Pro Bono In Action
Winston Team Secures Trademark Approval for Pro Bono Client Paws for Heroes
Pro Bono In Action
Winston Team Secures Trademark Approval for Pro Bono Client Paws for Heroes
February 21, 2019
Winston & Strawn attorney Jennifer Golinveaux overturned a final office action against the trademark application for the mark Paws for Heroes. The Houston-based non-profit organization matches military services members suffering from PTSD with companion shelter dogs.
The trademark application for Paws for Heroes and design was refused on the basis of a likelihood of confusion with the prior-registered Pawz for Wounded Veterans and design for providing service dogs to military members. Two previous attempts to overcome the refusal were unsuccessful. The United States Patent and Trademark Office (USPTO) Examiner insisted that this was a “strong likelihood of confusion refusal.”
The pro bono team submitted a Request for Reconsideration with the USPTO—a final opportunity to respond to an Office Action before an appeal to the Trademark Trial and Appeal Board. The Request for Reconsideration presented new case law as well as new arguments regarding visual and aural differences between the marks and notable differences between the overall commercial impressions of the respective marks. Creative arguments were needed and the team focused on the different connotations between the literal elements of the respective marks, namely “heroes” and “wounded veterans;” dictionary definitions and stock photographs associated with each term were submitted to bolster the argument.
The Request for Reconsideration also compared the subtle, yet distinct, differences between companion and service dogs according to the Americans with Disabilities Act. After a short conversation about their four-legged friends, former associate, convinced the Examiner to accept an amendment to the client’s applied-for services making it easier for the team to further distinguish the two marks.
The Examiner accepted the arguments and withdrew the likelihood of confusion refusal. Our client’s trademark application is set to be published for opposition and if unopposed, a registration certificate will be issued.