Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

---

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88486712 CAMINO(Standard Characters, see http://uspto.report/TM/88486712/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 009 for Downloadable computer software for the education of elementary, middle school, and high school students; Downloadable computer software to facilitate collaboration between and amongst teachers and students
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Downloadable computer software for the education of elementary, middle school, and high school students; Downloadable computer software for the education of elementary, middle school, and high school students in the fields of English, reading, math, history, science; Downloadable computer software to facilitate collaboration between and amongst teachers and studentsClass 009 for Downloadable computer software for the education of elementary, middle school, and high school students in the fields of English, reading, math, history, science; Downloadable computer software to facilitate collaboration between and amongst teachers and students
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following:
Current: Class 041 for Educational services, namely, the education of elementary, middle school, and high school students; Educational services, namely, the operation of elementary schools, middle schools and high schools; Educational services, namely, providing training and seminars to teachers and administrators of elementary schools, middle schools, and high schools
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Educational services, namely, the education of elementary, middle school, and high school students; Educational services, namely, educating at senior high schools, educating at junior high schools, educating at elementary schools; Educational services, namely, the operation of elementary schools, middle schools and high schools; Educational services, namely, providing training and seminars to teachers and administrators of elementary schools, middle schools, and high schools; Educational services, namely, providing training and seminars to teachers and administrators of elementary schools, middle schools, and high schools in the field of collaboration between and amongst teachers and studentsClass 041 for Educational services, namely, educating at senior high schools, educating at junior high schools, educating at elementary schools; Educational services, namely, the operation of elementary schools, middle schools and high schools; Educational services, namely, providing training and seminars to teachers and administrators of elementary schools, middle schools, and high schools in the field of collaboration between and amongst teachers and students
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following:
Current: Class 042 for Platform as a Service (PAAS), featuring computer software platforms for the education of elementary, middle school, and high school students; Platform as a Service (PAAS), featuring computer software platforms to facilitate collaboration between and amongst teachers and students; Non-downloadable online computer software for the education of elementary, middle school, and high school students; Non-downloadable online computer software to facilitate collaboration between and amongst teachers and students
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Platform as a Service (PAAS), featuring computer software platforms for the education of elementary, middle school, and high school students; Platform as a Service (PAAS), featuring computer software platforms for the education of elementary, middle school, and high school students in the field of English, reading, math, history, science; Platform as a Service (PAAS), featuring computer software platforms to facilitate collaboration between and amongst teachers and students; Non-downloadable online computer software for the education of elementary, middle school, and high school students; Non-downloadable online computer software for the education of elementary, middle school, and high school students in the fields of English, reading, math, history, science; Non-downloadable online computer software to facilitate collaboration between and amongst teachers and studentsClass 042 for Platform as a Service (PAAS), featuring computer software platforms for the education of elementary, middle school, and high school students in the field of English, reading, math, history, science; Platform as a Service (PAAS), featuring computer software platforms to facilitate collaboration between and amongst teachers and students; Non-downloadable online computer software for the education of elementary, middle school, and high school students in the fields of English, reading, math, history, science; Non-downloadable online computer software to facilitate collaboration between and amongst teachers and students
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Camino Education Corp., a corporation of Delaware, having an address of
      Av. Pedroso de Morais, 2120-Pinheiros
      Sao Paulo-SP, 05420-003
      Brazil

Proposed: Camino Education Corp., a corporation of Delaware, having an address of
      Av. Pedroso de Morais, 2120-Pinheiros
      Sao Paulo-SP, 05420-003
      Brazil
      Email Address: SETrademarks@klgates.com

The owner's/holder's current attorney information: Pam Kohli Jacobson. Pam Kohli Jacobson of K&L GATES LLP, is located at

      925 4TH AVE., STE 2900
      SEATTLE, Washington 98104
      United States
The docket/reference number is 140346000006.
      The phone number is 206-370-7605.
      The email address is SETrademarks@klgates.com

The owner's/holder's proposed attorney information: Pam Kohli Jacobson. Other appointed attorneys are Ryan Edmondson, Michael Meredith, Katie Christensen. Pam Kohli Jacobson of K&L Gate LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      925 4th Ave., Ste 2900
      Seattle, Washington 98104
      United States
The docket/reference number is 140346000006.
      The phone number is 206-370-7605.
      The email address is Pam.Jacobson@klgates.com

Pam Kohli Jacobson submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      PAM KOHLI JACOBSON
      PRIMARY EMAIL FOR CORRESPONDENCE: SETrademarks@klgates.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): Pam.Jacobson@klgates.com; Ryan.Edmondson@klgates.com; Grace.Carlson@klgates.com; Terri.Li.SE@klgates.com

The docket/reference number is 140346000006.
Correspondence Information (proposed):
      Pam Kohli Jacobson
      PRIMARY EMAIL FOR CORRESPONDENCE: Pam.Jacobson@klgates.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): SETrademarks@klgates.com; Scott.Miles@klgates.com; Terri.Li.SE@klgates.com; CaminoIPTeam@klgates.com

The docket/reference number is 140346000006.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

ADDITIONAL STATEMENTS
Translation
The English translation of Camino in the mark is pathway.


SIGNATURE(S)
Response Signature
Signature: /Pam Kohli Jacobson/     Date: 03/16/2020
Signatory's Name: Pam Kohli Jacobson
Signatory's Position: Attorney of record, Washington bar member

Signatory's Phone Number: 206-370-7605

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    PAM KOHLI JACOBSON
   K&L GATES LLP
   
   925 4TH AVE., STE 2900
   SEATTLE, Washington 98104
Mailing Address:    Pam Kohli Jacobson
   K&L Gate LLP
   925 4th Ave., Ste 2900
   Seattle, Washington 98104
        
Serial Number: 88486712
Internet Transmission Date: Mon Mar 16 15:08:25 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20200316150825687
791-88486712-7107591e06c376742b587f847b8
5065ab4fad2251acae917d78a36b477619fbef1-
N/A-N/A-20200316141020823624