The Italian apparel company that registered “Jesus” trademark goes after infringers
Back in 2007, an Italian clothing company, Jesus Jeans, registered the word “Jesus” with the U.S. Patent and Trademark Office, giving it exclusive rights to the name. Since then, the apparel line has gone after at least a dozen other clothing companies—mostly tiny, independent lines—that use the word “Jesus” without Jesus Jeans’ blessing. The latest company under attack is Jesus Surfed, a clothing line by Michael Julius Anton inspired by his time leading a singles ministry in Virginia Beach, VA. Anton claims he got the idea for his clothing company after organizing a spiritual beach retreat and thinking to himself that if Jesus were alive today, he would be a surfer (referring to Jesus’ ability to walk on water). After filing his U.S. trademark application, Anton received a letter from Jesus Jeans this past November requesting that he abandon the application and cease to use “Jesus Surfed” as a trademark for his clothing goods.
But how do you claim trademark rights to one of the most infamous figures in history?
U.S. law doesn’t restrict the registration of familiar terms, no matter how old or historic. But Jesus Jeans has not had the same luck in other countries. According to The Wall Street Journal, Jesus Jeans’ attempts to trademark “Jesus” in other parts of the world—such as Turkey, China, Switzerland, and Norway—have failed. Still, the company was able to secure a Community Trade Mark (CTM) that is valid across the European Union.
“If somebody, small church or even a big church, wants to use ‘Jesus’ for printing a few T-shirts, we don’t care.” Dominic Sindico, intellectual property counsel at Jesus Jeans’ parent company, BasicNet, told The Wall Street Journal. But when companies attempt to commercialize their products, “that’s a cause for concern,” he said.
Jesus Jeans is currently in settlement negotiations with Jesus Up, another small business that sells Jesus-themed t-shirts. Meanwhile, Anton is ready to fight the infringement claim. Just days ago, he filed an Answer to the Notice of Opposition by Jesus Jeans and Counterclaim with the Trademark Trial and Appeal Board (TTAB) to cancel Jesus Jeans’ trademark registration.
Anton’s Answer relies on the equitable doctrine of estoppel: Jesus Jeans argued that its application for the “Jesus” mark should be allowed to proceed over a likelihood of confusion rejection because the name “Jesus” is “highly diluted” in International Class 25, so, according to Anton, Jesus Jeans should be barred from taking the opposite position in the current proceeding. Anton’s counterclaim to cancel Jesus Jeans’ mark relies on disparagement and a false suggestion of connection with a person and/or belief (in this case, Jesus).
So what will the TTAB decide? Well, while U.S. trademark law prohibits the registration of immoral or scandalous marks, the use of “Jesus” on a pair of jeans does not meet the standard, even if some consider it to be in poor taste. What does matter is whether there is a likelihood of confusion between the two marks.
Have you heard of Jesus Jeans in the U.S.? Probably not. According to BasicNet, that may soon change. The parent company re-launched the Jesus Jeans brand in 2011 with a brand new image. Once the company reestablishes the brand in Italy, it plans to boost U.S. distribution with a marketing campaign centered on the ideas of “solidarity” and a “peaceful society,” according to The Wall Street Journal story.
So how likely is it that someone is going to confuse Jesus Jeans with Jesus Surfed? The answer to this question will be central to the outcome of this TTAB proceeding.