Can the PTO Find Its Way with Jesus

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) I. 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. …