Mark Dissimilarity & Purchaser Sophistication Outweigh Other Factors

Background

The Applicant, Jutiso Inc., sought to register the standard character mark SEVEN STARLING in two classes:

• International Class 41 for providing classes, seminars, workshops, programs, and training in the fields of pregnancy, childbirth, fertility, preconception, conception, postpartum depression, miscarriage and loss, parenting, menopause, and mental health; and
• International Class 45 for organizing, managing, and facilitating support groups in the same fields.

The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act based on a likelihood of confusion with the mark STARLING PHYSICIANS (Registration No. 5049373). The cited registration covers medical services in International Class 44. The word PHYSICIANS is disclaimed.

How the Board Analyzed the DuPont Factors

DuPont Factor #6: Strength or Weakness of Registrant’s Mark

The Board opened its likelihood of confusion analysis with the sixth DuPont factor, addressing the Applicant's contention that the Registrant's mark is conceptually weak. To support this, the Applicant submitted 11 third-party registrations for marks containing STAR and six containing STARLING.

The Board dismissed the 11 STAR marks as irrelevant because they are not similar to STARLING PHYSICIANS. It then narrowed the six STARLING registrations down to just one, noting the other five were either canceled or lacked similarity in their covered services.

While this single remaining registration featured a similar mark and services, the Board ruled that one third-party registration falls short of the extensive evidence required to prove conceptual weakness.

Turning to distinctiveness, the Board noted that because STARLING PHYSICIANS is registered on the Principal Register without a Section 2(f) claim, it is presumed inherently distinctive.

Nevertheless, the Board classified it as suggestive rather than arbitrary. Because "PHYSICIANS" was disclaimed, "STARLING" served as the sole source-identifying element. Because it merely suggested a group of doctors (perhaps via a surname or nature theme), the Board found it conceptually weak and entitled to a narrower scope of protection.

DuPont Factor #1: Similarity of the Marks

Under the first DuPont factor, the Board found the marks dissimilar in their entireties

Dominant Term

The Examiner argued that "STARLING" was dominant in both marks and that "SEVEN" was merely an adjective describing the number of birds. Therefore, according to the Examining Attorney, the two marks created a similar overall commercial impression. The Board rejected this interpretation, noting that while "STARLING" is the dominant portion of STARLING PHYSICIANS, it was not necessarily dominant in SEVEN STARLING. In the Applicant’s mark, the Board found that the word "SEVEN" was an arbitrary term as applied to educational and support services. It also sat in the leading position, which gave it significant weight.

Appearance

Furthermore, the Board found that although the two marks share the word "STARLING," their structures differ significantly due to the placement of that word and the total lack of relationship between "SEVEN" and "PHYSICIANS."

Sound

The repeating "S" sound in SEVEN STARLING also created a distinct aural and visual device entirely absent in STARLING PHYSICIANS. The Examining Attorney attacked the Applicant's assertion that this alliteration made the mark distinct and memorable, arguing there was no marketplace evidence to prove it. However, the Board deemed that the evidence was the mark itself. Recognizing the alliteration, the Board found that this linguistic flair helped distinguish the marks despite their shared word.

Connotation

The Applicant argued that SEVEN STARLING "communicates a message of support, solidarity, and strength in numbers," and submitted scientific evidence showing that starlings coordinate with their seven nearest neighbors to form "murmurations." The Examining Attorney countered that there was no evidence consumers would actually understand this unique meaning upon viewing the mark.

The Board sided with the Applicant. It found that even if consumers were unaware of starling behavior, dictionary definitions in the record supported a group-oriented meaning when viewed in connection with the Applicant’s educational services. In contrast, based on evidence submitted by the Applicant showing the STARLING is a surname, the Board determined that the cited mark suggests a surname followed by a descriptive term.

Ultimately, the Board concluded that these different structures and meanings create distinct commercial impressions, weighing heavily against a likelihood of confusion.

DuPont Factors #2 & #3: Similarity of the Services, Channels of Trade, and Classes of Consumers

Under the second and third DuPont factors, the Board found the parties' services to be related. To support this, the Examining Attorney submitted fourteen use-based third-party registrations covering both the Applicant's and the Registrant's services, demonstrating that such offerings frequently emanate from a single source.

This finding was bolstered by >10 website screenshots from third-party entities showing that the same medical providers often offer both clinical medical services and educational classes or support groups. Together, these exhibits established that the services are legally related.

The Board also found that the trade channels and classes of consumers overlap because both parties target women seeking healthcare and support in fields like pregnancy and fertility. Despite the Applicant’s argument that its services are strictly non-medical, the Board noted that the broad "medical services" in the cited registration fully encompass the specialized, health-adjacent fields mentioned in the application.

Although the Board found that the second and third DuPont factors favored a likelihood of confusion, it reached this conclusion only after analyzing the Applicant's various service classes separately and meticulously parsing the evidence relevant to each.

DuPont Factor #4: Consumers’ Sophistication and Purchasing Conditions

Applying the fourth DuPont factor, the Board found that consumers exercise a high degree of care when selecting healthcare services. The Board noted that ordinary consumers are sophisticated regarding medical decisions.

Furthermore, the evidence showed that the Applicant's services involve a multi-step process of referrals, consultations, and insurance coordination, which effectively precludes impulse purchasing. Accordingly, the Board concluded that this factor weighs against a likelihood of confusion.

Conclusion

Balancing all the factors considered, the Board reversed the refusal to register under Section 2(d). Although the Board found the services and trade channels to be related, it determined that the dissimilarity of the marks and the sophistication of consumers outweighed the factors favoring a likelihood of confusion.

I love digging into reversals because, even after years of doing this, a case like In re Jutiso Inc. comes along and reminds me just how much nuance there is in what we do. When we’re in the thick of prosecution, it’s easy to get bogged down by the usual "Examining Attorney says X, Applicant says Y" rhythm. But every now and then, you come across a case where the facts just line up beautifully. In this one, every single element of the first DuPont factor: sound, structure, connotation, and commercial impression, converged perfectly to dismantle the refusal.

Take the Applicant’s origin story, for example. We’ve all had clients with beautifully meaningful, niche brand narratives, and we’ve all had EAs dismiss the story for lacking evidence showing consumer awareness. Here, the Applicant explained that starlings coordinate with their seven nearest neighbors to form murmurations, creating a symbol of solidarity. But the real brilliance was how they anchored that narrative, using the dictionary definitions the EA himself provided to corroborate a group-oriented meaning. It's a great reminder that even if an EA doesn't buy your narrative initially, you are building the record for the Board. If you can tether a client's story to objective evidence, do it.

That narrative also set up a fascinating grammatical defense that the Board highlighted in footnote 17. The Board took a strict linguistic approach, pointing out that if "seven" was merely a descriptive adjective modifying the bird, the mark grammatically should be SEVEN STARLINGS. Because it was singular, the EA's argument completely crumbled, allowing the Board to find "SEVEN" to be an arbitrary, dominant leading term. It’s a testament to good brand creation, too. Choosing "seven" instead of "six" not only introduces the rolling "S" alliteration but avoids that harsher "X" sound, keeping the mark soft and pleasing to the ear.

To top it all off, the strategy of introducing evidence that "STARLING" is a common surname was a deft touch. While we can't change the fact that a mark is registered on the Principal Register and carries a presumption of inherent distinctiveness, we can absolutely show that it is conceptually weak under a DuPont analysis. Proving it suggested a surname cast just enough a shadow of doubt to narrow its scope of protection. It’s incredibly inspiring to see an analysis where grammar, phonetics, and a client's genuine origin story all weave together so persuasively.

Have you ever leaned into a strict grammatical approach like this to defeat a 2(d) refusal? I would love to hear about it.