Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA280886
`ESTTA Tracking number:
`04/29/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`Address
`
`DERMAdoctor, Inc.
`Corporation
`1901 McGee Street
`Kansas City, MO 64108
`UNITED STATES
`
`Citizenship
`
`Missouri
`
`Attorney
`information
`
`Wade Kerrigan
`Husch Blackwell Sanders LLP
`4801 Main Street, Suite 1000
`Kansas City, MO 64112
`UNITED STATES
`pto-kc@huschblackwell.com Phone:816-983-8000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77618399
`04/29/2009
`
`Publication date
`Opposition
`Period Ends
`
`03/31/2009
`04/30/2009
`
`Western Holdings, LLC
`1821 Logan Avenue
`Cheyenne, WY 82001
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 003.
`All goods and services in the class are opposed, namely: Cosmetics
`Class 005.
`All goods and services in the class are opposed, namely: Dietary supplements
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2978251
`
`07/26/2005
`
`Word Mark
`Design Mark
`Description of
`
`DERMADOCTOR
`
`NONE
`
`Application Date
`
`07/03/2002
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA280886
`ESTTA Tracking number:
`04/29/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`Address
`
`DERMAdoctor, Inc.
`Corporation
`1901 McGee Street
`Kansas City, MO 64108
`UNITED STATES
`
`Citizenship
`
`Missouri
`
`Attorney
`information
`
`Wade Kerrigan
`Husch Blackwell Sanders LLP
`4801 Main Street, Suite 1000
`Kansas City, MO 64112
`UNITED STATES
`pto-kc@huschblackwell.com Phone:816-983-8000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77618399
`04/29/2009
`
`Publication date
`Opposition
`Period Ends
`
`03/31/2009
`04/30/2009
`
`Western Holdings, LLC
`1821 Logan Avenue
`Cheyenne, WY 82001
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 003.
`All goods and services in the class are opposed, namely: Cosmetics
`Class 005.
`All goods and services in the class are opposed, namely: Dietary supplements
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2978251
`
`07/26/2005
`
`Word Mark
`Design Mark
`Description of
`
`DERMADOCTOR
`
`NONE
`
`Application Date
`
`07/03/2002
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Mark
`Goods/Services
`
`Class 003. First use: First Use: 2003/06/30 First Use In Commerce: 2003/06/30
`Skin care products, namely, non-medicated care preparations
`Class 005. First use: First Use: 2003/06/30 First Use In Commerce: 2003/06/30
`Skin care products, namely, medicated skin care preparations
`
`U.S. Registration
`No.
`Registration Date
`
`3018417
`
`11/22/2005
`
`Application Date
`
`11/08/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`DERMADOCTOR
`
`NONE
`
`Class 035. First use: First Use: 2003/06/30 First Use In Commerce: 2003/06/30
`COMPUTERIZED ON-LINE RETAIL SERVICES IN THE FIELD OF SKIN CARE
`PRODUCTS AND COSMETICS
`
`U.S. Registration
`No.
`Registration Date
`
`2673702
`
`01/14/2003
`
`Word Mark
`Design Mark
`
`DERMADOCTOR.COM
`
`Application Date
`
`06/05/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1999/04/01 First Use In Commerce: 1999/04/01
`On-line retail store services featuring skin care products
`Class 042. First use: First Use: 1999/04/01 First Use In Commerce: 1999/04/01
`Providing health information regarding skin care products and skin care issues
`
`3240400
`
`Application Date
`
`08/10/2004
`
`05/08/2007
`
`Foreign Priority
`Date
`THE DERMADOCTOR SKINSTRUCTION MANUAL
`
`NONE
`
`NONE
`
`Class 016. First use: First Use: 2005/01/02 First Use In Commerce: 2005/01/02
`
`
`
`Printed matter, namely books regarding skin care and medicated and non-
`medicated skin care products
`
`Attachments
`
`76063212#TMSN.gif ( 1 page )( bytes )
`78465002#TMSN.jpeg ( 1 page )( bytes )
`2009042913181022.pdf ( 14 pages )(2237718 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/s/ Wade Kerrigan
`Wade Kerrigan
`04/29/2009
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`)
`
`3
`3
`3
`i
`
`i )
`
`In re Application Filed By:
`
`Western Holdings, LLC
`Serial No.
`77/618,399
`Filed:
`November 20, 2008
`Published:
`March 31, 2009
`Mark:
`DERMA FACTOR
`
`NOTICE OF OPPOSITION
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`ATTN: BOX TTAB - FEE
`
`DERMAdoctor, Inc. believes that it will be damaged by registration of the mark shown in
`
`Serial No. 77/618,399 and hereby opposes registration of that mark. Serial No. 77/618,399 is an
`
`application of Western Holdings, LLC, filed November 20, 2008 and published for opposition in
`
`the Official Gazette on March 31, 2009.
`
`The grounds for the opposition are as follows:
`
`DERMAdoctor, Inc (“Opposer”) is a Missouri corporation, having a place of
`1.
`business at 1901 McGee Street, Kansas City, Missouri 64108.
`
`2.
`
`Upon information and belief, Western Holdings, LLC is a limited liability
`
`company of Wyoming having a place of business at 1821 Logan Avenue, Cheyenne, Wyoming
`
`82001.
`
`3.
`
`Opposer is the owner of, among others, the following marks: DERMADOCTOR,
`
`U.S. Reg. No. 2,978,251, registered on July 26, 2005 for skin care products, namely, non-
`
`KCP-l 681747—1
`
`
`
`
`
`1 3.
`
`21
`
`3I3Er E3
`
`medicated care preparations in International Class 003 and skin care products, namely,
`
`medicated skin care preparations in International Class 005; DERMADOCTOR, U.S. Reg. No.
`
`3,018,417, registered November 22, 2005 for computerized on-line retail services in the field of
`
`skin care products and cosmetics in International class 035; DERMADOCTOR.COM, U.S. Reg.
`
`No. 2,673,702, registered January 14, 2003 for on-line retail store services featuring skin c_are
`
`products in International Class 035; and THE DERMADOCTOR SKINSTRUCTION
`
`MANUAL, U.S. Reg. No. 3,240,400, registered on May 8, 2007 for printed matter, namely
`
`books regarding skin care and medicated and non-medicated skin care products in International
`
`Class 016 (the “DERMAdoctor Marks). TEAS printouts of the DERMAdoctor Marks are
`
`attached as Exhibit A.
`
`4.
`
`Since at least as early as 1999, Opposer has sold skin care products, cosmetics,
`
`dietary supplements, analgesics, anti-aging products, anti—fi1ngal products, anti-inflammatory '
`
`. products, antiperspirants, astringents, cleansers, exfoliates, foot care products, hair care products,
`
`'
`
`‘
`
`masques, moisturizers, nail care products, oral and dentalproducts, sun protection products,
`
`-
`
`toners, wound care products, and other various products throughout the United States in
`
`connection with the DERlVIAdoctor Marks and other highly similar marks.
`
`5.
`
`By reason of Opposer’s long and extensive use of its DERl\/IAdoctor Marks, the
`
`DERMAdoctor Marks have achieved widespread and favorable public recognition and has
`
`become an asset of great value as a symbol of Opposer’s services and goodwill.
`
`6.
`
`Opposer has invested a great deal of time and money in promoting its goods and
`
`services under the DERMAdoctor Marks and it continues to use and promote these goods and
`
`services under the DERMAdoctor Marks.
`
`7.
`
`By virtue of Opposer’s continuous, exclusive and widespread use of the
`
`DERMAdoctor Marks, the DERMAdoctor Marks are entitled to a broad scope of protection.
`
`KCP-1681747-1
`
`
`
` .
`i,
`
`eZ
`
`;
`.3E
`
`,2EsE
`
`.2,:
`
`2 i
`
`8.
`
`On November 20, 2008, Applicant filed an intent-to—use application, Application
`
`Ser. No. 77/618,399 to register the mark DERMA FACTOR for use in connection with
`
`“Cosmetics” in International Class 003 and for “Dietary Supplements” in International Class
`
`005. On information and belief, Applicant has not used Applicant’s DERMA FACTOR mark.
`
`On information and belief, Applicant has not made any use of Applicant’s DERMA FACTOR
`
`mark within the United States in connection with the goods named in Applicant’s application.
`
`9.
`
`A
`
`Opposer acquired trademark rights in and to the mark DERMADOCTOR and
`
`DERMADOCTOR.COM for Opposer’s services that predate the actual and/or constructive use
`
`by Applicant of the mark DERMA FACTOR.
`
`10.
`
`Applicant’s DERMA FACTOR mark has the same or a highly similar meaning
`
`and commercial impression in comparison to Opposer’s mark. Applicant’s DERl\/IA FACTOR
`
`- mark is highly similar to the DERMAdoctor Marks and as such is likely to be confused with the
`
`DERMAdoctor Marks.
`
`’
`
`, 11.
`
`Applicant’s goods offered under the mark DERl\/IA FACTOR are highly similar
`
`and in some cases are identical to the goods of Opposer provided under the DERMAdoctor A
`
`Marks. Both Applicant’s goods and Opposer’s goods are in the field of skin care, nutrition and
`
`personal care products.
`
`12.
`
`Applicant’s mark DERMA FACTOR, when used for the goods recited in the
`
`opposed application, is likely to cause confiision, mistake or deception within the meaning of
`
`Section 2(d) of the Trademark Act, 15 U.S.C. § l052(d).
`
`13.
`
`Use of and the application for registration by Applicant of the DERMA FACTOR
`
`mark is Without Opposer’s consent.
`
`KCP-1681747-l
`
`
`
`14.
`
`Registration of the mark DERMA FACTOR by Applicant will provide Applicant
`
`with prima facie exclusive rights therein, and would harm Opposer by interfering with Opposer’s
`
`exclusive rights to the DERMAdoctor Marks.
`
`15.
`
`Opposer has the right to continue using the DERMAdoctor Marks in connection
`
`a
`
`with its services and related goods and services and to use the mark without interference by
`
`Applicant and without confusion, mistake or deception.
`
`l6.
`
`Opposer hereby appoints Wade Kerrigan, Husch Blackwell Sanders LLP, 4801
`
`Main St1'eet,i Suite 1000? Kansas City, Missouri 641 12‘ as its attorney to act on its behalf and to
`
`receive all correspondence related to this opposition.
`
`
`
`WHEREFORE-, Opposer believesthatsit will be damaged by the registration of DERMA
`
`-
`
`. a FACTOR to -Applicant and prays-the registration'be-denied.-
`
`’
`
`;=
`
`I Respectfully. submitted,-
`
`/L/araw
`
`Wade Kerrigan
`HUSCH BLACKWELL SANDERS LLP
`4801 Main Street, Suite 1000
`Kansas City, Missouri 64112
`(816) 983-8000
`"
`'
`Attorney for Opposer
`
`KCP—lv68l 747~l
`
`
`
`
`
`EXHIBIT A
`
`
`
`a
`
`I
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`
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`
`Trademark Electronic Search System (TESS)
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`_ Page 1 of 2
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` =I:I Record 3 out of 4
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`PleaseIogoutwhenyouaredonetoreleasesystemresourcesallocatedforyou.
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`ssisiri’
`return to TESS) '
`
`Typed Drawing
`
`Word Mark
`Goods and
`Services
`
`_
`DERMADOCTOR
`IC 003. US 001 004 006 050 051 052. G & S: Skin care products, namely, non-medicated care preparations.
`FIRST USE: 20030630. FIRST USE IN COMMERCE: 20030630
`
`IC 005. US 006 018 044 046 051 052. G & 8: Skin care products, namely, medicated skin care preparations.
`FIRST USE: 20030630. FIRST USE IN COMMERCE: 20030630
`
`(Usethe"Back"buttonoftheInternetBrowserto
`
`Mark Drawing Code (1) TYPED DRAWING
`Serial Number
`78141197
`
`July 3, 2002
`Filing Date
`Current Filing Basis 1A
`
`Original Filing
`Basis
`~
`
`1B
`
`October 7 2003
`’
`
`""*’"5“°d f°'
`Opposition
`Registration
`Number
`Registration Date
`Owner
`.
`
`2978251
`July 26, 2005
`(REGISTRANT) DermaDoctor.com, Inc. ‘CORPORATION MISSOURI 310 East 19th Terrace Kansas City
`MISSOURI 64108
`
`(LAST LISTED OWNER) DERMADOCTOR, INC. CORPORATION MISSOURI 310 WEST 19TH TERRACE
`KANSAS CITY MISSOURI 64108
`
`ASSIGNMENT RECORDED
`
`As5I9""‘°"t
`Recorded
`Attorney of Record Wade Kerrigan
`Type of Mark
`TRADEMARK
`Register
`PRINCIPAL
`LiveIDead Indicator LIVE
`
`
` 2
` ~ 1. I
`
`
`
`l11:tp://tess2.uspt0.gov/bin/showfield?%doc&state=4003:pld7fq.2.3
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`
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`.
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`4/15/2009
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`Page 2 of 2
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`3;i
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`4/1 5/2009
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`united .Stat‘esT Pate‘nt:fia’n Tgradgemark..O_ffI_c_e
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`return to TESS)
`
`Typed Drawing
`
`Word Mark
`Goods and
`Services
`
`_
`DERMADOCTOR
`IC 035. US 100 101 102. G & S: COMPUTERIZED ON-LINE RETAIL SERVICES -IN THE FIELD OF SKIN CARE
`PRODUCTS AND COSMETICS. FIRST USE: 20030630. FIRST USE IN COMMERCE: 20030630
`
`Mark °’3""‘“9
`Code
`
`(1) TYPED DRAWING
`
`'
`
`78183229
`November 8, 2002
`1A
`
`Serial Number
`Filing Date
`Current Filing
`Basis
`Original Filing
`Basis
`Published for
`opposition
`Registration
`3018417
`Number
`Registration Date November 22, 2005
`Owner
`(REGISTRANT) Dermadoctoncom, Inc. CORPORATION MISSOURI 310 East 19th Terrace Kansas City
`MISSOURI 64108
`
`18
`
`January 20, 2004
`
`7
`
`(LAST LISTED OWNER) DERMADOCTOR, INC. CORPORATION MISSOURI 310 WEST 19TH TERRACE
`KANSAS CITY MISSOURI 64108
`
`ASSIGNMENT RECORDED
`A55‘9""'°"‘
`T
`Recorded
`Attorney of Record Wade Kerrigan
`Prior Registrations 2673702
`Type of Mark
`SERVICE MARK
`Register
`PRINCIPAL
`LiveIDead
`Indicator
`
`H
`
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`
`4/15/2009
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`
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`Page 2 of 2
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`4/15/2009
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`Trademark Eléctroni Search System (TESS)
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`Page 1 of 2
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`return to TESS)
`
`Typed Drawing
`
`Word Mark
`
`Goods and
`Services
`
`in
`
`
`DERMADOCTOR.COM
`
`IC 035. US 100 101 102. G & S: On—Iine retail store services featuring skin care products. FIRST USE:
`19990401. FIRST USE IN COMMERCE: 19990401
`
`IC 042. US 100 101. G & 8: Providing health information regarding skin care products and skin care issues.
`FIRST USE: 19990401. FIRST USE IN COMMERCE: 19990401
`
`Mark Drawing Code (1) TYPED DRAWING
`Serial Number
`76063212
`
`Filing Date
`
`June 5, 2000 v
`
`Current Filing
`Basis
`
`Original Filing
`Basis
`Published for
`Opposition
`Registration
`Number
`
`1A
`
`1A
`
`October 22, 2002
`
`2673702
`
`Registration Date
`
`January 14, 2003
`
`1
`
`Owner
`
`(REGISTRANT) Kunin. Audrey INDIVIDUAL UNITED STATES 6700 Troost Kansas City MISSOURI 64131
`
`(LAST LISTED OWNER) DERMADOCTOR, INC. CORPORATION MISSOURI 310 WEST 19TH TERRACE
`KANSAS CITY MISSOURI 64108
`.
`
`ASSIGNMENT RECORDED
`§::;9r3';‘:"‘
`Attorney of Record Nathan Oleen
`Type of Mark
`SERVICE MARK
`Register
`PRINCIPAL-2(F)
`Affidavit Text
`SECT 15. SECT 3 (6-YR).
`Livelbead Indicator LIVE
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`http://tess2.uspto.gov/bin/showfield?f=doc&state=4003 :pld7fq.2.4
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`4/1 5/2009
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`————.—.——___._—j__.._....__.._...._.._.....__.___?___________._
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`
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`Trademark Electronic Search System (TESS)
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`Page I of 2
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`Word Mark
`
`THE DERMADOCTOR SKINSTRUCTION MANUAL
`
`Goods and Services IC 016. US 002 005 022 023 029 037 038 050. G & S: Printed matter, namely books regarding skin care and
`medicated and non-medicated skin care products. FIRST USE: 20050102. FIRST USE IN COMMERCE:
`. 20050102
`
`Standard
`Characters Claimed
`
`Mark Drawing Code (4) STANDARD CHARACTER MARK
`Serial Number
`78465002
`
`August 10, 2004
`Filing Date
`Current Filing Basis 1A
`Original'FiIing Basis 1B
`Published for
`opposition
`Registration
`Number
`
`April 11, 2006
`-
`3240400
`
`Registration Date
`
`May 8, 2007
`
`_
`
`Owner
`
`(REGISTRANT) DermaDoctor.com, Inc. CORPORATION MISSOURI 310 East 19th Terrace Kansas City
`MISSOURI 64108
`
`(LAST LISTED OWNER) DERMADOCTOR, INC. CORPORATION MISSOURI 310 WEST 19TH TERRACE
`KANSAS CITY MISSOURI 64108
`'
`
`As5‘9"‘“e“‘
`Recorded
`Attorney of Record Wade Kerrigan
`Prior Registrations
`2673702
`
`ASSIGNMENT RECORDED
`g
`
`Disclaimer
`
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "MANUAL" APART FROM THE MARK AS
`SHOWN
`
`Type of Mark
`Register
`
`TRADEMARK
`PRINCIPAL
`
`http://tess2.uspto.gov/bin/showfie1d?f=doc&state=4003 :pld7fq.2.1
`
`4/1 5/2009
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`4\Iéw4‘c=k-WuiWF:§:mwv2K&:9F7irl:¢MS'vnrzki.m-u,wm...w+,
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`
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`Trademark Electronic Search System (TESS)
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`Page 2 of 2
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`Livelbeadlndicator LIVE
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`4/1 5/2009
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`
`
`CERTIFICATE OF SERVICE
`
`—
`
`I hereby "certify that aetrue and correct copy of the foregoing NOTICE OF OPPOSITION
`
`was served on the following via U.S. First Class mail, postage prepaid on this Z_?ii\day ofApril,
`
`2009:
`
`Western Holdings, LLC
`1821- Logan Avenue
`Cheyenne, WY 82001
`
`Evan S. Strassberg
`5742 Harold Gatty Dr-.
`Salt Lake City, UT 84116-3762
`
`4/I/
`' Attorney for Opposer
`
`KCP-1681747-I
`
`
`
`
`
`
`
`'|=»Ea‘;Mnwummmsman~,ex..\¢m«.m=.y.«».~»ms».wm.;m.W..M;.._,
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