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UNSOLICITED TESTIMONIAL (quoted with permission) February 1, 1993 To: Dear Sir, Thank you for your letter dated January 23, 1993, with enclosures.... I am now informed that the Examiner has made an administrative decision
not to permit the registration of the Having said the above, I must let you know how I feel about having worked with you on this file to date. My contact with you has been relatively limited, however, you have made quite a distinct impression. As you might suspect, in the course of my practice, I have had the occasion to deal with a number of experts in various fields of endeavor. It is rarely that I come into contact with someone who through the written word conveys not only expertise and an ability to effectively convey that expertise but a genuine enthusiasm for his profession. I suspect that these traits are a result of a combination of factors, not the least of which are the focus of your profession (to the extent of the use of words), your qualifications and your personality. Unfortunately, often when I read expert reports, they are boring and some suggest that they were a chore to the writer to have taken the time and effort to prepare the document. The opposite is true of your report. I find your report, aside from its informative qualities, a pleasure to read, almost to the point of being entertaining. I hope you take this latter remark as a compliment because it is meant as such.... Thank you for your continued assistance on this file. I look forward to hearing from you and receiving your report. Yours truly, ARTHUR M. SZABO.
"SPATIALIST" AS A BLEND OF
"SPATIAL ANALYST"
CONTENTS
1. Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Page 3 2. General principles . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 3. Shortening of words . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 4. Recipe for blending words . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9 5. "Spatialist" as a blend of "Spatial Analyst" . . . . . . . . . . . . . . . .10 6. Who owns a blended form? . . . . . . . . . . . . . . . . . . . . . . . . . . . .12 7. Blended look-alikes . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14 8. Is "Spatial Analyst" descriptive? . . . . . . . . . . . . . . . . . . . . . . . .17
INTRODUCTION
I have studied classics, philosophy, English literature, and linguistics at the undergraduate and graduate levels full-time for about 10 years and earned the degrees of B.A. (Hons.), M.A., and L.Ph. (Licentiate in Philosophy). I began my career in 1958 as a lecturer in English language and literature in the University of Madras, continuing in the profession in the University of Delhi. Since 1964, when I settled in the Toronto area, I have been a full-time lexicographer of Canadian and American English dictionaries for schools and the general public, my last two works being The New York Times Everyday Dictionary (New York, 1982) and The Penguin Canadian Dictionary (Toronto, 1990). I have also published a linguistic monograph, The Native Speaker Is Dead! (New York & Toronto, 1985), a Socratic-style debate by mail on the term "native speaker" with Professor Noam Chomsky (main contributor) and 40 other linguists, philosophers, psychologists, and lexicographers. This book, including its Japanese translation (Tokyo, 1990), has been favourably reviewed by linguistic journals world-wide. I have acted as a lexicographer/expert for legal firms specializing in trade-mark cases in the U.S. and Canada. I believe, therefore, that I am qualified to give the opinion set out below. The opinion has been prepared at the request of Arthur M. Szabo, Esq., acting on behalf of Projections Mapping Group Inc. of Calgary who wish to register "Spatial Analyst" as their trade mark. I understand that Spatial Analyst is a software product developed and marketed by Projections Mapping Group to be used in the mapping, GIS, and facilities management communities and incorporates technology such as polygon topology, spatial analysis, linear network modelling, spatial modelling, and arch-node topology. Spatialist is a competing product sold by Kanotech Information Systems Ltd. of Edmonton, Alberta. Projections Mapping Group's use of "Spatial Analyst" predates Kanotech's use of "Spatialist." I have been asked whether the two trade marks are confusingly similar from the linguistic point of view and if so to prepare an analysis and comparison of the two trade marks in support of this position. I wish to show that not only
is "Spatialist" confusingly similar to "Spatial Analyst," but that the
former is an obviously shortened form of the latter and hence the property
of the owners of "Spatial Analyst" by natural linguistic right.
2. GENERAL PRINCIPLES The acquisition of proprietary rights in a word is similar to the acquisition of real property by right of occupation of public land, as in staking out land claims in pioneer days. The 26 letters of the English alphabet, the 44 vowel and consonant sounds of the language as generally spoken in Canada, and the hundreds of thousands of words of the English lexicon are all public property. But when someone invents a new word using letters and sounds or puts together existing words in a distinctive way for a commercial purpose, the inventor acquires a piece of the language and a natural proprietary right to it. Any user of a language may create his own words and put them in circulation. In fact, that is how words initially enter the lexicon of a language. Words have to be accepted by society to become common coin, but there is always an individual or group of people that first puts a word in circulation. As in real property, one's rights in a trade mark are defined by certain boundaries. However, whereas the boundaries of a piece of real property are fixed in terra firma, the boundaries of an intellectual property such as a trade mark are fluid because of the unstable nature of the medium, a medium that is subject to linguistic and dialectal variations and processes of linguistic change. The trade mark Anacin, for example, is variously pronounced in different languages and dialects. In Standard English, it is usually heard as (AN.uh.sin), with a stress or accent on the first syllable, the other two syllables being short and unstressed. However, in some other languages the same trade mark is pronounced (uh.NAH.sin), with the second syllable lengthened and stressed. Many languages do not even have stressed and unstressed syllables as in English and other Germanic languages. In Chinese, Swahili, etc., for example, tone plays a leading part in the communication of meaning. A dialectal variation of "Anacin" would be when the word is pronounced, as in certain parts of the English-speaking world, more like (UN.uh.sin) than (AN.uh.sin). However, such variations would not affect the rights of the trade mark owner. In regard to the written form, "Anacin" could conceivably be spelled "Anasin." However, as in its spoken forms, a misspelling or even a variant spelling of a trade mark, as Technicolour instead of Technicolor, would not affect the owner's rights in the word. It would simply be confusingly similar to the original trade mark. Linguistic change, which
is a fact of life for all languages, occurs in pronunciations (phonetic
change), in the written forms of words (morphologic and spelling changes),
meaning (semantic change), vocabulary (lexical change), and even in
grammar and usage. 3. SHORTENING OF WORDS Mechanisms of linguistic change are many, but one of the ways in which lexical change occurs is by a process simply called shortening. Shortening arises from the natural and instinctive urge of living beings to control their environment with the least expenditure of time and resources, as in making a "beeline" for a destination. It is the same urge that makes people take shortcuts through their own and other people's property instead of going around the perimeter. Hence questions of right of way, trespassing, etc. Shortening in language, which takes place first in pronunciation, happens in several ways:
Syllabic acronyms such as "cyborg" are sometimes mistakenly referred to as "blends" (see below). "Initialisms" such as "C.B.C." are a variation of acronyms, but are more like abbreviations. (d) A blended word or blend (also called "portmanteau word" as in Lewis Carroll or "telescoped word") is formed by merging the first part of the first word, usually of a phrasal compound, with the last part of the second word, as in the following examples: 4. RECIPE FOR BLENDING WORDS From the examples given above, we may deduce the rules for blending words as follows: Although syncopation, clipping, acronyms, and blending are all forms of shortening, blending is shortening par excellence in regard to phrasal compounds.(a) The most significant syllables in regard to meaning and pronunciation are used in the blended form. Syncopation is a process similar to blending, but it applies only to single words. Thus, if someone wanted to use "Northair" as the trade name of his air-conditioning business, that name being a syncopation of the trade mark "Northernaire" would be confusingly similar to it. Making a blend of an existing
trade mark is like cutting right across a territory, as when an alien
travels through Canada from the Pacific coast to the Altantic taking
the Trans-Canada Highway instead of using the Northwest Passage or some
less disputed route. 5. "SPATIALIST" AS A BLEND OF "SPATIAL ANALYST" It should be plain from the above that "Spatialist" is a blended form of "Spatial Analyst" because: Alternative ways of blending "spatial" and "analyst" would have been "spacialist," "spatialyst," "spayshulist," etc.(a) The two most significant parts of "spatial" and "analyst" have been used in "spatialist." "Spatial analyst" as a phrasal compound has its main stress on the first word, the same as in "systems analyst" and other "analyst" compounds. "Spatial" has therefore been incorporated completely into the blended form. However, none of these would have the distinctive character or qualities of "spatialist" as a new word or trade mark. "Spacialist," using the "c" of an obsolete spelling of "spatial," would have looked more like a distant relative of "space" than a kissing cousin of "spatial," which is the operative word of the trade mark as it specifies the differentia (difference) of the genus word "analyst." "Spatialyst," using the last syllable of "analyst," would not be so distinctive as "spatialist" which has a connotative connection with the professional-looking "specialist." "Spayshulist" would have been phonetically sound, but its visual impact would not be as good as that of "spatialist." Briefly, "Spatialist" is not only an obvious shortening of "Spatial Analyst," but also the most original and distinctive way of blending "spatial" and "analyst." Let me add that Kanotech need not have used a linguist or lexicographer to come up with "Spatialist" although a professional can do these things scientifically and methodically. In fact, any gifted user of the language could have discovered this almost perfect blend of "spatial" and "analyst" by simply playing it by ear. The evolution of words is a linguistic process governed by natural, near-organic laws operating in society almost unconsciously. By the same token, although
it takes a specialist to diagnose the linguistic problem before us,
most lay people with a good ear for the sounds of the language, especially
the owners of a competing trade mark, could tell almost instinctively
whether one trade mark is confusingly similar to another.
6. WHO OWNS A BLENDED FORM? A blended form being a shortcut,
the laws of ownership of real property seem to apply when a blend is
used as a proprietary word or trade mark. (a) Just as no one may take a shortcut through somebody's else's property without the permission of the owner, so using a trade mark that is a blended form of an earlier trade mark is like trespassing. (If the owner of the first trade mark does not prevent such trespassing from the very beginning, a public right of way may be established and the trade mark may go into the public domain and become a generic word).To this must be added that, a blend being the shortened form par excellence, ownership is more clearly perceived in blended forms than in the other forms of shortening, especially clipping and acronyms. A case in point is "Coke" which is a clipped form of its original. But the resemblance between "Coca-Cola" and "Coke" is so slight that "Coke" would not naturally have been associated with "Coca-Cola" or seemed to belong to the Coca-Cola Company; it had to be registered as a trade mark. On the other hand, a blend
of "Coca-Cola" would have been "Cocola" (or "Cocla") formed according
to the rules enunciated above. The ownership of such blends would clearly
be attributable to the Coca-Cola Company because of their linguistic
closeness to the original. However, "Cocola" happens to be an unnecessary
blend because the clipped form "Coke" is by far shorter and sweeter
than anything else. 7. BLENDED LOOK-ALIKES
Other examples could help to enforce our argument that a blend, besides being the shortened form par excellence, also has the closest resemblance to its original. In the list below are (a) trade marks that could use blends if their owners wished, (b) trademarked compounds of "spatial" that could use blends, and (c) generic compounds of "analyst." If we change each of them
into a blend (for obvious reasons, blends have been devised for only
the first of each group), we can see how close to its original the blend
would look, besides being shorter and pithier. (a) Trade Marks Pepsi-Cola blend to: Pepsola? (clipped "Pepsi," of course, is better, but note similarity of blend to its original) Pennsy Pinkie (rubber balls) - blend ? Pepperidge Farm (bakery goods) - blend? Phillips Pozidriv (screws, drivers) - blend? Physicians Formula (cosmetics) - blend? Planned Parenthood (family planning) - blend? Plastic Wood (cellulose filler) - blend? Preparation H (for hemorroids) - blend? Pudding Cup (snacks) - blend?
(b) "Analyst" compounds Analyst/Designer Toolkit (programming software) - blended to: Analykit? (note similarity) B-Analyst (3-D modelling analyst) - blend? Elias Baseball Analyst (journal name) - blend? Food Analyst (computer software) - blend? G-Analyst (car performance evaluator) - blend? Image Analyst (image processing package) - blend? Instant Analyst (Lotus 1-2-3 add-in) - blend? Inventory Analyst (Lotus 1-2-3 product) - blend? MacAnalyst Combo (a Macintosh case tool) - blend? V-Analyst (virus detector) - blend? Visible Analyst Workbench (programming software) - blend? What-If Analyst (Lotus 1-2-3 utility) - blend?
(c) "Spatial" compounds The few trade marks there are of this kind (SPATIAL-DBMS, SPATIALWORKS, SPATIALDATA) may not need blending, but our point about similarity could be illustrated using generic phrases compounded of "spatial." Listed below are such compounds (also called collocations) in order of frequency of occurrence in the databases sampled. (Frequency index is given in brackets). spatial relation(ship) (19) ("Spatialation" would be a good blend of "spatial relation" for purposes of a trade mark; but note similarity with original) spatial distribution (13) spatial arrangement (11) spatial extent (10) spatial magnitude (6) spatial position (6) spatial configuration (4) spatial measurement (3) spatial direction (3) spatial quality (3) spatial resolution (3) spatial sense (3) A relevant point perhaps
worth recalling here is that in the non-commercial world, there is no
great confusion caused by similarity of names. If Antonia does not wish
to be mistaken for a boy, she can use "Toni" instead of "Tony." Even
Chris, Kay, Lee, Lou, Lynn, Pat, Ray, and Sam could distinguish themselves
(as identical twins do) by dressing differently or sporting distinctive
hairdos. This kind of accommodation is not possible in the more competitive
world of commerce. In no way, shape, or form could "Spatialist" coexist
with "Spacialist," "Spatialyst," "Spyshulist," or any other blend of
"Spatial Analyst" as the trade mark of a competing product. All such
variations of "Spatialist" would be confusingly similar to "Spatial
Analyst" and would belong to the owners of "Spatial Analyst" just as
misspellings, linguistic and dialectal variants, etc. of a trade mark
would belong to the owners of the original trade mark.
8. IS "SPATIAL ANALYST" DESCRIPTIVE?
The solicitors for Kanotech Information Systems, in their letter of August 20, 1992, "dispute that [Projections Mapping Group] has any proprietary right in the word 'spatial,' as the word itself is descriptive of the wares." The first part of the contention seems pointless to me because in a compound phrase used as a trade mark, it is not either of the component words that is proprietary but the phrase as a whole or as a single unit. There are hundreds of proprietary names which are open compounds like "Spatial Analyst" (as well as hyphenated and solidly written compounds) composed of non-proprietary or generic English words -- from American Girl (shoes) and Aunt Jemima (syrup) to Care Free (chewing gum), Clear Eyes (eyedrops), Cling Free (fabric softener), and Cool Whip (dessert topping) to White Horse (whisky) and Yankee Clipper (timepiece). No proprietary rights are claimed by their owners in words like "American," "Girl," "Aunt," etc. This is true also of the three U.S. trade marks cited, whether they are written "Spatialworks," "SpatialWorks," or "Spatial Works," etc. The same applies to "Spatial Analyst," whether it is written "Spatialanalyst," "SpatialAnalyst," or however else. As I have explained above (under GENERAL PRINCIPLES), the letters, sounds, words, and even the grammar of the language are all public property. It is only when someone puts linguistic elements together in a distinctive way that he or she acquires proprietary rights in it. "Spatial Analyst," I believe, is such a trade mark. However, counsel for Kanotech base their contention on the claim that "spatial" is merely descriptive of the "wares" it refers to. This is an interesting question. First of all, as already detailed in INTRODUCTION (above), the wares referred to cover a whole range of services provided by Projections Mapping Group. One adjective could not be descriptive of a product with such a variety of applications. At least, it is not as descriptive as an un-registrable "Extra Dry" may be descriptive of the qualities or attributes of a wine or "Rock and Rye" may be descriptive of the nature or character of a mixture of rock candy and rye whisky. Secondly, the claim that "Spatial Analyst" is descriptive of what it stands for fails a simple linguistic test of descriptiveness. A linguistic test of the descriptiveness of a word or phrase would be transparency of its meaning to the average educated user of the language (formerly called "native speaker") in reference to the character or qualities of the object referred to. Now, as everyone knows, there are degrees of transparency and opacity, as illustrated by the old classification of diamonds as of the first water, second water, third water, etc. In regard to trade marks, as the transparency of a word or phrase in relation to the character or qualities of the product it represents is perceived as more and more arguable, the meaning conveyed becomes more suggestive than descriptive. At one end of this spectrum are such totally opaque words as "Kodak." Not even an expert in the English language would be able to guess what "Kodak" means or stands for unless he or she was familiar with the word; the word thus makes for a very distinctive trade mark, especially when one is told that "Kodak" is suggestive of the sound of clicking a camera. Another distinctive trade mark, but one that is less opaque than "Kodak" is "Xerox." Expert users of English who are familiar with the many English words compounded of "xero-" and with its meaning "dry" in the original Greek would identify "Xerox" as referring to something "dry." As it happens, it refers to a dry photocopying process. At the other end of the spectrum are such clearly transparent phrases as the following common collocations of "spatial" cited earlier under BLENDED LOOK-ALIKES: spatial relationship spatial distribution spatial arrangement spatial extent spatial magnitude spatial position [etc. in order of their frequency of occurrence in the sample]. I think it is safe to assert that the meaning of each of the above phrases would be crystal clear to the average user of English who is familiar with "spatial" and the second element of each phrase. (The different dictionary meanings of "spatial" in the above collocations is academic. Again, it is the meaning of the whole phrase that matters). But not even an expert in the English language would be able to tell at first sight what "Spatial Analyst" might mean. This lexicographer had no clear idea of what it meant before studying the literature on the subject; it simply seemed to suggest something related to space and analysis. "Spatial analysis," on the other hand, is an accepted collocation of words and conveys more meaning than "spatial analyst" does. The linguistic explanation for this difference in meaningfulness between the two phrases is that none of the four accepted meanings of "spatial" (as given in the Oxford English Dictionary, Second Edition, 1989, 20 vols., see copy of relevant page attached) fits "spatial analyst." "An analyst having extension in space" (definition 1) does not make sense. "An analyst that relates to space, not time" (def. 2) does not make sense either. Nor does "an analyst happening or taking place in space or caused or involved by space" (def. 3) have any meaning. The same goes for "an analyst perceptive of space" (def. 4, as in "spatial ability, intelligence, sense" which refers to faculties or senses that perceive space, not products or people). On the other hand, "spatial analysis" can be explained by def. 2; namely, "analysis that is spatial; i.e., that relates to space, not time," as in "spatial extinction, segregation, separation," etc. "Spatial Analyst" is thus
merely suggestive and not descriptive. It is clearly more opaque than
transparent. Although, because of the common generic words that the
phrase is composed of, it may be less opaque than "Xerox" or "Kodak,"
it cannot at all be said to be transparent. "Spatial Analyst," therefore,
cannot be said to be descriptive of anything to the average educated
user of English. SUMMARY
& CONCLUSION As intellectual
property, a trade mark is comparable to real property in regard to boundaries.
The blended form of a phrasal compound that exists as a trade mark is
like a shortcut taken through someone else's territory. Just as a shortcut,
whoever may have discovered it, would belong to the owners of the property,
so by natural linguistic right, a blend belongs to the owners of the
original phrasal compound used as trade mark. The resemblances between
a blend and its original are too close to be ignored. "Spatialist,"
therefore, rightfully belongs to the owners of "Spatial Analyst."
THOMAS M. PAIKEDAY
Testimonal || Report || Go To Top Of Page © 2002, Thomas M. Paikeday
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