If You Take These Jeans' Name in Vain, Prepare to Meet Their Maker
Subtitle: Italian Apparel Company Registered 'Jesus' as Trademark, Protects It Devoutly, by J
ACOB G
ERSHMAN
Inspired by his time leading a singles ministry in Virginia Beach, Va., Michael Julius Anton came up with an idea for a clothing line that he thought was catchy and unique—"Jesus Surfed."
He was on good ground with "Surfed." But when he went to register the trademark, he found someone had beaten him to Jesus.
In a branding coup of biblical proportions, an Italian jeans maker persuaded the U.S. Patent and Trademark Office in 2007 to register the word "Jesus" as a trademark, giving the company exclusive rights in America to sell clothing bearing the name of Christianity's central figure.
Since then, the owner of the trademark, Jesus Jeans, has clamped down on Jesus-themed apparel, pitting its litigators against more than a dozen other startup clothing lines it claims appropriated "Jesus" without the company's blessing. The company doesn't have a trademark on images of Jesus, just the word.
Before taking on Jesus Surfed, Jesus Jeans objected to "Jesus First," "Sweet Jesus," and "Jesus Couture," among others, which abandoned their trademark efforts. In some cases, when met with resistance, Jesus Jeans warned that it could sue for damages.
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Attorneys for Jesus Jeans say they are just trying to protect the value of their brand—no different from Nike's
NKE +0.43% claim over the winged goddess of victory.
"If somebody—small church or even a big church—wants to use 'Jesus' for printing a few T-shirts, we don't care," said Domenico Sindico, the general counsel for intellectual property at BasicNet SpA,
BAN.MI -3.25% a publicly traded company based in Turin, Italy, that owns Jesus Jeans and the Kappa sportswear brand.
But when companies like Mr. Anton's seek to commercialize their products, "that's a concern," he said.
BasicNet first applied for a "Jesus" trademark registration in the U.S. in 1999, but it took another eight years for the trademark office to grant it. The Jesus Jean trademark covers clothing and sportswear, including jackets, vests, shirts, pants and belts.
The trademark office at first said the company's application was similar to other registered trademarks.
But it ultimately dropped its opposition after Jesus Jeans argued that its fashion goods wouldn't be confused with other trademarks that used the name of Jesus "because of the religious or personal reference."
Piety wasn't exactly evident in Jesus Jeans's first ad campaign in the 1970s, under different ownership. The spots featured the back of a woman in skimpy denim shorts under the slogan, "He who loves me follows me."
The ads scandalized many in Italy and were denounced by the Catholic Church.
Maurizio Vitale, an Italian entrepreneur and original owner of Jesus Jeans, thought of the name during a trip to New York City when he walked by a theater marquee for "Jesus Christ Superstar," according to Mr. Sindico.
"He decided Jesus could be used in a nonreligious context by representing the will to rebel and refusal to conform," Mr. Sindico said.
The brand faded from the marketplace after Mr. Vitale died in 1987. BasicNet acquired Jesus Jeans in the 1990s through a bankruptcy and relaunched the brand in 2011 with a mellower image.
The company's attempts to trademark "Jesus" have been turned down in pockets of the world. Turkey, Uzbekistan, Tajikistan and Kyrgyzstan have all refused the trademark, according to Mr. Sindico. So did China, Switzerland, Australia, Norway and Cuba, he said.
In 2003, Britain's patent office rejected its application as "morally offensive to the public," but Jesus Jeans registered "Jesus" through the European Union as a "Community Trademark," valid across the European Union.
Intellectual property lawyers say there is nothing in U.S. law that would prevent a company from claiming exclusive ownership of centuries-old names.
Some are dubious about the likelihood of consumer confusion between companies like Jesus Surfed and Jesus Jeans, a brand little-known to Americans.
But even if a company doesn't want to back down, "it may not be worth the money to fight," said Marc Reiner, an intellectual-property lawyer in New York.
Jesus Jeans says it is planning to ramp up U.S. distribution after relaunching the brand in Italy with a marketing campaign linking the brand to ideas of "solidarity" and a "peaceful society."
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Little of that spirit has worn off on Mr. Anton, the Jesus Surfed proprietor who is bracing for a fight. "Jesus Jeans has absolutely nothing to do with anything biblical," he said. "I didn't think it would be that big of a hassle."
Mr. Anton said he got the idea for his company after organizing a spiritual beach retreat under the theme "walk on water." He thought if Jesus were around today, he would be a surfer. So he registered jesussurfed.com and started selling T-shirts, hoodies and bandannas decorated with a silhouette of Jesus holding a giant surfboard under a palm grove.
After filing with the U.S. trademark office, Mr. Anton got an email in November from an American attorney representing Jesus Jeans, requesting that he abandon his application and agree not to use Jesus Surfed as a trademark on clothing goods.
The company specified that he could use the name only as a phrase in a "descriptive, religious, free speech, ornamental sense."
"If you agree to the foregoing proposal and comply with the proposal, then this matter will be amicably concluded," the letter stated. "If you do not agree, then Jesus Jeans reserves its right to an accounting/damages and all other appropriate relief with respect to your trademark and trademark application."
Mr. Anton says he is looking to hire a lawyer to fight the infringement claim.
Jeff Lamont is a California resident who owns a men's and women's collection of Christian-themed T-shirts called Jesus Up.
A part-time country singer, Mr. Lamont says he got the idea for Jesus Up a couple of years ago while recuperating from surgery. "I was in the backyard sitting on a boulder with staples in my belly, and I heard God tell me, 'Jesus Up,' " he said. "The name was so good and easy, like Coca-Cola
KO +1.03% . When I looked it up and it wasn't trademarked, I realized it was truly a gift from the Lord."
Jesus Jeans took a different view. It is demanding that Mr. Lamont scrap his plans to commercialize Jesus Up apparel and presented evidence at a patent trial, which the parties have agreed to suspend while they make another attempt at a settlement.
Said Mr. Lamont: "How anyone can claim the name Jesus for themselves and put a trademark on it is beyond me."
Write to Jacob Gershman (c/o the Wall Street Journal) at
jacob.gershman@wsj.com
