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Some ideas are so lowdown awful, criticism is not enough. One needs to seize the offending notion by the scruff of the neck, shove it into a corner, and stand over and scold it: “Bad idea! Bad, bad idea!” The recent trademark application filed by New York City to monopolize the phrase “The World’s Second Home” for a wide range of products — from paperweights to baby bibs to temporary tattoos to fanny packs — is such a notion. It is not enough to discredit the idea. Someone really needs to give New York a time out. New York City wants to host the 2012 Olympics. To increase its chances, the city’s attorneys have filed a trademark application to register “The World’s Second Home” on an intent-to-use basis for scores of goods and services in eight different classes. The strategy, apparently, is to emphasize that New York is a city of immigrants, with constituents from all over the globe, and thus the logical locale for an international event such as the Olympics. There are obvious problems with the gambit, starting with the fact that New York is not the World’s Second Home. Granted, with 36 percent of its population foreign born, New York is the second home for many, many people. But it lags behind Miami (with 51 percent of its population foreign born), Los Angeles (41 percent) and even Vancouver (37 percent). New Yorkers might respond that Miami is the second home mainly to Cuban-Americans, and Los Angeles the second home mainly to Mexican-Americans, while New York’s second-homers come from many different places. But even in the category of second-home diversity, New York trails behind Toronto, which has been named by the United Nations as “the world’s most ethnically diverse city” five times in a row. But these are minor matters. The main problem with New York’s attempt to monopolize “The World’s Second Home” is the violence it does to bedrock principles of trademark law. Since the dawn of recorded history — actually before the dawn — trademarks have served the function of distinguishing one party’s products from those of another. Paintings on the walls of the Lascaux caves in southern France show bison bearing marks which, scholars say, indicate ownership. The cavemen wanted to distinguish their bison from those of their prehistoric rivals. Ancient Egyptians, Greeks and Chinese used seals and other markings to distinguish one party’s pottery items from those of another. All these venerable trademark practitioners started with a product. Then they developed a mark to append to it. And so trademarks evolved through history. Antonio Stradivari crafted more than 1,100 violins and other musical instruments — and the “Stradivarius” mark emerged to identify his handiwork and models. Arthur Guinness first developed a remarkable stout in Dublin, and then attached the family name to distinguish it from his competitors’ beers. But now comes New York City, reversing the process. First they developed the catchy if inaccurate slogan “The World’s Second Home.” Then they compiled the longest possible list of tchotchkes imaginable — including lawn signs, bean bag chairs, pencil sharpeners, key chains, sandals, rompers and knickers (yes, knickers) — upon which to attach the mark. Why? Obviously, not for the traditional purpose of trademark law: to distinguish New York City’s products from those of other cities. Can anyone imagine a shopper searching the globe for knickers, until he finally finds a pair emblazoned with the “World’s Second Home” slogan, then exclaiming: “At last! Thanks to this slogan, I know I’ve finally found a pair of genuine knickers manufactured by the good people of New York City! Just what I’ve been looking for!” No, the knickers could (and probably will) come from Bangladesh, for all the shopper will care. It’s not the product New York will be selling, but the mark. New York wants to be known as the World’s Second Home. The cheap products are just so many tiny, portable billboards to advertise that aspiration. Of course, New York City is not alone in the campaign to stand trademark law on its head. That noted New Yorker, Donald Trump, no sooner had a hit show under his belt than he applied to register “You’re Fired” for games, playthings, pillows, alcoholic beverages, and men’s cologne. Jessie Conners, a failed contestant on the show, showed her ability to learn from the master. After she was “fired,” she promptly filed to register “You’re Fired” for a line of clothing. Of course, no shopper is going to search for the mark “You’re Fired” on toys, pillows, or drinks to gain assurance that the products truly are made by Donald Trump or Jessie Conner. Trump and Conner do not intend to use the slogan to promote their products. They intend to use the slogan to promote themselves. Aside from undermining the fundamentals of trademark law, what is wrong with this trend? Is it a crime for New York City to want to have the exclusive right to sell tote bags with “The World’s Second Home” slogan? Well, yes it is. And not just a crime against good taste. It is a crime against freedom of speech. Other cities may vie with New York for the title of the World’s Second Home. By the simple expedient of trademark registration practice, and the vagaries of the international classification system, New York City can effectively block its rivals from expressing that sentiment in just about any medium other than newsprint. Which is, of course, the whole point of the campaign. New York is not out to promote its tchotchke industry. That industry is already quite healthy, thank you. Rather, the campaign’s aim is to send a message and to prevent others from sending a competing message. This inversion of trademark law leads to perverse incentives. Rival cities, denied the right to use the slogan “The World’s Second Home” on their own chazzerei, may rush to reserve “World’s Third Home” or “World’s Fourth Home.” Our trademark registration system allows anyone to file any number of “intent to use” applications. After the application is approved, the applicant has up to three years to actually use the mark on a product. Thus, a crafty city might apply for and so tie up for years the slogans “The World’s [Third], [Fourth], [Fifth], [and so on, up to 99th] Home.” I grew up in Marblehead, a small town north of Boston, where every schoolchild learns that his hometown is “The Birthplace of the American Navy.” Our claim was supported by the fact that the men rowing Washington’s army across the Delaware in Emanuel Leutze’s famous painting were Marblehead fishermen, one and all. For some unfathomable reason, the smaller town of Beverly, a few miles farther north, also lays claim to the title, and motorists could not enter the community without passing a billboard welcoming them to this other putative “Birthplace of the American Navy.” There was a fair amount of argument between the towns and petty vandalism of each others’ signs. But on the whole, the battle was waged ethically. It never occurred to anyone, in that quainter and more innocent age, to file trademark applications to obtain exclusive rights to use the “Birthplace of the American Navy” slogan on electric light switch plates, tattoos, or bean bag chairs. We were fortunate. Since anyone can file an intent to use trademark application, Marblehead (and Beverly, too, for that matter) might have lost out to Omaha, Neb., for exclusive rights to the “Birthplace of the American Navy” slogan. Contributing writer Lawrence J. Siskind, of San Francisco’s Harvey Siskind Jacobs, specializes in intellectual property law. He can be contacted at [email protected]

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