Posted: March 31st, 2013
By: Allison McCowan *
It might not come as a shock that you cannot name your computer company “Apple Computers” because, of course, the name is already trademarked by a huge multibillion dollar international company, Apple. However, the same obvious factor doesn’t ring true for all brand and company names. Surprisingly, if you were planning on launching a line of women’s sportswear with the name “Jesus Couture,” you are going to run into some problems because an Italian pants maker beat you to the “Jesus” name years ago.
In 2007, the U.S. Patent and Trademark Office granted ownership of the word “Jesus” to Jesus Jeans, owned by a publicly-traded Italian company, BasicNet, giving the company exclusive rights in America to sell clothing bearing the name “Jesus.” The Jesus Jeans trademark applies to clothing articles including jackets, vests, shirts, pants and belts. With the exception of the U.S. and the European Union, other countries haven’t been so keen to allow “Jesus” to be trademarked. BasicNet’s attempts to trademark “Jesus” have been turned down in Turkey, Uzbekistan, Tajikistan, Kyrgyzstan, China, Switzerland, Australia, Norway, and Cuba. Britain’s patent office rejected Jesus Jean’s application as “morally offensive to the public.” Britain’s patent office feared that the name “Jesus” would be “debased” if it were used to sell articles of clothing or other household products.
Since its successful trademark application, BasicNet has been crusading against other clothing companies that use the name “Jesus.” BasicNet has filed objections to clothing-lines named “Jesus First,” “Sweet Jesus,” and “Jesus Couture,” and has threatened to sue for damages when met with resistance. More recently, Jesus Jeans filed an objection to a start-up apparel company called “Jesus Surfed.” As crazy as it may sound, attorneys for Jesus Jeans argue that they are just trying to protect their brand, similarly as Nike or Apple would do. However, Jesus Jeans has pledged not to go after churches that attempt to use the “Jesus” brand. According to Domenico Sindico, general counsel for intellectual property at BasicNet, “[i]f somebody – small church or even a big church – wants to use ‘Jesus’ for printing a few T-shirts, we don’t care.” Sindico stated that BasicNet only cares when companies seek to commercialize their “Jesus” products.
In the majority of cases, the “Jesus” clothing competitors will back down and settle with Jesus Jeans. If met with any resistance Jesus Jeans has a history of threatening the opposing company with a lawsuit coupled with a request for damages. Even if a company doesn’t want to back down, it might not be worth the money and headache to fight.
The Jesus Jeans company trademark does not prevent any and every product from bearing the word “Jesus” – it merely ensures that in the area of clothing, all products bearing the word “Jesus” will be sold by only one company, “Jesus Jeans.” It would not stop a new Toyota “Jesus” car or Starbucks “Jesus” coffee from going on sale, but it would bar Toyota or Starbucks from selling T-shirts branded with the product’s name.
This conflict comes at an interesting time. In January 2013, the Benelux Office for Intellectual Property rejected a Dutch artist’s application to trademark the name “Allah.” Teun Castelein submitted his application to register a Gothic-style black-on-white logo for leather goods and clothing. Castelein was shocked to find that his application had been denied, especially considering that “Jesus” and “God” had already been accepted as registered trademarks. A legal consultant for brand protection understood how the Benelux Office for Intellectual Property rejected the bid because “Allah” lacked “a distinctive character,” however “it’s surprising that they chose this reason given that names such as Jesus or God Fix It have been registered as trademarks.”
* Allison McCowan is a third-year student at Wake Forest University School of Law and is President of the Domestic Violence Advocacy Committee. She holds a Bachelor of Arts in Psychology from Norwich University. Upon graduation in May 2013, Ms. McCowan intends to practice corporate law, commercial law, or alternative entity law in either Delaware or Washington D.C.