Mark-Tex Corp.v.La-Co Industries, Inc.

Trademark Trial and Appeal Board

Nov 30, 2000

No. 92027165 (T.T.A.B. Nov. 30, 2000)

Paper No. 30
ejs
11/30/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Mark-Tex Corporation
v.
La-Co Industries, Inc.
_____
Cancellation No. 27,165
_____
Eliot S. Gerber of Wyatt, Gerber, Meller & O’Rourke,
L.L.P. for Mark-Tex Corporation.
Daniel N. Christus of Wallenstein & Wagner, Ltd. For La-
Co Industries, Inc.
_____
Before Seeherman, Quinn and Chapman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Mark-Tex Corporation has petitioned to cancel the
registration of La-Co Industries, Inc. for the mark VALVE
ACTION for "paint filled markers for marking."1 The
registration issued pursuant to Section 2(f) of the

1 Registration No. 2,115,435, issued November 25, 1997.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT
OF THE T.T.A.B.
Cancellation No. 27,165
2
Trademark Act. As grounds for cancellation,2 petitioner
has alleged that since 1959 it has used the mark VALVE
ACTION; that
3. Petitioner's mark "VALVE ACTION
MARKER" has become distinctive of the
goods (paint filled marking pens)
through Petitioner's substantially
exclusive and continuous use in
commerce for at least five years.
Upon information and belief,
Registrant used the mark "VALVE ACTION
PAINT MARKER" in a descriptive sense,
and therefore Petitioner was the
exclusive user in commerce of the mark
"VALVE ACTION";
that the goods identified in respondent's registration
are the same type of goods, paint filled markers for
marking, as those sold by petitioner under the mark VALVE
ACTION; that respondent's registered mark VALVE ACTION is
the same as petitioner's registered mark VALVE ACTION;
that
6. Registrant claimed, in the
prosecution of the application which
issued as Registration 2,115,435, that
its use of the mark "VALVE ACTION" was
substantially exclusive for at least
five years prior to the filing date of
a Declaration (May 12, 1997). That
statement, made to obtain registration
of the same mark "VALVE ACTION", was
false because of Petitioner's use of
the same mark "VALVE ACTION" in
commerce during that five-year period.

2 Because there is a dispute as to whether respondent was on
notice as to certain grounds for cancellation, we have quoted
certain of the allegations in the petition for cancellation.
See discussion, infra.
Cancellation No. 27,165
3
Upon information and belief,
Petitioner's use of the mark during
the said five-year period was known to
Registrant, and known to the Declarant
Daniel J. Kleiman, at the time his
Declaration was made;
that petitioner is the owner of Registration No.
1,551,481 for the mark ACTION MARKER for felt-tip markers
for industrial uses; that respondent's mark VALVE ACTION
so resembles petitioner's registered mark for ACTION
MARKER that, when used in connection with paint filled
marker pens, it is likely to cause confusion or mistake
or to deceive; that petitioner's application for VALVE
ACTION MARKER has been refused registration on the ground
of likelihood of confusion with respondent's
registration; and the respective marks and goods of the
parties are so similar that respondent's mark is likely
to cause confusion with petitioner's previously used
mark.
In its answer respondent has denied the salient
allegations of the petition to cancel, and has asserted,
as affirmative defenses, the doctrines of laches,
estoppel, acquiescence and unclean hands.3 However,

3 Respondent has also made a number of assertions in the
section of its answer titled "Affirmative Defenses," but they
are, in fact, merely an expansion of its denials.
Cancellation No. 27,165
4
respondent never argued these affirmative defenses in its
brief, and we therefore deem them to have been waived.
The case has been fully briefed, but an oral hearing
was not requested.
We will first discuss the outstanding objections and
motions relating to the record. First, we note that
petitioner did not file copies of certain testimony
depositions until after respondent pointed out, in its
final brief, that it "did not receive notice that Mark-
Tex filed the transcripts of these depositions with this
Board." Brief, p. 21. Respondent concluded therefrom
that the transcripts of the Diagraph Corporation's
deposition on written questions and Ideal Corporation's
deposition on oral examination were not of record, and
that the evidence could not be considered. However,
because petitioner has now filed the transcripts, they
are of record. See TBMP § 713.11 (If a party which took
a deposition discovers that the officer has inadvertently
failed to send the certified transcript, with exhibits,
to the Board, the party should contact the officer and
arrange for the immediate filing of the deposition with
the Board.) See also, Trademark Rules 2.124(f) and
2.125(c); and Notice of Proposed Rulemaking, 62 Fed. Reg.
30802, 30809 (June 5, 1997), discussing proposed
Cancellation No. 27,165
5
amendments to the Trademark Trial and Appeal Board Rules
("it is Board practice to accept transcripts of testimony
depositions at any time prior to the rendering of a final
decision on the case.")
Respondent has also moved to strike petitioner's
deposition upon written questions of Diagraph Corporation
because petitioner did not provide proper notice of
Diagraph's deposition. Specifically, respondent asserts
that petitioner did not provide the name of the officer
before whom the deposition was to be taken; did not file
a copy of the notice with the Board; and did not serve
the subpoena within ten days from the opening date of the
testimony period. Respondent had previously objected to
this deposition on August 24, 1998, in the context of its
response to petitioner's request for an extension of its
testimony period, in which respondent consented to such
extension. The Board was aware of these objections when
it engaged in a telephone conference with the parties on
November 23, 1998 in connection with various motions,
including a motion to quash. However, in its December
16, 1998 written ruling memorializing the telephone
conference, the Board did not allude to the objections,
merely noting that the parties had gone forward with
Cancellation No. 27,165
6
trial dates, and that petitioner's motion to extend trial
dates was therefore moot.
Respondent is correct that petitioner did not follow
the procedural requirements of Trademark Rule 2.124 for
taking a deposition upon written questions. If
petitioner had done so, it would not have found itself in
the situation it was in, with a need to extend trial
dates, because it is the practice of the Board, upon
receiving notice of the taking of a deposition by written
questions, to suspend proceedings so that the parties
have sufficient time in which to complete the deposition
upon written questions. See Trademark Rule 2.124(d)(2).
However, it is apparent from the Board's December 16,
1998 decision not to address the various procedural
objections raised by respondent to the Diagraph
Corporation deposition on written questions that the
Board did not regard these procedural errors as fatal.
We agree that the objections are merely technical in
nature, and petitioner's failure to follow the rules has
not resulted in any prejudice to respondent. Trademark
Rule 2.123(j) provides, with respect to the effect of
errors and irregularities in depositions, that "notice
will not be taken of merely formal or technical
objections which shall not appear to have wrought a
Cancellation No. 27,165
7
substantial injury to the party raising them…."
Accordingly, respondent's motion to strike the deposition
of Diagraph Corporation is denied.
Respondent has moved to strike petitioner's
testimony deposition of Ideal Stencil Machine & Tape
Corporation provided by its president, Marco Ziniti.
Although respondent states that the ground for its motion
is that the deposition was untimely, a reading of the
motion papers shows that respondent's real objection is
that the deposition constitutes improper rebuttal
testimony.4 In its moving papers, respondent points out
that petitioner originally sought to take Ideal's
deposition during its initial testimony period, and that
this "establishes that the proper time for taking Ideal's
deposition was during Mark-Tex's original testimony
period." In response, petitioner asserts that the
testimony adduced was to rebut the statements of
respondent's witness Kleiman that respondent had
exclusive use of VALVE ACTION for the five years

4 We note that this testimony deposition had been the subject
of a previous motion to quash in which respondent objected both
to the adequacy of the notice of deposition, and to the
timeliness. The Board, on December 16, 1998, denied the motion
with respect to the inadequate notice claim, and recognized that
the untimeliness claim was in reality an objection to the
testimony being improper rebuttal, noting that it was only at
final hearing, after reading the testimony, that the Board could
determine whether or not it was improper rebuttal.
Cancellation No. 27,165
8
preceding the filing of its application, and to rebut his
testimony that Ideal's use of VALVE ACTION was in a
descriptive manner.
We agree with petitioner that the fact it attempted
to take Ideal's deposition during its opening testimony
period does not, ipso facto, establish that the
deposition constitutes improper rebuttal testimony. That
must be ascertained from the testimony adduced. Mr.
Ziniti's testimony goes to his own company's use of the
term "valve action" in connection with marking pens, as
well as his awareness of the use of that term throughout
the industry. To the extent that petitioner seeks to use
that evidence to demonstrate that Mr. Kleiman's statement
in his declaration was false (see Paragraph 6 of the
petition to cancel), that is clearly evidence which
should have been submitted as part of petitioner's case-
in-chief. We also are at a loss to understand
petitioner's claim that the evidence was to rebut Mr.
Kleiman's characterization that Ideal's use was in a
descriptive manner, given that Mr. Ziniti specifically
testified that Ideal did not regard VALVE ACTION as one
of its trademarks.

Cancellation No. 27,165
9
Nevertheless, because, as discussed below, the time
at which respondent's mark acquired distinctiveness is
one of the elements of the priority/likelihood of
confusion ground, Mr. Ziniti's testimony is proper
rebuttal to any evidence submitted by respondent relating
to when its mark acquired distinctiveness. Accordingly,
the testimony has been considered solely for this
purpose.
Respondent has moved to strike certain exhibits
attached to petitioner's appeal brief. We will rule on
these exhibits in summary fashion. The objection to
Attachment A is overruled. Although it is not evidence
which was previously submitted, it purports to be only a
summary of invoices which are of record, and petitioner
could have made a similar summary in the body of its
brief. We will not penalize petitioner for having done
so as an attachment to its brief; it is obvious that
petitioner was not attempting to subvert the page
limitation for its brief. Exhibits 2 and 3 are exhibits
from respondent's discovery deposition of George
Pappageorge. Neither respondent nor petitioner submitted
them under a notice of reliance during their respective
testimony periods. See Trademark Rule 2.120(j)(3)(i) and
(j)(4). Accordingly, these exhibits were never made of
Cancellation No. 27,165
10
record, and they have not been considered. Similarly,
Attachment E are copies of petitioner's Registrations
Nos. 1,551,841 and 2,152,629, which were not properly
made of record. Petitioner apparently recognizes the
validity of respondent's motion with respect to this
exhibit, at least with regard to Registration No.
2,152,629, because it stated, in its response to the
motion to strike, that it does not rely on the latter
registration. In fact, neither of the registrations were
properly made of record, and therefore the motion to
strike them is granted. Attachment F is a copy of
petitioner's deposition on written questions of Diagraph
Corporation and, in view of our denial of respondent's
motion to strike said deposition, is of record.
Attachment G, a copy of the subpoena to Diagraph
Corporation, will not be considered as an exhibit to
petitioner's brief, although it is noted that it forms an
exhibit to other motion papers in the proceeding, in
particular, respondent's own papers.5

5 Respondent makes the statement in its reply brief in
connection with its motion to strike the exhibits that
petitioner has failed to file a notice of reliance on the
Diagraph deposition, and that Attachments F and G, which relate
to that deposition, should be stricken for that reason.
Respondent is advised that a deposition on written questions,
and indeed any testimony deposition, need not be filed with a
notice of reliance during the party's testimony period; the
Cancellation No. 27,165
11
Thus, the record includes the pleadings, the file of
the registration sought to be cancelled; and the
testimony depositions, with exhibits, of petitioner's
witnesses George Pappageorge, its president;6 Anthony
Cardarelli, a former employee; the testimony deposition
on written questions of Diagraph Corporation; and the
rebuttal testimony deposition, with exhibits, of Marco
Ziniti, Executive Vice President of Ideal Stencil Machine
& Tape Company; and the testimony depositions, with
exhibits, of respondent's witnesses Daniel Kleiman, its
president, and Thomas Rynberg, its marketing manager.7

requirement is that the deposition be taken during the relevant
testimony period.
6 It should be noted that during his testimony Mr. Pappageorge
referred to certain of respondent's exhibits which apparently
were introduced during a discovery deposition taken by
respondent. Petitioner has also referred to these exhibits,
e.g., Respondent's exhibits 2, and 3, in its brief. These
exhibits were never made of record, see discussion infra, and
therefore have not been considered.
7 It is noted that the depositions of Messrs. Pappageorge,
Cardarelli, and Kleiman have been marked "confidential--under
protective order." It is obvious that not all of the
information contained in these depositions is actually
confidential material. Board proceedings are open to the
public, and only information which is truly confidential should
be filed under seal. Accordingly, the parties are allowed
thirty days from the date of this decision in which to file a
copy of any transcripts which contains confidential material,
with only the confidential information redacted, and to specify
those exhibits which contain information which is actually
considered confidential. If the parties do not submit redacted
versions of the depositions and indicate the specific exhibits
which contain truly confidential material, the depositions and
exhibits which were previously submitted will be made available
for public inspection.
Cancellation No. 27,165
12
Respondent has submitted, under a notice of
reliance, portions of a discovery deposition of George
Pappageorge, including one exhibit thereto; petitioner's
responses to respondent's first set of requests for
admission; and petitioner's responses to two of
respondent's interrogatories. Subsequent to final
briefing petitioner also submitted the entire transcript
of the discovery deposition of George Pappageorge,
petitioner's president, which had been taken by
respondent. As indicated above, respondent submitted
part of this deposition by notice of reliance, and
therefore petitioner, pursuant to Trademark Rule
2.120(j)(4), could have submitted any other part of the
deposition "which should in fairness be considered so as
to make not misleading what was offered by the submitting
party.” However, to make of record the discovery
deposition under this rule, petitioner would have had to
submit it during its (rebuttal) testimony period under a
notice of reliance, supported by a written statement
explaining why it needed to rely upon each part of the

Further, we would point out that if we were to treat all of
the depositions as confidential it would be impossible to even
recite what the record shows. Accordingly, we have discussed
that part of the evidence which appears clearly to be non-
confidential.
Cancellation No. 27,165
13
deposition. Because the submission of the discovery
deposition was manifestly untimely, and not in accordance
with Trademark Rule 2.120(j)(4), it has not been
considered.
In petitioner's trial brief it states the issues as
1) whether respondent has proven that its mark VALVE
ACTION has acquired distinctiveness when the same mark
was used for the same goods by other companies both
before respondent's use and during the period 1991-1996;
2) whether petitioner had priority of use of the same
mark VALVE ACTION for the same type of goods; and 3)
whether petitioner had prior use of the mark ACTION
MARKER and whether respondent's mark VALVE ACTION PAINT
MARKER, the mark actually used by respondent, is
confusingly similar to petitioner's mark.
Respondent, however, in its trial brief, stated that
petitioner argued in its brief grounds for cancellation
which were not raised in its petition for cancellation.
Respondent characterized the pleaded grounds as 1) a
likelihood of confusion between respondent's use of VALVE
ACTION and petitioner's use of that term, with petitioner
alleging priority of use; 2) that respondent had filed a
false declaration regarding its exclusive use of the mark
during the prosecution of the application which issued
Cancellation No. 27,165
14
into the registration which is the subject of this
proceeding; and 3) a likelihood of confusion between
respondent's mark VALVE ACTION and petitioner's
Registration No. 1,551,841 for ACTION MARKER and Design
for felt-tip markers for industrial uses. Respondent
asserted that petitioner was now asserting additional
grounds for cancellation, namely, a second registration,
No. 2,152,629 for ACTION MARKER for marking pens using a
valve to ink the nib; and that respondent did not and
cannot establish secondary meaning in the mark VALVE
ACTION. Respondent argued that because these grounds
were not raised in the petition for cancellation,
petitioner cannot raise them for the first time in its
brief.
Petitioner thereupon filed a motion to amend the
pleadings to conform to the evidence, pursuant to Fed. R.
Civ. P. 15(b). It seeks, by this motion, to add
allegations that respondent did not and cannot establish
secondary meaning in the mark VALVE ACTION due to prior
and contemporary usage by others of VALVE ACTION as a
trademark on markers; and that respondent did not have
substantially exclusive and continuous use of the mark
VALVE ACTION on markers for five years before its claim
of distinctiveness was made because of such usage by
Cancellation No. 27,165
15
others and that VALVE ACTION is not distinctive of
respondent's goods under Section 2(f).
We agree with respondent that petitioner never
pleaded a ground of likelihood of confusion with respect
to petitioner’s Registration No. 2,152,629 for ACTION
MARKER. Nor was this issue tried; the first reference to
the registration was in petitioner’s brief. Petitioner
apparently concedes that the issue of likelihood of
confusion with respect to this registration was never
tried, because petitioner has not sought to include such
a claim in its motion to amend.
We agree with respondent that petitioner's original
pleading did not set forth a claim that respondent's mark
was merely descriptive, and had not acquired
distinctiveness, so as to put respondent on notice that
this was one of petitioner's grounds for seeking
cancellation of the registration. Petitioner argues, in
both its motion and its reply brief in support of its
motion, that paragraph 6 of the petition, to wit, the
allegation that the Kleiman declaration was false because
it stated that respondent's "use of the mark 'VALVE
ACTION' was substantially exclusive for at least five
years prior to the date of the Declaration (May 12,
1997)” was a "clear notice that [respondent's] claim of
Cancellation No. 27,165
16
secondary meaning was being attacked." Reply brief, p.
2. We do not agree. Rather, the clear meaning of this
paragraph was that petitioner was alleging that
respondent had made a false statement in order to obtain
its registration, and that the falsity of the statement
was that respondent's use of the mark was not
substantially exclusive in view of petitioner's use of
the same mark during that period. We also note that the
declaration which was submitted during the prosecution of
respondent's application included, in addition to the
claim of substantially exclusive and continuous use,
evidence of acquired distinctiveness in terms of sales
and advertising information. Petitioner made no
reference to these statements, thereby reinforcing the
conclusion that its allegation went solely to the falsity
of the claim of exclusive use, and not to the declaration
or assertion of acquired distinctiveness as a whole.
Nor is petitioner's allegation in the petition that
respondent "used the mark VALVE ACTION in a descriptive
sense” (paragraph 3) adequate to apprise respondent that
mere descriptiveness/lack of acquired distinctiveness was
being raised as a ground for cancellation. Petitioner
made this statement in connection with its assertion that
VALVE ACTION MARKER had become distinctive as a mark for
Cancellation No. 27,165
17
petitioner's goods through petitioner's substantially
exclusive use, and appears as an explanation as to how
petitioner can claim that it is the exclusive user in
commerce of the mark VALVE ACTION. Thus, a fair reading
of this paragraph indicates that it was part of
petitioner's claim of likelihood of confusion, i.e., that
it had acquired proprietary trademark rights in VALVE
ACTION for paint filled marking pens and that
respondent's use of the same mark was likely to cause
confusion. It must be remembered that the term "valve
action" per se has been acknowledged by both parties as
being merely descriptive, petitioner in its pleading and
respondent through its registration of the mark pursuant
to Section 2(f). Therefore, in order to prevail on a
claim of likelihood of confusion, it was incumbent on
petitioner to prove that its "mark" VALVE ACTION had
acquired distinctiveness prior to respondent's "mark"
having acquired distinctiveness. Petitioner's reference
to respondent's descriptive use of "valve action" in
paragraph 3, coming as it does between other allegations
going to the ground of priority and likelihood of
confusion, and in the same paragraph with petitioner's
claim that its mark had acquired distinctiveness, would
reasonably be read as a part of petitioner's
Cancellation No. 27,165
18
priority/likelihood of confusion ground, not as a
separate ground that respondent's mark should be
cancelled because it is merely descriptive, and had not
acquired distinctiveness.
The onus is on petitioner to state its claims in a
manner which gives clear notice to respondent as to what
grounds for cancellation are being asserted against it.
In this connection, we note that petitioner's pleading in
general is not particularly clear. For example, it
asserts, in paragraph 1, that it has used the mark VALVE
ACTION since 1959, but never, in this paragraph,
indicates on what goods the mark is used. In paragraphs
1 and 2 it refers to its mark as VALVE ACTION, although
in the first part of paragraph 3, it states its mark is
VALVE ACTION MARKER, and then in the last sentence of
that paragraph it reverts to calling its mark VALVE
ACTION. It also, in paragraph 5, states that its mark
VALVE ACTION is registered, but never gave any
information about this registration, nor did it make such
a registration of record. It appears that this reference
was in error, because in paragraph 7 of the pleading
petitioner refers to its registration for ACTION MARKER,
and in paragraph 9 it states that its application for
VALVE ACTION MARKER has been refused registration.
Cancellation No. 27,165
19
The question we must consider, then, is whether the
issue of the mere descriptiveness/acquired
distinctiveness of respondent's mark was actually tried
by the parties, such that we can deem the pleadings to
have been amended to include this ground. We find that
such an issue was not tried. As noted above, when a
party claiming use of a term which is on its face merely
descriptive seeks to cancel on the ground of likelihood
of confusion a registration for a mark which would be
merely descriptive but for acquired distinctiveness, the
plaintiff must prove that its mark has acquired
distinctiveness prior to the registrant's mark having
acquired distinctiveness. Perma Ceram Enterprises Inc.
v. Preco Industries, Ltd., 23 USPQ2d 1134 (TTAB 1992).
Therefore, any testimony regarding the issue of acquired
distinctiveness of either party's mark could reasonably
have been viewed by respondent as going toward the issue
of priority, and not to a separate ground that
respondent's mark should be cancelled because it was
merely descriptive and had not acquired distinctiveness.
Further, any evidence regarding the use by third parties
of the term VALVE ACTION could have reasonably been
viewed by respondent as going to the claim that
respondent had made a false statement in the declaration
Cancellation No. 27,165
20
which was filed during the prosecution of its
application.
Accordingly, we do not deem the parties to have
tried the issue of whether respondent's mark should be
cancelled on the ground that it is merely descriptive and
has not acquired distinctiveness. Petitioner's motion to
amend the pleadings is denied.
Further, because petitioner did not argue or
otherwise refer to the issue of respondent's alleged
misstatement/
fraud in its brief on the case, that ground for
cancellation is deemed waived.8
The issues before us, then, are whether petitioner
has proved its claim of likelihood of confusion with
respect to its asserted common law mark VALVE ACTION; and
whether petitioner has proved its claim of likelihood of
confusion with respect to its registered mark ACTION
MARKER and design for felt-tip markers for industrial
uses (Registration No. 1,551,841).
We turn first to the question of likelihood of
confusion with respect to petitioner's asserted mark
VALVE ACTION. In order to establish its priority with
respect to this mark, petitioner must prove that it had
Cancellation No. 27,165
21
acquired distinctiveness in this admittedly merely
descriptive term prior to the time that respondent had
acquired distinctiveness in its mark.
The record shows that since at least 1959 petitioner
has used on the back of its markers a circular design
that includes the words VALVE ACTION under the words
PRECISION SEAL (hereafter CIRCLE DESIGN). 9 A
representation of the front and back of the marker is
shown below. During the past 40 years petitioner has
sold between 500,000 and 1.8 million of these pens each
year.10 A great percentage of its sales were made as
private label products using various companies' brand
names. However, although they do not carry petitioner's
trademark ACTION MARKER, these private label markers do
have the CIRCLE DESIGN on the barrels.11

8 In any event, the evidence adduced during trial is
insufficient to prove fraud.
9 There is some inconsistency in the testimony. In his direct
testimony Mr. Pappageorge stated that his company had used VALVE
ACTION in this manner since the mid-50's. During cross-
examination he stated that the CIRCLE DESIGN has been used since
1959. Whether or not the use began in 1959 or a few years
earlier does not affect our decision herein.
10 As noted previously, much of the testimony has been filed
under seal. Although we believe that much of the information is
not truly confidential, we have taken pains not to reveal sales
and advertising figures, unless petitioner indicated such
figures in its brief.
11 Again, without going into specific numbers, we note that in
one portion of Mr. Pappageorge's testimony he says his company
sold at least "x" number of CIRCLE DESIGN markers a year, and at
another point he states that this same number "x" was sold as a
Cancellation No. 27,165
22
Petitioner has also sold, since 1986, a nontoxic
marker (used by food companies) which carries the words
VALVE ACTION, hereafter the LINE DESIGN, as shown below:12
Petitioner sells at least 10,000 of such markers each
year.
In 1973 petitioner began selling its SCOUR-OUT COLOR
marker, which is used in the textile industry, and it
sells at least 20,000 of these markers per year. This
marker contains, on its back, the words VALVE ACTION in a
block with line drawings of markers (hereafter BLOCK

private label product to a particular company from 1960 or 61
until 1987.
12 There is some inconsistency in Mr. Pappageorge's testimony
in that, although during direct testimony he stated that the
term VALVE ACTION was used on the NO-TOX marker starting in
1986, during cross-examination he said that "probably they used
it before then, 1957 and 1958." p. 62. Mr. Cardarelli stated
that it would have been used at the same time as the BLOCK
DESIGN, which he said was the mid-eighties at the latest. In
its brief petitioner states that it began using this line format
in 1986, and therefore we have treated this date as the correct
one.
Cancellation No. 27,165
23
DESIGN), as shown below:13 Petitioner uses this BLOCK
MARK on other markers as well, including on markers that
it private labels, e.g., carrying the customer's name,
for many other companies.
Interestingly, petitioner also produced private-
labeled markers for respondent from 1984 until the
beginning of 1988. An invoice for such an order
identifies the product as "DECORATED TUBES FOR #80 HEAVY
DUTY MARKER {Mark-Tex's #44 valve action marker}";
respondent supplied the tube casings bearing the artwork,
and petitioner would fill them with ink.
Although petitioner began selling markers bearing
the CIRCLE DESIGN in the late 1950's, Mr. Pappageorge
testified that at that time there was not the large
market for them that there is today. Petitioner did not
promote them until years later. The only evidence
regarding such promotion is a 1997 catalog which is
directed to industry and retailers, but not to the

13 Again, there is some question as to the exact date this
BLOCK DESIGN was used; Mr. Cardarelli testified that "it would
have to be at the latest, mid-eighties, I would say." p. 6.
Cancellation No. 27,165
24
general public. There is no evidence as to the number of
catalogs that were distributed.
As noted previously, in order to prevail on its
likelihood of confusion ground with respect to its
claimed common law mark VALVE ACTION, petitioner must
first demonstrate that this term is distinctive. Towers
v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039
(Fed. Cir. 1990); Shalom Children’s Wear Inc. v. In-Wear
A/S, 26 USPQ2d 1516 (TTAB 1993). Further, also as
previously noted, VALVE ACTION is not inherently
distinctive, and therefore petitioner must show that the
term has acquired distinctiveness as its trademark. The
evidence necessary to show acquired distinctiveness
depends on how descriptive the term is; that is, the more
descriptive the term, the greater the evidentiary burden
to establish secondary meaning. See, Yamaha
International Corporation v. Hoshino Gakki Co., Ltd., 840
F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988).
In this case, the evidence shows that VALVE ACTION
is a highly descriptive term for markers. Petitioner
itself acknowledges that there is widespread use of the
term in the industry. In fact, petitioner states in its
brief that its "primary position is that no one,
including LA-CO, could establish secondary meaning in
Cancellation No. 27,165
25
VALVE ACTION because of the industry's widespread use of
that term." p. 13. Moreover, Marco Ziniti, the
executive vice president of Ideal Stencil Machine & Tape
Co., testified that the term VALVE ACTION is used
extensively throughout the marker industry, including
uses by Ideal, Diagraph, the Tempil Division of Air
Liquide America, and McMaster-Carr Supply Co. Ideal has
used the term since 1981. The testimony of Diagraph
Corporation shows that it has used VALVE ACTION on
markers since 1958.
Petitioner also uses VALVE ACTION descriptively in
its catalogs. For example, on the table of contents page
is the following statement, under the headline "Mark-
Tex's Patented Technology":
THE VALVE-ACTION MECHANISM
Mark-Tex's ingenious valve-action,
ink-feed mechanism supplies only as
much ink needed to complete the
marking job. A felt or nylon tip is
secured tightly at the tip of the
marker body. Resting on a firm
aluminum spring, that draws ink upon
the normal pressure applied when
writing. [sic] As a result, ink is
only called upon as you write. So,
you'll never have to worry about messy
excess or limited ink flow. The tips
are replaceable and easily
interchanged by sliding out the old
one and slipping in the new.
Further, the sections featuring petitioner's ACTION
MARKER pens, and headlined VALVE ACTION FIBER INK
Cancellation No. 27,165
26
MARKERS, state, as the first sentence of the copy, "These
valve-action fiber-tip marking pens write on smooth steel
surfaces.”
In view of the highly descriptive nature of the
term, we find that petitioner has not met its burden of
demonstrating that VALVE ACTION has achieved acquired
distinctiveness as a trademark. Although petitioner has
used the term VALVE ACTION for many years, and has sold
literally millions of markers bearing the term during
that time, length of use and sales are not, per se,
sufficient to demonstrate that a term has acquired
distinctiveness as a trademark. “The enjoyment of
substantial sales reflects the success of the product and
not necessarily recognition of the term used in
connection therewith as a trademark.” Hershey Foods
Corporation v. Cerreta, 195 USPQ 246, 254 (TTAB 1977).
The manner in which the asserted mark is used must be
considered in determining whether the term appears as a
trademark; if it does not, the length of use and number
of sales cannot make a nontrademark usage into a
trademark.
Petitioner’s use of the term VALVE ACTION on its
markers would not be perceived by consumers as trademark
use. Rather, the words VALVE ACTION, in the LINE and
Cancellation No. 27,165
27
CIRCLE DESIGNS, would be perceived as merely
informational statements, advising consumers that the
marker has a valve action. The BLOCK DESIGN is, if
anything, even more informational, since in it the words
VALVE ACTION describe the function which is pictured in
the design.
Because of the manner in which the words VALVE
ACTION are displayed on petitioner’s markers, the years
of use and the numbers sold are insufficient to create in
the minds of those consumers a recognition that VALVE
ACTION is a trademark of petitioner’s. Indeed, the
record is devoid of any direct evidence from consumers
regarding their perceptions. It must also be remembered
that petitioner’s markers are very low-cost products, and
are not likely to be the subject of intense scrutiny by
which consumers would analyze all of the information
provided thereon, particularly on the back of the marker,
in an attempt to ascertain whether the descriptive words
VALVE ACTION were being used by petitioner as a
trademark.
Nor has petitioner provided any evidence that it has
promoted any of its VALVE ACTION designs as a trademark.
As noted, the only evidence of advertising is a 1997
catalog which shows the descriptive significance of VALVE
Cancellation No. 27,165
28
ACTION. Further, although the markers are pictured in
the catalog, it is the front of the markers which are
shown, and therefore the SEAL DESIGN and the BLOCK DESIGN
are not visible. The words VALVE ACTION do appear on the
front of the pictured NO-TOX marker, but the copy used
with this item, “Patent valve-activated ink-feed
mechanism” (bold-face type in original) merely emphasize
the descriptive nature of the words.
We have noted the testimony of petitioner’s
president, Mr. Pappageorge, that “years ago” “in the
early sixties and seventies”, p. 57, petitioner indicated
in its literature that VALVE ACTION was one of
petitioner’s trademarks by including an “R” or a “TM”.
Mr. Pappageorge’s testimony on this point was somewhat
vague.14 He never produced any copies of such literature,

14 The following quotes from the transcript give some idea of
the vagueness of the testimony:
Q: When did you obtain a federally registered registration on
Valve Acton?
A: Because we were using it for so many years, we had patents,
we had patents on all these valves, and they ran out, they
expired.
Q: You used circle R on Valve Action?
A: We did in the sixties, with the patents. People that had
the company before me.
Q: You never obtain [sic] a federal registration on Valve
Action?
A: I wasn’t the president of the company.
Q: That’s not my question. Did Mark-Tex---
A: Maybe they did. I’ve never seen it.
Q: You don’t know of one?
A: No, I don’t know of one, but they may have done it.
Cancellation No. 27,165
29
despite respondent’s request that he do so. Without any
documentary evidence we cannot conclude from Mr.
Pappageorge’s personal recollection of seeing an “R” or a
“TM” on literature that such symbols were used in a
manner that would have advised consumers that VALVE
ACTION was a trademark of petitioner’s. Further,
petitioner has provided no evidence as to the
distribution of any such literature to purchasers, such
that we can make any determination as to its impact.
Moreover, even if we were to accept Mr. Pappageorge’s
statements, according to his own testimony the use of the
“R” or “TM” ended many years ago.
The evidence also shows that petitioner allows the
use of its CIRCLE DESIGN and BLOCK DESIGN on markers that
it private labels for others. The table at page 21 of
petitioner’s brief summarizes these usages, which
includes 600,000 markers per year which it private
labeled for MDC Development Corp. between 1961 and 1987,
and 180,000 markers which it private labeled for Sulky of
America between 1988 and the taking of testimony in 1998.
Such a practice has been found, in other cases, to
detract from the distinctiveness of a party’s asserted
trademark. See British Seagull Ltd. v. Brunswick Corp.,

p. 59.
Cancellation No. 27,165
30
28 USPQ2d 1197 (TTAB 1993), aff’d. 35 F.3d 1527, 32
USPQ2d 1120 (Fed. Cir. 1999) (party’s action in producing
products bearing the asserted mark, sold by a competitor
without any reference to the party as the manufacturer of
them, is contrary to party’s claim of substantially
exclusive use); Edward Weck Inc. V. IM Inc., 17 USPQ2d
1142 (TTAB 1990) (third parties selling as their own some
of party’s instruments detracts from the alleged
distinctiveness of the party’s claimed trademark).
Accordingly, we find that petitioner has not
demonstrated that it has acquired any proprietary
trademark rights in the words VALVE ACTION. As a result,
it has not proven a necessary element of its claim of
priority, and we therefore need not consider whether or
when respondent may have acquired distinctiveness for its
mark.15

15 We note that it is petitioner’s position that no one can
establish secondary meaning in VALVE ACTION but that, if
respondent is able to establish acquired distinctiveness by its
use of the term, petitioner can establish priority of use based
on its own sales of markers. Petitioner’s analysis is
incorrect. Because the issue of cancellation on the ground that
respondent’s mark is merely descriptive and has not acquired
distinctiveness is not before us, petitioner must first
establish, in connection with its ground of likelihood of
confusion, that it has proprietary trademark rights in VALVE
ACTION before we need to consider whether or when respondent
established acquired distinctiveness of its mark.
Cancellation No. 27,165
31
The petition for cancellation on the ground that
respondent’s mark is likely to cause confusion with
petitioner’s alleged mark VALVE ACTION is dismissed.
However, we wish to point out that because the issue
of whether respondent’s mark is merely descriptive and
has not acquired distinctiveness is not a ground in this
cancellation proceeding, we have specifically not
considered this question. Accordingly, our decision
herein should not be read as indicating that we have
found respondent’s mark to have acquired distinctiveness,
nor as an indication that we would make such a finding if
a third party were to bring a cancellation action on this
ground.
This brings us to the second ground for
cancellation, likelihood of confusion with petitioner’s
registered mark ACTION MARKER and design for felt-tip
markers for industrial uses (Registration No. 1,552,841).
As pointed out by respondent in its brief, petitioner
failed to make this registration of record. The
testimony of Mr. Pappageorge, pointed to by petitioner as
providing notice to respondent of its registration, is
not sufficient to constitute appropriate identification
and introduction of the alleged registration.16 No status

16 The testimony, p. 6, is as follows:
Cancellation No. 27,165
32
and title copies of the registration were submitted, nor
did the witness even identify the registration by number
or state that the registration was currently owned by
petitioner or that the registration was currently
existing. Therefore, petitioner cannot rely on any
rights in this registration.
Petitioner has, in its brief, indicated that it also
relies on its common law rights in the mark ACTION
MARKER, and we agree that the issue of likelihood of
confusion with respect to this mark was tried. The
record shows that petitioner has used the mark ACTION
MARKER and design, in the form shown below, since 1959.17

Q: Just read, Mr. Pappageorge, the names which you
consider to be trademarks from the pen.
A: Sure. Action marker is a registered trademark, number
55. Action marker number 55 is a registered trademark. …
17 We note that in petitioner’s catalog petitioner also uses
the mark ACTION MARKER in both block letters and in lower case
letters. However, the evidence is not clear as to when
petitioner began using the mark in these forms because the
testimony relating to this point was directed to petitioner’s
use of VALVE ACTION, not of ACTION MARKER at all. Therefore, we
have had to determine from the VALVE ACTION testimony whether it
establishes use of ACTION MARKER as well. Because Mr.
Pappageorge indicated that art work for the markers changed
through the years, the evidence clearly establishes only prior
and continuing use of ACTION MARKER and design, as shown above.
However, even if we were to find that petitioner had prior
rights in ACTION MARKER in all-capital or all lower-case
letters, it would not change our decision herein.
Cancellation No. 27,165
33
The marker is sold as both a dye-based pen and a
pigmented ink pen. The invoices made of record by
petitioner show that ACTION MARKER pens have been sold in
many states throughout the United States, including North
Carolina, New York, Illinois, Wisconsin, Colorado and
Texas. There was no specific testimony about the types
of consumers for petitioner’s markers, but its catalog
describes petitioner as “the world leader in industrial
marking pens,” and the catalog lists the ACTION MARKER
markers in the “industrial” category. Petitioner’s
invoices show sales to tool manufacturing companies,
industrial shippers, and the like;18 there were no
listings for retail-type stores. Based on the evidence
of record, we must conclude that petitioner’s common law
rights in ACTION MARKER are limited to markers for
industrial use. With respect to petitioner’s
advertising, although Mr. Pappageorge alluded to some
promotional literature from the 1960s and 1970s, the only
material which has been made of record is the previously
mentioned 1997 catalog. Petitioner has not provided any
evidence as to its advertising expenditures nor, with the
exception of the submission of the 1997 catalog, any
Cancellation No. 27,165
34
details as to how its ACTION MARKER markers are
advertised or promoted.
Respondent first introduced its VALVE ACTION paint
marker in 1984, and has continuously used its mark VALVE
ACTION since that time. It advertises the marker
through, inter alia, advertisements in trade journals, at
trade shows, through price sheets and through product
bulletins which are used to promote the product to end
users and distributors.19
Accordingly, petitioner has demonstrated its prior
use of ACTION MARKER on markers.
Turning to the issue of likelihood of confusion, we
have, as we must, considered all of the relevant factors,
as set forth in In re E.I. du Pont de Nemours & Co.¸476
F.2d 1357, 177 USPQ 563 (CCPA 1976), in reaching our
decision. However, we will focus our discussion on the
factors discussed by petitioner in its brief.
There is no question that the parties’ goods are
identical. The evidence shows that petitioner’s markers
and respondent’s identified “paint filled markers for
marking” are the same product. Further, respondent’s

18 Because the invoices were filed under seal, we have been
deliberately vague in our descriptions of the purchasers.
19 We have not indicated advertising or sales figures in this
opinion because they were submitted under seal.
Cancellation No. 27,165
35
identification is not limited as to classes of consumers
or channels of trade, and therefore we must deem the
parties’ goods to travel in the same channels of trade
and be sold to the same classes of customers. Moreover,
the evidence shows that the parties have both appeared at
the same trade show and were both listed in the directory
program under the heading “markers.” Finally, there is
no question that these markers are inexpensive items.
Although all of the above factors favor petitioner,
the factor which does not is the similarity of the marks.
Petitioner argues, essentially, that the word MARKER in
its mark is a generic term, and the word VALVE in
respondent’s mark is merely descriptive, such that the
dominant parts of the mark are the identical word ACTION.
Although it is well established that, in comparing marks,
more or less weight may be given to particular elements,
petitioner’s position would amount to an impermissible
dissection of the marks. The marks are clearly different
in appearance and pronunciation because the initial word
in respondent’s mark is the word VALVE. And the marks
are clearly different in connotation. In VALVE ACTION,
the word VALVE modifies the word ACTION, so that the
meaning of this phrase, when applied to a marker, is a

Cancellation No. 27,165
36
marker which has a valve action. In petitioner’s mark,
on the other hand, the word ACTION modifies the word
MARKER, such that the connotation of the mark is that of
a marker which moves easily. This connotation is
reinforced by the depiction of the mark, using “movement”
lines which suggest that the words are moving. Thus,
when the marks are compared in their entireties, they
convey very different commercial impressions.
We have also considered petitioner’s argument that
respondent has merely added the descriptive term VALVE to
petitioner’s mark ACTION MARKER (petitioner viewing
respondent’s mark as the equivalent of VALVE ACTION
MARKER). Although petitioner is correct that there are
cases stating that one may not appropriate the entire
mark of another as part of a composite mark, that rule
generally applies to the addition of a trade name of
house mark. See Key West Fragrance & Cosmetic Factory,
Inc. v. Mennen Co., 216 USPQ 168 (TTAB 1982). However,
that rule does not apply where a word comprising a mark
is combined with other features in a new mark in such a
manner that its identity is lost, or is so merged with
other features that similarity in sound, appearance or
meaning is lacking. See Miller Brewing Co. v. Premier
Beverages, Inc., 210 USPQ 43, 48 (TTAB 1981) (OL’ BOB
Cancellation No. 27,165
37
MILLER distinguishable from MILLER), quoting Wyeth
Incorporated v. Ingram Laboratories, Inc., 83 USPQ 326
(Comm. 1949). For the reasons given above, we find that
VALVE ACTION creates a different commercial impression
from ACTION MARKER, and the two marks would not be
equated.
Despite the similarities of the goods, trade
channels and consumers, and their inexpensive nature, we
find that the marks are so different that confusion is
not likely to result from their contemporaneous use. See
Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330, 21
USPQ2d 1142 (Fed. Cir. 1991) (a single Du Pont factor may
be dispositive). Buttressing our conclusion is the fact
that in the 14 years that both parties used their marks,
and despite hundreds of thousands of markers sold, no
instances of actual confusion have been experienced by
either party.
We would also point out that, although not raised by
petitioner, there has been no showing of fame of its
mark, and therefore this factor does not weigh in
petitioner’s favor.
The petition on the ground that respondent’s mark is
likely to cause confusion with petitioner’s mark ACTION
MARKER and design is dismissed.
Cancellation No. 27,165
38
Decision: The petition for cancellation is
dismissed.
E. J. Seeherman
T. J. Quinn
B. A. Chapman
Administrative Trademark Judges
Trademark Trial and Appeal Board