 (5th Cir.1999), cert. denied, 528 U.S. 1160, 120 S.Ct. 1171, 145 L.Ed.2d 1080 (2000) (citing Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 1074 (5th Cir.), cert. denied, 522 U.S. 915, 118 S.Ct. 299, 139 L.Ed.2d 231 (1997)); see Fontenot v. Upjohn Co., 780 F.2d 1190, 1194 (5th Cir......
  • Gen. Motors Co. v. Urban Gorilla LLC, Civil No. 2:06-CV-00133 BSJ
    • United States
    • United States District Courts. 10th Circuit. United States District Court of Utah
    • December 27, 2010
    ...granted assurances. Sweetheart Plastics v.Page 45 Detroit Forming, 743 F.2d 1039, 1046 (4th Cir. 1985); Exxon Corp. v. Oxxford Clothes, 109 F.3d 1070, 1076 n. 7 (5th Cir. 1997); National Football League v. Rondor, Inc., 840 F. Supp. 1160, 1167 (N.D. Ohio 1993); Adidas Am., Inc. v. Kmart Cor......
  • Request a trial to view additional results
177 cases
  • Goldman v. Williams, Civil Action No. H–14–433.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas
    • April 1, 2015
    ...which the nonmovant bears the burden of proof. See Celotex Corp., 477 U.S. at 322, 106 S.Ct. 2548; Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 1074 (5th Cir.1997).If the moving party carries its burden, the nonmovant may not rest on the allegations or denials in his pleading but mu......
  • Cottonwood Financial Ltd. v. the Cash Store Financial Serv. Inc., Civil Action No. 3:10–CV–1650–N.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Northern District of Texas
    • March 31, 2011
    ...that tarnishes or appropriates the goodwill and reputation associated with the plaintiff's mark.” Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 1081 (5th Cir.1997) [hereinafter Oxxford ] (citing 3 J. Thomas McCarthy, Trademarks and Unfair Competition §§ 24:67–69 (2d ed. 1984) [herein......
  • Lottinger v. Shell Oil Co., No. CIV. A. H-99-2103.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas
    • May 16, 2001
    ...505 (5th Cir.1999), cert. denied, 528 U.S. 1160, 120 S.Ct. 1171, 145 L.Ed.2d 1080 (2000) (citing Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 1074 (5th Cir.), cert. denied, 522 U.S. 915, 118 S.Ct. 299, 139 L.Ed.2d 231 (1997)); see Fontenot v. Upjohn Co., 780 F.2d 1190, 1194 (5th Cir......
  • Gen. Motors Co. v. Urban Gorilla LLC, Civil No. 2:06-CV-00133 BSJ
    • United States
    • United States District Courts. 10th Circuit. United States District Court of Utah
    • December 27, 2010
    ...granted assurances. Sweetheart Plastics v.Page 45 Detroit Forming, 743 F.2d 1039, 1046 (4th Cir. 1985); Exxon Corp. v. Oxxford Clothes, 109 F.3d 1070, 1076 n. 7 (5th Cir. 1997); National Football League v. Rondor, Inc., 840 F. Supp. 1160, 1167 (N.D. Ohio 1993); Adidas Am., Inc. v. Kmart Cor......
  • Request a trial to view additional results

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