JESUS JEANS v. JESUS SURFED: THIS TIME, IT’S BIBLICAL!

"2008 Devon - Croyd beach: can Jesus surf?," © 2008 Thierry Gregorius Space & Light on Flickr, used under a Creative Commons Attribution-ShareAlike license http://creativecommons.org/licenses/by-sa/2.0/

It appears Jesus Jeans SRL, the controversial Italian fashion company, has cast the first stone against Michael Julius Anton, the man behind the ‘Jesus Surfed’ fashion label, in its latest attempt to stop anyone from registering the name ‘Jesus’ as a trademark for clothing. It seems most have ‘turned the other cheek’ and backed down – but not Mr. Anton.

Mr. Anton filed a federal trademark application to register JESUS SURFED in May 2012 for shirts, t-shirts, hats and bandanas (Application No: 85/638044). Jesus Jeans then filed an Opposition to the application with the Trademark Trial and Appeal Board (TTAB) in February 2013 arguing that the JESUS SURFED mark would, if registered, cause confusion with its own registered mark, JESUS (Registration No: 3232057) which covers a variety of clothing items. Jesus Jeans argued its rights in the mark date back to 1999 and asserted that it had successfully opposed similar applications for ‘Jesus Couture’, ‘Jesus Image’, ‘Sweet Jesus’, ‘Jesus Loves Jeans’, ‘Jesus Chic’, ‘Jesus First’, and ‘Jesus Saves’, to name but a few.

In the Answer to the Opposition, counsel for Mr. Anton argued that Jesus Jeans should be estopped from asserting likelihood of confusion because it had previously argued – during its application to register the JESUS mark – that its JESUS mark should be registered in spite of a likelihood of confusion refusal because the name ‘Jesus’ is “highly diluted” in the clothing field. Thus, Jesus Jeans’ position that JESUS SURFED would be confusingly similar to JESUS, was completely contradictory to its earlier statements made in obtaining the registration in the first place.

But counsel for Mr. Anton didn’t stop there. He also filed a counterclaim seeking to have Jesus Jeans’ registration of JESUS cancelled on the grounds of disparagement and false suggestion of a connection with person and/or belief. He argued that Jesus Jeans’ use of the name ‘Jesus’ was meant to, and would be understood to refer to, Jesus Christ. Several examples of Jesus Jeans’ advertising were also submitted, which, according to counsel for Mr. Anton, combine parodied quotes from the Bible and “sexually suggestive poses” in an “irreverent”, “offensive” and “sacrilegious” manner – all in conjunction with the name ‘Jesus’.

The Opposition and Cancellation proceedings continue before the TTAB.

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