Can the PTO find its way with Jesus?

• Author: Burgunder, Lee B.
• Position: Patent and Trademark Office

INTRODUCTION I. HOW DID ANYONE BESIDES JESUS GET A REGISTRATION FOR JESUS? A. Jesus[R] Creates Doubts about Other Trademarks for Jesus II. IS IT OFFENSIVE TO OWN RIGHTS TO JESUS? III. WHAT DO YOU MEAN I CAN'T SAY THAT ABOUT JESUS? A. Are Statements about Jesus on Expressive Products Functional? B. Can Statements about Jesus on Expressive Products Be Distinctive? C. Does the First Amendment Trump Trademarks for Statements about Jesus? IV. SWEET JESUS, IT'S JUST A TRICK! CONCLUSION INTRODUCTION

Recently, several newspapers and media sources reported that an Italian apparel company had registered the word "Jesus" as a trademark in the United States for clothing and other goods, and was wielding its trademark as a weapon against other companies that were seeking rights to use the name of Jesus with their wares. (1) For instance, among other actions, the company filed oppositions to prevent trademark registrations for Jesus First, Sweet Jesus, JesusUp and Jesus Couture, which in each instance was enough for the applicants to give up without a fight. (2) One company, though, with an application for Jesus Surfed, initially decided to hold its ground by challenging the opposition and calling for the cancellation of the JESUS mark due to disparagement. (3) This article argues that the Patent and Trademark Office ("PTO") made the correct call regarding disparagement in this instance. However, the agency was wrong to grant one company the power to exercise excessive control through trademarks over use of the word "Jesus" on products, such as t-shirts, that are often used to portray an owner's personality, preferences or emotions (hereinafter called "expressive products"). (4) The article also explains that the PTO has been too quick to sanction other phrases that include "Jesus" within them, and should start requiring proof of secondary meaning before registering them as standard character marks for expressive products. (5)

1. HOW DID ANYONE BESIDES JESUS GET A REGISTRATION FOR JESUS?

   The PTO has been registering trademarks that include the word "Jesus" since the 1960's for all kinds of merchandise, including expressive products, which are the focus here. (6) A quick trademark search shows that there currently are over 500 live applications or registrations for such marks. (7) The Lanham Act actually prevents registration of matter that may "falsely suggest a connection with persons, living or dead." (8) This provision is primarily intended to align federal registration principles with publicity and sponsorship rights. (9) Although the PTO, in theory, might have attempted to use this clause to prevent registration for all uses of the term "Jesus," it has chosen to not do this, presumably because few people would believe that Jesus or his heirs have endorsed the products bearing his name. (10) For the same reasons, the PTO has allowed registrations for the names of other historically famous figures, such as MADONNA, (11) DA VINCI, (12) REMBRANDT, (13) and BEETHOVEN. (14)

   The PTO considers several factors when it reviews trademark applications, including those for Jesus-related marks. First, it considers if the word "Jesus," by itself or with other terms, is generic for the product in question. As an analogy, the agency would not register the single word "shirt," for a shirt because the term is generic for the product. The rationale for the denial is that a generic word cannot be a distinctive indicator of source. (15) Rather, consumers will understand it as the name of the product class. (16) Additionally, allowing one company to obtain exclusive rights to a generic term would be economically unfair to competitors since they would have to overcome the barrier of informing customers that they sell equivalent products. (17) Trademarks, after all, are only intended to streamline the search process for consumers without providing inherent competitive advantages. (18) Thus, the PTO might take issue with an application for "Jesus" if it were to serve as a trademark for, let say, a baby Jesus doll. However, the PTO assumes that "Jesus" is not the generic term for the usual array of expressive products, and therefore doesn't raise the issue in the application process. (19)

   The PTO also does not immediately register descriptive terms because customers at first understand them as descriptions of the products rather than as designators of source. (20) Thus, it would initially refuse registration of the term "Wrinkle-Free-Tee" for a no-iron t-shirt because, when first used, it primarily describes the product. In addition, registration might disadvantage some competitors since there is a limited supply of equally effective descriptive terms. (21) Over time though, due to factors like exclusive use and advertising, customers might begin to understand that "Wrinkle-Free-Tee" represents a particular source of no-iron t-shirts. (22) In this way, it has acquired an additional meaning beyond the description, which is as a designator of product source. (23) In this event, the word is said to have attained "secondary meaning" and thereby satisfies the appropriate function of a trademark. (24) Under these circumstances, customers might become confused if other companies were then permitted to use the term because it now has source-designating qualities. (25) Although registration would provide a company with exclusive rights to one of the few good ways to describe the product, the dangers from source confusion outweigh the potential negative effects on competitors, which still would have several other descriptive terms at their disposal. (26) Thus, the PTO will register descriptive terms, but only after the applicant proves secondary meaning. (27) Regarding the word "Jesus," the PTO again apparently takes the position that the term does not describe the qualities of a shirt or mug and so does not consider descriptiveness to be a barrier to registration. (28)

   Although use of the term "Jesus" may not be generic for, or descriptive of typical expressive products, applicants also must prove that their use is distinctive from previous trademark registrations or uses of the term. (29) Since the PTO has approved dozens of registrations for phrases using the word Jesus on expressive products, a major hurdle for an applicant is convincing examiners that consumers would perceive the proposed use of "Jesus" as distinctive from existing uses of the name. In this regard, the sheer number of uses has worked to the advantage of applicants, since consumers are forced by such pervasiveness to primarily rely on elements besides the word Jesus to distinguish similar products in the marketplace. (30) For this reason, the PTO might be willing to register both JESUSROCKS and JESUSRULES for similar products, despite the common uses of the word "Jesus," because consumers will tend to ignore that overlap and focus instead on the other words to distinguish source. (31)

   This background leads to a surprising story about how a firm registered JESUS in the United States for numerous kinds of clothing, including pants and t-shirts. (32) An Italian business that sold Jesus Jeans obtained a community trademark registration in the European Union for the sole word "Jesus" as applied to a wide spectrum of merchandise, although the applications were rejected in several countries, including Britain. (33) In 1999, the firm applied to obtain trademark rights in the United States based on the European registration. (34) The advantage of this process is that the foreign company did not have to demonstrate use in the U.S. to receive the initial registration, as long as it complied with all the other requirements, such as proving distinctiveness. (35) The PTO at first denied the registration due to the likelihood of confusion with several other previous registrations of marks that include the word "Jesus" for similar kinds of products. (36) However, the company ultimately convinced the PTO that the use of "Jesus" was so pervasive and diluted that it should essentially be ignored when comparing uses for similarities and potential confusion. (37) It claimed that its ownership of "Jesus" would be a "satisfactory addition to the already robust field of Jesus marks already peacefully coexisting in the clothing field." (38) After reviewing this argument, the PTO approved the registration in 2007.39 It was not until 2012, when the company had to demonstrate use of the mark in the United States, that the PTO first saw a specimen, which showed use of the word "Jesus" on Jesus Jeans. (40) By that time, the original applicant had assigned the trademark to Jesus Jeans S.R.L.

   The PTO's decision to register the sole word "Jesus" as a trademark based on the dilution argument was an error that the agency probably now regrets. As just noted, several companies may use marks that include the same weak elements without creating a likelihood of confusion because consumers will rely on the other attributes to make the necessary distinctions in the marketplace. This is the reason, for example, that the PTO has registered PEPSI-COLA (41) and COCA-COLA, (42) despite the overall similarities created by the overlapping uses of cola. Of course, in this instance, a company could not register the word "cola" by itself, because the word is generic for soda. However, other times, the shared word may not be considered generic, but rather simply weak because it is often used, or closely associated, with particular products. (43) The question, then, is whether it might be acceptable to allow a registration in these circumstances for the common weak term alone.

   There is at least one precedent in which the PTO did this, when it allowed a company to register the word "plus" for vitamins, food supplements, and pet products. (44) Despite this registration, the PTO has registered numerous other marks in the same fields that include "plus," on the grounds that the combined terms make a different commercial...