ReSashay Square Dance, Inc.

Trademark Trial and Appeal Board

Jul 8, 2015

No. 86041312 (T.T.A.B. Jul. 8, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: July 8, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re ReSashay Square Dance, Inc.
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Serial No. 86041312
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Martin P. Hoffman of Stein IP LLC,
for ReSashay Square Dance, Inc.
Lyndsay Kuykendall, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Kuhlke, Taylor and Wellington,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
ReSashay Square Dance, Inc (“Applicant”) seeks registration on the Principal
Register of the mark ReSashay (in standard characters)1 for, as amended:
On-line retail consignment stores featuring women's,
men's and children's square dancing apparel and
accessories, namely, children's square dancing petticoats;
On-line retail store services featuring women's, men's and
children's square dancing apparel and accessories,

1 Although Applicant seeks to register the mark in standard character format, the mark
appears on the drawing page and on the specimen as set forth above in both capital and
lower case lettering.
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namely, children's square dancing petticoats in
International Class 35.2
The Trademark Examining Attorney has refused registration of Applicant’s
mark on the grounds of a likelihood of confusion under Trademark Action Section
2(d), 15 U.S.C. § 1052(d), with the mark in registration No. 3892932, MYSASHAY
(standard characters), for “Ballet shoes; Ballet slippers; Footwear for women;
Insoles for footwear” in International Class 25.3
When the refusal was made final, Applicant requested reconsideration. After the
Examining Attorney denied the request for reconsideration, Applicant appealed to
this Board. We reverse the refusal to register.
I. Evidentiary Matters
Before proceeding to the merits of the refusal, we address an evidentiary matter.
Applicant has attached to its brief numerous exhibits which either duplicate or are
somewhat similar4 to those it made of record with its request for reconsideration. To
the extent that the exhibits are duplicates, the Board generally discourages
attaching such materials to the briefs. See In re SL & E Training Stable, Inc., 88
USPQ2d 1216, 1220 n.9 (TTAB 2007) (attaching as exhibits to brief material
already of record only adds to the bulk of the filed, and requires the Board to

2 Application Serial No. 86041312 was filed on August 19, 2013, based upon Applicant’s
claim of first use anywhere and in commerce since at least as early as August 29, 2007.

3 Registered December 21, 2010.
4 We particularly note that the similar web pages are of merchandise which Applicant
offers for sale on its website, but which were retrieved at different times and thus reflect
apparent changes in inventory. To the extent that these web pages differ, they are
considered untimely evidence and will not be further considered because “[t]he record in the
application should be complete prior to the filing of an appeal.” See 37 C.F.R. § 2,142(d).
Serial No. 86041312
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determine whether attachments had been made properly of record); In re Thor Tech
Inc., 85 USPQ2d 1474, 1475 n.3 (TTAB 2007) (attaching evidence from record to
briefs is duplicative and unnecessary). It is much more helpful to identify, by the
date of submission and the page numbers in the TSDR (Trademark Status and
Document Retrieval) database, the materials referred to in a brief. Additionally,
when citing to the briefs, citations should reflect the TTABVUE5 docket entry
number, and the electronic page number where the argument appears.
II. Discussion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant
and the Examining Attorney have also submitted arguments regarding the relevant
channels of trade, the sophistication of the purchasers and actual confusion. We
have considered each of these issues and all other matters of which there is
evidence of record.
The Marks

5 TTABVUE is the Board’s electronic docketing system.
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We consider first the du Pont factor of the similarity or dissimilarity of the
marks at issue in their entireties as to appearance, sound, connotation and
commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
Nonetheless, it is not improper to accord more or less weight to a particular feature
of a mark so long as the ultimate conclusion rests on a consideration of the marks in
their entireties. In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985).
Applicant’s mark RESASHAY and the cited mark MYSASHAY are similar in
appearance and sound to the extent that they both include as the last six letters the
word SASHAY, but differ in that they each begin with a different two letter, single
syllable “prefix”; Applicant’s mark beginning with the letters “RE” and the cited
mark with the letters “MY.” The common word “SASHAY,” as set forth below, is
defined, in pertinent part, on Vocabulary.com as both a particular ballet movement
and square dancing step. In ballet the term is defined as “quick gliding steps with
one foot always leading” and in square dancing as “a square dance figure; partners
circling each other taking a sideways step.”6 As noted by the Examining Attorney,
and confirmed above, “sashay” has a strong definition in the dance community.”
However, contrary to the Examining Attorney’s positon, we do not find this
affiliation with the dance community results in the term SASHAY dominating both
marks. Instead, because of that “strong definition” with the dance community, we

6 Exhibit to the March 15, 2014 Office Action.
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find the “SASHAY” portion of each marks to be highly suggestive of the goods or
services offered and sold thereunder and, thus, a weaker element of each mark. See,
e.g., Embarcadero Technlogies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1837 (TTAB
2013) citing to Pioneer Hi-Bred Corn Co. v. Welp,, 280 F.2d 151, 126 USPQ 398
(CCPA 1960) (“The record shows that both parties deal in hybrid poultry, and ‘Hy’
therefore has a suggestive significance, hence is not entitled to as great weight in
determining likelihood of confusion as an arbitrary word or syllable.”); Lauritzen &
Co. v. The Borden Co., 239 F,2d 405, 112 USPQ 60, 62 (CCPA 1956) (“In the instant
case, the syllable ‘lac,’ which is common to the two trademarks under consideration,
has a somewhat descriptive connotation as applied to milk products, and has been
commonly used as a portion of trademarks for such products. Accordingly, it should
be given little weight in determining whether those marks are confusingly
similar.”). Accordingly, we find that the letters “RE” in Applicant’s mark and “MY”
in the cited mark serve to distinguish the marks in both appearance and sound.
We further find the differing two first letters distinguish the two marks in terms
of connotation. First the term “resashay” is not only a term of art in the square
dancing community,7 but also imparts a meaning that may be understood by
consumers as a play on second-hand ownership of the children’s petticoats offered
for sale in connection with Applicant’s online retail consignment store services,
while the letters “MY” in the cited mark MYSASHAY lend an overall possessive
quality to that term.

7 See exhibit to Applicant’s August 15, 2014, Request for Reconsideration.
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While there is a degree of similarity between Applicant’s mark RESASHAY and
the cited mark MYSASHAY in terms of appearance and sound, when viewed as a
whole, each mark conveys a separate and distinct connotation and commercial
impression, inasmuch as the common element SASHAY is suggestive to the dance
community – which is the focus of the respective goods and services. That is,
consumers, when viewing the marks in their entireties, and keeping in the mind the
dance centric nature of the respective goods and services, will focus on the letters
RE and MY to distinguish the marks.
Accordingly, this du Pont factors weighs in favor of finding no likelihood of
confusion.
The Goods and Services
We now consider the second du Pont factor, the similarity or dissimilarity of the
goods and services. It is well-established that the goods and services need not be
similar or competitive, or even offered through the same channels of trade, to
support a holding of likelihood of confusion. It is sufficient that the respective goods
and services are related in some manner, and/or that the conditions and activities
surrounding the marketing thereof are such that they would or could be
encountered by the same persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief that they originate from the
same source. See Hilson Research, Inc. v. Society for Human Resource Management,
27 USPQ2d 1423 (TTAB 1993); In re International Telephone & Telephone Corp.,
197 USPQ 910, 911 (TTAB 1978). The issue, of course, is not whether purchasers
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would confuse the goods and services, but rather whether there is a likelihood of
confusion as to the source thereof. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Here, Applicant’s services are identified as “On-line retail consignment stores
featuring women's, men's and children's square dancing apparel and accessories,
namely, children's square dancing petticoats; On-line retail store services featuring
women's, men's and children's square dancing apparel and accessories, namely,
children's square dancing petticoats.” Although Applicant, during prosecution of its
application, was adamant that the identification include the language “women's,
men's and children's square dancing apparel and accessories,” given the limitation
inherent in the term “namely,” we note that Applicant’s services essentially are:
On-line retail consignment stores featuring children's
square dancing petticoats; On-line retail store services
featuring children's square dancing petticoats.
It is those services that we compare to the cited “Ballet shoes; Ballet slippers;
Footwear for women; Insoles for footwear.”
In support of her position that Applicant’s services are related to the services
recited in the cited registration, the Examining Attorney made of record with her
January 2, 2014 Office Action webpages from the websites of six companies,8 in
addition to Applicant’s, purportedly showing that the same entity commonly
manufacturers and provides “relevant goods and services and markets the goods
and services under the same mark.” A review of this evidence reveals, however,

8 The websites are http://www.revolutiondance.com/intor-jt--products-93.php?page id=70,
http://www.leosdancewear.com/product/stretch-split-sole-ballet-shoes,
http://www.capezio.com/women’s/shoes/pointe-shoes/, http://blochworld.com/product/bloch-
ladies-rayze-jaxx-shoe, http://www.freedshop.com/Products1.aspx?catid=8, and
http://www.dancer.com/gmpointe.php, Attachments to Office Action issued January 2, 2014.
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that while the Examining Attorney is correct in that the evidence “show[s] that
many companies make ballet shoes and offer them for sale under the same mark,” it
fails to show that the goods of the cited registrant, i.e., ballet shoes and slippers or
other footwear and insoles, and the services of Applicant, i.e., on-line retail and
retail consignments stores featuring children’s petticoats, are offered under the
same mark. With particular regard to the evidence, although the web page of
Revolution Dancewear features a drop down menu with headings including “Ballet,”
“Skirts, Dresses + Sweaters,” and “Foundations,” the Examining Attorney did not
include the web pages featuring these items. Nor is there any other indication of the
specific items sold under these categories or whether the items sold are offered
under a single mark. The web pages of Freed of London have similar short comings.
Further, the web pages of Leo USA 1924, Capezio, Bloch and dancer.com feature
only ballet slippers or other dance shoes.
With her March 15 2014, Office Action, the Examining Attorney made of record
webpages from various websites which she argues show companies that offer for
sale dance shoes and dance apparel, including petticoats. We find this evidence
unpersuasive. First, the evidence from the websites9 of Carrie B’s
(http://www.carriebs.com), Ali Express (http://www.aliexpress.com), Lebos
(http://www.lebos.com) and Discount Dance Supply (http://www.discountdance.com)
fail to show that a single entity offers both ballet or other dance shoes and
children’s square dancing petticoats. While Carrie B’s and Discount Dance Supply

9 Full urls for the referenced websites can be found on unnumbered pages 4 and 5 on the
Office Action.
Serial No. 86041312
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offer both dance shoes and children’s tutus, they do not offer both ballet shoes and
petticoats. Similarly, although Ali Express offers both ballet and dance shoes and
square dancing petticoats, the petticoats appear to be bridal foundation garments.
The Examining Attorney also made of record excerpts from the following
websites,
• http://secondactdancewear.com/shoes/ballet-shoes/
• http://consignmentcolorado.com/consignment-shops-stores-
denver-baby-childrens-maternity-clothing/10
• http://www.snickerpoodles.biz/consign_design.php, and
• http.uptownkidsconsignment.com/

showing that ballet shoes are sold second hand or through consignment shops, and
not strictly by specialty stores. While that may be so, this evidence has limited
probative value because it also shows that consignment and or other resale shops
sell a wide variety of goods, including strollers, baby monitors, magazines, linens,
equipment, furniture and toys.
Last, although the website of Petticoat Junction Dance Shop
(http://www.petticoatjct.com/mm5/merchant.mvc?...) offers both women’s ballet
shoes and other dance footwear and square dancing petticoats, there is no
indication that these goods are offered under the same mark and evidence from a
single website does not persuade us that the cited goods and Applicant’s identified
services are sufficiently related.

10 The webpages list various consignment shops in the Colorado area.
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For the reasons discussed above, the evidence falls far short of convincing us
that consumers would encounter ballet shoes and other women’s footwear and
insoles, and online retail store and online retail consignment store services
featuring children’s square dancing petticoats under circumstances that would lead
to the mistaken belief that they emanate from a common source.
We accordingly find Applicant’s services and Registrant’s goods unrelated for
purposes of our likelihood of confusion of analysis and this du Pont factor weighs
against a finding of likelihood of confusion.
Channels of Trade
In the absence of any limitations in the identification as to channels of trade in
the cited registration, we must presume that the identified goods will be purchased
in the usual channels of trade for ballet shoes and other footwear, including online
sales – the trade channel through which Applicant offers its services. Thus, to the
extent Registrant’s goods and Applicant’s services are offered online the channels of
trade overlap. However, the record does not support a finding that the respective
items, ballet shoes and square dancing petticoats, are commonly sold on the same
website, let alone the same web page.
Sophistication of the Purchasers
Applicant argues that its customers would not easily be confused because they
are sophisticated and will exercise a reasonable degree of care, inasmuch as many of
Applicant’s goods sell for more than $100. First of all, we are concerned only with
the children’s petticoats, many of which cost less than $100, featured in Applicant’s
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online retail store and retail consignment store services. Moreover, even assuming
consumers who avail themselves of Applicant’s services exercise some degree of care
in their purchasing decisions, even careful purchasers can be confused as the
trademarks. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd.,
434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).
Actual Confusion
The final argument made by Applicant is that both its applied-for mark and the
cited mark have been in use for six years without any actual confusion. We point
out, however, that it is not necessary to show actual confusion in order to establish
likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d
1546, 223 USPQ 1025 (Fed. Cir. 1990). Particularly in an ex parte proceeding,
Applicant’s assertion of the absence of actual confusion is of little probative value in
our determination on the issue of likelihood of confusion because the Board cannot
readily determine whether there has been a significant opportunity for actual
confusion to have occurred, such that the absence of confusion is meaningful. See In
re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Kangaroos U.S.A., 223
USPQ 1025 (TTAB 1984). In those situations where the Board has recognized the
absence of actual confusion as probative in an ex parte setting, there existed a
“confluence of facts” which together strongly suggested that the absence of
confusion was meaningful and should be given probative weight. See In re Opus One
Inc., supra. Such a “confluence of facts” is not present in this record.
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In conclusion, while Applicant’s mark RESASHAY has some similarity to
Registrant’s mark MYSASHAY to the extent that both marks include the highly
suggestive word SASHAY, they have distinct connotations and commercial
impressions and we are not persuaded, on this record, that purchasers of
Registrant’s ballet shoes; ballet slippers; footwear for women and insoles for
footwear would encounter Applicant’s on-line retail consignment stores featuring
women's, men's and children's square dancing apparel and accessories, namely,
children's square dancing petticoats and on-line retail store services featuring
women's, men's and children's square dancing apparel and accessories, namely,
children's square dancing petticoats under circumstances that would lead them to
believe that they emanate from a common source.
Decision: The refusal to register under Section 2(d) of the Trademark Act is
reversed.