`
`B
`
`ATTORNEY DOCKET: 68817.50101
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In re: Trademark application of
`Paradise Kitchens, Inc.
`
`Serial No: 78/379,360
`
`Filed: March 5, 2004
`
`Mark: PARADISE KITCHENS
`
`Charles N. Quinn
`Reg. No. 27,223
`Fox Rothschild LLP
`
`2000 Market Street, 10”‘ Floor
`Philadelphia, PA 19103
`Tel: 215-299-2135
`Fax: 215-299-2150
`
`Email: cguinn@foxrothschild.com
`Deposit Account: 50-1943
`
`RESPONSE TO NOTICE OF ABANDONMENT
`
`\ Commissioner for Trademarks
`\ P.O. Box 1451
`\ Alexandria, VA 22313-1451
`1
`
`\ Sir:
`\
`
`On October 27, 2005, a Response to the final Office Action mailed May
`\
`10, 2005 was dispatched to the U.S. Patent and Trademark Office, along with a
`Notice of Appeal. A copy of the Response and Notice of Appeal are attached
`
`hereto as Attachment 1.
`
`\\
`
`These papers were received by the U.S. Patent and Trademark Office on
`
`No\Vember 1, 2005. A copy of the stamped postcard acknowledging this receipt
`\
`
`
`lllllllIIIIIllllllllllllllllllllllllllllllllllllll
`
`1
`
`.
`.
`12 3° 2°05
`
`u.s.Patent&TMOfclTMMailRep!0:.#72
`
`is attached hereto as Attachment 2.
`K‘
`\
`PH2 2445o6v1 12/30/05
`
`\
`
`
`
`ATTORNEY DOCKET: 68817.50101
`TRADEMARK
`
`On December 6, 2005, a review of the records of the U.S. Patent and
`
`Trademark Office for the above-identified trademark application reveals that
`
`neither the filing of the Response nor Notice of Appeal dispatched October 27,
`
`2005 have been entered as a part of the record for this application and that the
`
`last entry for the Prosecution History is the final refusal e-mailed on May 10,
`
`2005. A copy of the “Latest Status Info” dated December 6, 2005 is attached as
`
`Attachment 3.
`
`On December 9, 2005, a Notice of Abandonment was issued. It should be
`
`noted that this paper did not receive the undersigned’s office until December
`
`20, 2005. A copy of this Notice of Abandonment is attached as Attachment 4.
`
`In view of the above, the following is requested:
`
`1.
`
`The Response dispatched to the U.S. Patent and Trademark Office
`
`on October 27, 2005 be entered into the record for the above-identified
`
`application.
`
`2.
`
`In view of the timely filing of the Notice of Appeal, that the
`
`\ application be restored to pending status and that the appeal for this
`
`\ application be instituted.
`\
`
`3
`
`3.
`
`That the Motion for Extension of Time attached hereto as
`
`T‘, Attachment 5 be granted.
`
`To the extent there is any fee required in connection with the receipt,
`
`acceptance and/or consideration of declaration and/or any accompanying
`\A
`
`I
`
`PH2 244506vl 12/30/05
`
`
`
`ATTORNEY DOCKET: 68817.50101
`TRADEMARK
`
`papers submitted herewith, please charge all such fees to Deposit Account 50-
`
`1943.
`
`Respectfully submitted,
`
`
`
`Date:
`
`
`December 30 2005
`
`Fox Rothschild LLP
`
`2000 Market Street, 10”‘ Floor
`Philadelphia, PA 19103-3291
`Tel: (2 1 5) 299-2135
`email: cquinn@foxrothschild.com
`
`Certificate of Mailing Under 37 C.F.R. 1.10
`
`T
`EXPRESSMAlLNO.:_- ~..
`
`I hereby certify that this paper, along with any paper referred to as being attached or enclosed andlor
`fee is being deposited with the United States Postal Service, “Express Mail - Post Office to
`Addressee" servlce under 37 C.F.R. 1.10, on the date indicated below, and is addressed to the
`Commissioner for Trademarks. P.O. Box 1451, Alexandria, VA 22313-1
`12/30/05
`Date of Deposit
`
`/'
`
`Signature
`Sherry Barag
`Type or print name of person
`
`(
`
`PH2 244506vl 12/30/05
`
`
`
`ATTACHMENT 1
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`ATTORNEY DOCKET: 68817.50101
`TRADEMARK
`
`Applicant:
`
`Paradise Kitchens, Inc.
`
`Serial No.2
`
`78/379,360
`
`Filed:
`
`March 5, 2004
`
`Mark:
`
`PARADISE KITCHENS
`
`Charles N. Quinn
`Reg. No. 27,223
`Customer No. 34661
`
`Fox Rothschild LLP
`2000 Market Street, 10”‘ Floor
`Philadelphia, PA 19103
`Tel: 215-299-2135
`
`Fax: 215-299-2150
`Email: cguinn@foxrothschild.com
`Deposit Account: 50-1943
`
`RESPONSE
`
`Commissioner for Trademarks
`P.O. Box 145 1
`
`Alexandria, VA 22313-1451
`
`Sir:
`
`This is submitted in response to an official action bearing an e-mail transmission
`
`\
`
`date of 10 May 2005 in which the examining attorney maintained a refusal of registration
`for the instant mark based on alleged likelihood of confusion between the instant mark
`\\ and the mark that is the subject ofU.S. registration 779,139.
`1
`1
`\1
`
`PH2 241545v1 10/27/05
`
`\
`
`1
`
`
`
`ATTORNEY DOCKET: 6881750101
`TRADEMARK
`
`Applicant again traverses the refusal of registration based on likelihood of
`
`confusion as between applicant’s mark and the mark that
`
`is the subject of U.S.
`
`registration 779,139.
`
`Applicant notes that U.S. registration 779,139 has not been renewed and “is
`
`considered to be expired” according to the “current status” of that registration as set forth
`
`in the United States Patent and Trademark Office TARR system as of 27 October 2005.
`
`A photocopy of a printout of the record from the United States Patent and Trademark
`
`Office TARR system for U.S. registration 779,139,
`
`indicating that registration to be
`
`expired, is attached hereto.
`
`In light of the expiration of the registration forming the basis of the likelihood of
`
`confusion refusal, applicant
`
`respectfully submits that
`
`the outstanding refusal of
`
`registration should be withdrawn and that applicant’s mark should be published for
`
`opposition purposes. Notification of the same is respectfully solicited.
`
`Out of an abundance of caution, a notice of appeal is submitted herewith in view
`
`of the “final” nature of the 10 May 2005 official action.
`
`In the event the examining
`
`attorney finds that applicant’s application is in fonn for publication of applicant’s mark
`
`for opposition purposes and that
`
`the prior rejection is no longer viable, applicant
`
`,~’f’
`
`respectfully requests that the notice of appeal be disregarded and that no appeal fee be
`
`charged to applicant’s attomey’s deposit account therefore.
`
`We respectfully solicit notification that this application has been approved for
`
`publication of applicant’s mark for opposition purposes.
`
`FRH2241545v1 10/27/05
`
`2
`
`
`
`ATTORNEY DOCKET: 6881750101
`TRADEMARK
`
`To the extent there is any fee required in connection with the receipt, acceptance
`
`and/or consideration of this paper and/or any accompanying papers submitted herewith,
`
`please charge all such fees to Deposit Account 50-1943
`
`Date: 2 I § lgfltbtzsbtz 266%
`
`"<-—.
`
`Respectfully submitted,
`
`CHARLES N. QUINN
`Registration No. 27,223
`Attorney for Applicant
`
`FOX R0thSChi1d LLP
`2000 Market Street, 10"‘ Floor
`Philadélphia, PA 19103
`Tel: 215_299_2135
`email: cguinn@foxrothschild.com
`
`Fax: 215-299-2150
`
`.
`
`\
`\
`
`\
`
`\
`\
`
`CERTIFICATE or MAILING
`UNDER 37 <=-F-R- 1-8<a>
`I hereby certifythatthis paper, alongwith any paperreferred to as being
`attached orenclo
`d, is being deposited with the United States Postal
`i»
`'
`51-
`
`e indicated be w, with sufficient postage, as first class
`address
`0: Commissioner for Trademarks, P.O. Box
`
`Service on the
`-
`-
`
`0c7v6£g_.?Z_.2uc5
`
`
`;
`
`(s' nature)
`fv’7‘ziw'04 56 WM/”
`
`A BY- RHOND BR ANT
`DATE -
`
`
`
`2 241545v1 10/27/05
`
`3
`
`
`
`ATTORNEY DOCKET: 68817.50101
`TRADEMARK
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Applicant:
`
`Paradise Kitchens, Inc.
`
`Serial No.:
`
`78/379,360
`
`Filed:
`
`March 5, 2004
`
`Mark:
`
`PARADISE KITCHENS
`
`Charles N. Quinn
`Reg. No. 27,223
`Customer No. 34661
`
`Fox Rothschild LLP
`2000 Market Street, 10”‘ Floor
`Philadelphia, PA 19103
`Tel: 215-299-2135
`Fax: 215-299-2150
`Email: cguinn@foxrothschild.com
`Deposit Account: 50-1943
`
`NOTICE OF APPEAL
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`\ lexandria, VA 22313-1451
`
`ear Sirs:
`
`D1
`
`\
`
`Applicant, Paradise Kitchens, Inc., hereby appeals to the Trademark Trial and Appeal
`\
`Bo\ard from the final decision ofthe United States Patent and Trademark Office examining
`
`attorney refusing registration of the above-referenced mark, which decision was transmitted on
`1
`
`\
`
`PH2 241 548v] 10/27/05
`
`
`
`ATTORNEY DOCKET: 6881750101
`TRADEMARK
`
`10 May 2005.
`
`This Notice of Appeal is submitted in triplicate.
`
`Pursuant to Trademark Rule 2.6, 37 C.F.R. § 2.6, please charge Deposit Account No. 50-
`
`l943 in the amount of the $100.00.
`
`To the extent there is any fee required in connection with the receipt, acceptance and/or
`
`consideration ofthis paper and/or any accompanying papers submitted herewith, please charge
`
`all such fees to Deposit Account 50-1943.
`
`Date:
`
`5‘.
`CHARLES N. QUINN
`Attorney for Applicant
`
`Fox Rothschild LLP
`2000 Market Street, 10”‘ Floor
`Philadelphia, PA 19103
`Tel: 215-299-2135
`
`Fax: 215-299-2150
`
`email: cguinn@,foxrothschild.com
`
`
`CERTIFICATE OF MAILING
`UNDER 37 C.F.R. 1.8(a)
`
`I hereby certify that this paper, along with any paper referred
`to as being attached or enclosed, is being deposited with the United
`States Postal Servi
`..
`postage, as first r.
`
`BY: Rhonda Br ant
`
`DATE:
`
`CW /5? X o?fl05
`
`
`
`ATTACHMENT 2
`
`
`
`Docket No.: 6881750101
`
`in re: Trademark application of
`Paradise Kitchens, lnc.
`Serial No.: 78/379,360
`Filed: 5 March 2004
`Mark: PARADISE KITCHENS
`
`The following items were received by the PTO;
`
`1) Response (3 pgs,)
`2) N°t'°e Of Appeal (2 pgs.)—-in triplicate
`
`Charles N. Quinn
`Reg. No. 27,223
`Date: October 27, 2005
`
`PH2 222548vl 10/27/05
`
`The following items were received by the PTO:
`
`Docket No.: 68817.50101
`In re: Trademark application of
`Paradise Kitchens, lnc.
`Serial No.: 78/379,360
`Filed: 5 March 2004
`Mark: PARADISE KITCHENS
`ii-iiiiI¢**i*-kit!ti-*~A-*t*t-£1-itfliftii*~k***~k*1I***t¢~k~ki*i**i*ii*ti~!t~hii-Diff****t~k***i~i~A-itittiifikiiitrittititit
`The PTO is respectfully requested to place its STAMP on the POSTAL CARD and place
`it in the outgoing mail.
`
`1)'Response (3 pgs.)
`2) Notice of Appeal (2 pgs.)——in triplicate
`
`.
`
`Charles N. Quinn
`Reg. No. 27,223
`Date: October 27, 2005
`
`llllllllllllIlllllllllllllllllllllllllllllllllllll
`
`PH2 222548v1 10/27/05
`
`
`
`ATTACHMENT 3
`
`
`
`Latest Status Info
`
`Page 1 of 3
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2005-12-06 14:59:03 ET
`
`Serial Number: 78379360
`
`Registration Number: (NOT AVAILABLE)
`
`Mark
`
`PARADISE KITCHENS
`
`(words only): PARADISE KITCHENS
`
`Standard Character claim: Yes
`
`Current Status: An Office action making FINAL a refusal to register the mark has been mailed.
`
`Date of Status: 2005-05-10
`
`Filing Date: 2004-03-05
`
`Transformed into a National Application: No
`
`Registration Date: (DATE NOT AVAILABLE)
`
`\ R
`
`egister: Principal
`
`Iiaw Office Assigned: LAW OFFICE 115
`
`Attorney Assigned:
`DEFORD JEFFREY S Empfigyee Location
`1
`Cuirrent Location: M60 -TMO Law Office 115
`
`Daige In Location: 2005-05-10
`1
`~— - ~————- ~— - ~———--——~—
`
`,.;%:~;j.__j._. _%
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`1. PA\RADISE KITCHENS, INC.
`
`Addr‘ess:
`PARADISE KITCHENS, INC.
`P.O. B\OX 1299 128 JOHN ROBERT THOMAS DRIVE
`
`http://tarr.usptO.gov/servlet/tarr?regser=serial&entry=783793 60&action=Request+Status
`
`12/6/2005
`
`
`
`
`
`Page 2 of 3
`
`Latest Status Info
`
`EXTON, PA 19341
`United States
`
`Legal Entity Type: Corporation
`State or Country of Incorporation: Florida
`Phone Number: 215-299-2135
`Fax Number: 215-299-2150
`
`GOODS AND/OR SERVICES
`
`International Class: 029
`POULTRY
`
`First Use Date: (DATE NOT AVAILABLE)
`First Use in Commerce Date: (DATE NOT AVAILABLE)
`
`Basis: 1(b)
`
`Disclaimer: KITCHENS
`
`ADDITIONAL INFORMATION
`
`.... ..
`
`._ .-_. _,__-_.,
`
`_ _L. , ...._ -_. _._...A_ ____...._-._- ~_.__ --..____. -.__....___.-- j,__...
`
`MADRID PROTOCOL INFORMATION
`
`
`(NOT AVAILABLE)
`
`.-._.._i..__-._ ._.,..._.._,_.
`
`_- _-,..__,_._,.-____._._
`
`.;_*
`
`_..
`
`_
`
`PROSECUTION HISTORY
`
`12005-05-10 - Final refusal e-mailed
`
`2005-05-10 - Final Refusal Written
`
`2005-04-22 - Amendment From Applicant Entered
`
`2005-03-24 - Communication received from applicant
`
`2005-03-24 - PAPER RECEIVED
`
`2004-09-22 - Non-final action e-mailed
`200\4-09-22 - Non-Final Action Written
`1
`2004‘-09-21 - Case file assigned to examining attorney
`2004i‘-\03-23 - New Application Entered In Tram
`
`\....____._i_ .--..
`.1
`1- —.«-—-~———.—._.-~.-, V-
`Correspondent
`
`.___
`
`-.-..,_
`CORRESPONDENCE INFORMATION
`. _—_r..._.._ A...
`
`V» .
`
`7- A
`
`-.-.~ _.
`
`http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=783 793 60&action=Request+Status
`
`12/6/2005
`
`
`
`Latest Status Info
`
`Page 3 of 3
`
`CHARLES N. QUINN (Attorney of record)
`
`CHARLES N. QUINN
`FOX ROTHSCHILD LLP
`10TH FLOOR
`
`2000 MARKET STREET
`
`PHILADELPHIA, PA 19103-3291
`Phone Number: 215-299-2135
`Fax Number: 215-299-2150
`
`http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=783 793 60&action=Request+Status
`
`12/6/2005
`
`
`
`ATTACHMENT 4
`
`
`
`
`
`
`he trademark application identified below was abandoned because a response to
`the Office Action mailed on May 10, 2005 was not received within the 6-month
`response period.
`If the delay in filing a response was unintentional, you may file a petition to revive th by
`application with a fee.
`If the abandonment of this application was due to USPTO
`error, you may file a request for reinstatement. Please note that a petition to revive '
`orrequest for reinstatement must be received within two months from the
`mailing date of this notice.
`
`INC.
`
`
`
`NOTICE OF ABANDONMENT
`MAILING DATE: Dec 9, 2005
`
`(\
`‘£9
`\9
`
`
`
`\b\
`
`5"
`
`2
`
`l
`
`For additional information, go to http://vvvvw.uspto.gov/teas/petinfo.htm.
`
`if you are
`
`Assistance Center at 1-800-786-9199.
`
`% unableto getthe information you need from thewebsite, call theTrademark
`SERIAL NUMBER:
`78379360
`EEG 2 D 2005
`MARK:
`PARADISE KITCHENS
`OWNER:
`PARADISE KITCHENS,
`
`
`
`ATTACHMENT 5
`
`
`
`ATTORNEY DOCKET: 68817.50101
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In re: Trademark application of
`Paradise Kitchens, Inc.
`
`Serial No: 78/379,360
`
`Filed: March 5, 2004
`
`Mark: PARADISE KITCHENS
`
`Charles N. Quinn
`Reg. No. 27,223
`Fox Rothschild LLP
`
`2000 Market Street, 10"‘ Floor
`Philadelphia, PA 19103
`Tel: 2 1 S-299-2 135
`Fax: 2 1 5-299-21 50
`
`Email: cguinn@foxrothschild.com
`Deposit Account: S0-1943
`
`MOTION FOR EXTENSION OF TIME IN WHICH
`TO FILE APPEAL BRIEF OR TAKE OTHER ACTION
`
`Commissioner for Trademarks
`
`P.O. Box 145 1
`Alexandria, VA 22313-1451
`
`Sir:
`
`This is a motion by applicant’s undersigned counsel seeking a two month
`
`extension of time, until March 1, 2006, in which to file a brief and/or take other
`
`action in connection with an ex parte appeal with respect to the above-
`
`referenced pending United States trademark registration application.
`
`PH2 244503vl 12/30/05
`
`
`
`ATTORNEY DOCKET: 68817.50101
`TRADEMARK
`
`The reasons for this Motion are set forth in more detail in the attached
`
`Declaration of applicant’s counsel.
`
`To the extent there is any fee required in connection with the receipt,
`
`acceptance and/or consideration of this paper and/or any accompanying
`
`papers submitted herewith, please charge all such fees to Deposit Account 50-
`
`1943.
`
`This motion is submitted in triplicate.
`
`Respectfully submitted,
`
` Date:
`
` @%cZ903a___
`
`Charles N. Quinn
`Attorney for Applicant
`
`FOX, ROTHSCHILD LLP
`2000 Market Street, 10"‘ Floor
`Philadelphia, PA 19103-3291
`Tel: 2 1 S—299—213S
`
`email: cquinn@foxrothschild.com
`
`Fax: 21 5-299-2 1 50
`
`Certificate of Mailing Under 37 C.F.R. 1.10
`
`EXPRESS MAIL NO.:
`
`EV592207149US
`
`i hereby certify that this paper , along with any paper referred to as being attached or enclosed and/or
`fee is being deposited with the United States Postal Service, “Express Mail - Post Office to
`Addressee" service under 37 C.F.R. 1.10, on the date indicated below, and is addressed as follows:
`
`December 30 2005
`Date of Deposit
`
`Sher Bara
`Type or print name of person
`
`PH2 244503vl 12/30/05
`
`
`
`ATTORNEY DOCKET: 68817.501l01
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRLAL AND APPEAL BOARD
`
`In re: Trademark application of
`Paradise Kitchens, Inc.
`
`Serial No: 78/379,360
`
`Filed: March 5, 2004
`
`Mark: PARADISE KITCHENS
`
`Charles N. Quinn
`
`Reg. No. 27,223
`Fox Rothschild LLP
`
`2000 Market Street, 10”‘ Floor
`Philadelphia, PA 19103
`Tel: 215-299-2135
`Fax: 215-299-2150
`
`Email: cguinn@foxrothschild.com
`Deposit Account: 50-1943
`
`DECLARATION OF CHARLES N. QUINN
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Sir:
`
`1, Charles N. Quinn, hereby declare that I am a citizen of the United
`
`States, residing at 419 Bowen Drive, Exton, Pennsylvania, 19341, a partner in
`
`the law firm of Fox Rothschild LLP having my principal office at 2000 Market
`
`Street, Tenth Floor, Philadelphia, PA 19103-3291, a member in good standing of
`
`the Bar of the Supreme Court of the Commonwealth of Pennsylvania holding
`
`registration number 17,603 therein, admitted in good standing to practice in
`
`patent matters before the United States Patent and Trademark Office and
`
`PH2 244505‘/1 12/06/05
`
`1
`
`
`
`ATTORNEY DOCKET: 68817.50101
`
`TRADEMARK
`
`holding registration number 27,223 therein, and am the attorney of record for
`
`the applicant on the above-referenced trademark registration application.
`
`I am currently involved in representing the plaintiff in a large patent and
`
`trademark infringement action pending in the United States District Court for
`
`the Southern District of Ohio in Dayton, Ohio; the case is Maguire Products, Inc.
`
`v. CometAutomation Systems, Inc., civil action C-3-03-198.
`
`In addition, I am representing the defendant in a trademark infringement
`
`action pending in the United States District Court for the District of Delaware;
`
`the case is Wayne Van Scoy v. Van Scoy Diamond Mine of Delaware, Inc. et 511.,
`
`Civil Action No. 05-108.
`
`1 am also representing the defendant in a patent infringement action
`
`pending in the United States District Court for the Western District of
`
`Pennsylvania; the case is The Conair Group, Inc. v. Maguire Products, Inc., Civil
`
`Action No. 05-05 57.
`
`As a result of these matters and my other responsibilities in this office, I
`
`need additional time in which to prepare an appeal brief for this application or
`
`to take other action for this application. Accordingly, I respectfully request a
`
`grant of a two—month extension of time for the same.
`
`I hereby declare that all statements made herein are true and that all
`
`statements made herein on information and belief are believed to be true and
`
`further that I realize that false statements and the like so made herein are
`
`punishable by fine, or imprisonment or both, under 18 USC 1001, and further
`
`PH2 244505vl 12/06/05
`
`
`
`ATTORNEY DOCKET: 68817.501l01
`
`TRADEMARK
`
`may jeopardize the validity and enforceability of any registration to issue from
`
`the instant application.
`
`To the extent there is any fee required in connection with the receipt,
`
`acceptance and/or consideration of declaration and/or any accompanying
`
`papers submitted herewith, please charge all such fees to Deposit Account 50-
`
`1943.
`
`Respectfully submitted,
`
`
`
`Date: 29%:___________________
`
`Charles N. Quinn
`Attorney for Applicant
`
`Fox Rothschild LLP
`2000 Market Street, 10“‘ Floor
`Philadelphia, PA 19103-3291
`Tel: (215) 299-2135
`email: cquinn@foxrothschild.com
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` Certificate of Mailing Under 37 C.F.R. 1.10
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`EXPRESS MAIL N0.: .5
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`I hereby certify that this paper, along with any paper referred to as being attached or enclosed and/or
`fee is being deposited with the United States Postal Service, “Express Mail - Post Office to
`Addressee" service under 37 C.F.R. 1.10, on the date indicated below, and is addressed to the
`Commissioner for Tra marks, P.O. Box 1451, A exandrla, VA 22313-1
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`ate of eposit
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`Signature
`Sherry Barag
`Type or print name of person
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`PH2 244505v1 12/06/05