Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1133484
`05/12/2021
`
`ESTTA Tracking number:
`
`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
`
`DISMUKE LAW, PLLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Correspondence
`information
`
`05/12/2021
`
`1920 SOUTH FLORIDA AVE
`LAKELAND, FL 33803
`UNITED STATES
`
`ERICA DIANGELO
`1112 CHANNELSIDE DRIVE
`SUITE 3
`TAMPA, FL 33602
`UNITED STATES
`Primary Email: erica@diangelolaw.com
`Secondary Email(s): lindsey@diangelolaw.com
`8135512484
`
`Applicant Information
`
`Application No.
`
`90100572
`
`Publication date
`
`01/12/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`05/12/2021
`
`Opposition Peri-
`od Ends
`
`05/12/2021
`
`Wattel & York, LLC
`2175 N. ALMA SCHOOL RD., SUITE B107
`CHANDLER, AZ 85224
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Legal services; Providing legal services in
`the field of personal injury
`
`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.
`
`5170604
`
`Registration Date
`
`03/28/2017
`
`Application Date
`
`08/15/2016
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA1133484
`05/12/2021
`
`ESTTA Tracking number:
`
`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
`
`DISMUKE LAW, PLLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Correspondence
`information
`
`05/12/2021
`
`1920 SOUTH FLORIDA AVE
`LAKELAND, FL 33803
`UNITED STATES
`
`ERICA DIANGELO
`1112 CHANNELSIDE DRIVE
`SUITE 3
`TAMPA, FL 33602
`UNITED STATES
`Primary Email: erica@diangelolaw.com
`Secondary Email(s): lindsey@diangelolaw.com
`8135512484
`
`Applicant Information
`
`Application No.
`
`90100572
`
`Publication date
`
`01/12/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`05/12/2021
`
`Opposition Peri-
`od Ends
`
`05/12/2021
`
`Wattel & York, LLC
`2175 N. ALMA SCHOOL RD., SUITE B107
`CHANDLER, AZ 85224
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Legal services; Providing legal services in
`the field of personal injury
`
`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.
`
`5170604
`
`Registration Date
`
`03/28/2017
`
`Application Date
`
`08/15/2016
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Word Mark
`
`Design Mark
`
`ASK DAVE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 045. First use: First Use: 2004/06/14 First Use In Commerce: 2004/06/14
`Legal services
`
`U.S. Registration
`No.
`
`5170603
`
`Registration Date
`
`03/28/2017
`
`Word Mark
`
`Design Mark
`
`1-800-ASK DAVE
`
`Application Date
`
`08/15/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 045. First use: First Use: 2004/06/14 First Use In Commerce: 2004/06/14
`Legal services
`
`Attachments
`
`87138731#TMSN.png( bytes )
`87138721#TMSN.png( bytes )
`Notice of Opposition.pdf(941172 bytes )
`
`Signature
`
`/Erica DiAngelo/
`
`Name
`
`Date
`
`ERICA DIANGELO
`
`05/12/2021
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`APPLICATION SERIAL NO: 90/100,572
`
`DISMUKE LAW, PLLC
`
`Opposer
`
`v.
`
`WATTEL & YORK, LLC
`
`Applicant.
`
`)
`)
`)
`)
`) Opposition No.
`)
`)
`)
`)
`)
`)
`)
`
`
`
`CALL DAVE AND MIKE
`Mark:
`August 7, 2020
`Date of Filing:
`Date of Publication: January 12, 2021
`
`NOTICE OF OPPOSITION
`
`Opposer Dismuke Law, PLLC (“Dismuke”) (“Opposer”) hereby opposes registration of
`
`Applicant Wattel & York LLC’s (“Wattel”) (“Applicant”) CALL DAVE AND MIKE word mark
`
`(the “Opposed Mark”) in International Class 45 as shown in Application Serial No. 90/100,572
`
`(the “Application”). As more fully alleged below, Opposer will be damaged by registration of the
`
`Opposed Mark and thus requests that registration in Class 45 be refused.
`
`PARTIES
`
`1.
`
`Opposer Dismuke is a Florida professional limited liability company with a
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`principal place of business at 1920 South Florida Avenue Lakeland Florida 33803.
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`2.
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`Upon information and belief, Applicant Wattel & York LLC is an Arizona limited
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`liability company with a correspondence address of 2175 N. Alma School Rd, Suite B107,
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`Chandler, AZ 85224.
`
`OPPOSER’S FEDERAL REGISTRATION, PRIORITY OF USE, AND STANDING
`
`3.
`
`For the reasons set forth below in this Notice of Opposition, Opposer will be
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`damaged under the provisions of §2(d) of the Lanham Act, 15 U.S.C. § 1052 by registration of the
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`Opposed Mark in Class 45 and has standing to oppose the Application.
`
`4.
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`Opposer Dismuke is the owner of the word marks ASK DAVE, Registration No.
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`5,170,604 and 1-800-ASK-DAVE, Registration No. 5,170,603 (“Marks”).
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`5.
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`Dismuke obtained federal U.S. Registrations on the Principal Register for the marks
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`ASK DAVE, Registration No. 5,170,604 on March 28, 2017 and 1-800-ASK-DAVE, Registration
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`No. 5,170,603, on March 28, 2017 both for “legal services” in Class 45. True and correct copies of
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`the registrations obtained from the PTO’s database are attached hereto as Exhibit A and made of
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`record.
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`6.
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`Dismuke has continuously used the Marks in interstate commerce since at least as
`
`early as June 2004.
`
`7.
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`In addition, through its long-term, continuous and widespread use, Dismuke has
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`acquired extensive common law rights in its trademark, causing the public to identify the Marks
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`with its services.
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`8.
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`Further, as a result of the promotion, marketing, advertising, and continuous use of
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`the Marks in connection with services, the public has come to recognize the Marks with Opposer
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`and its services.
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`2
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`9.
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`The Marks are inherently distinctive and serves to show the origin of legal services
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`of Opposer Dismuke.
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`10.
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`As a result of the widespread use and display of the ASK DAVE and 1-800-ASK-
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`DAVE, the public (a) uses it to identify and refer to Dismuke’s legal services and (b) recognizes
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`that the mark refers to high quality legal services emanating from Dismuke. Thus, the Marks have
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`built up extensive goodwill and reputation.
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`APPLICANT’S MARK
`
`11.
`
`According to Patent and Trademark Office records, Applicant filed Application
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`Serial No. 90/100,572 for the CALL DAVE AND MIKE mark on August 7, 2020, as an intent-to-
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`use mark in International Class 45 for “Legal services; Providing legal services in the field of
`
`personal injury.”
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`12.
`
`Upon information and belief, no statement of use has been filed for the Application
`
`and, as such, Applicant has not claimed to have used the Opposed Mark in U.S. interstate
`
`commerce with the goods listed in the Application.
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`13.
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`Thus, the Opposed Mark was filed nearly three (3) years after Opposer’s
`
`registration for its Marks, and nearly sixteen (16) years after the first use of Opposer’s Marks.
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`Opposer has, therefore, both priority of use and registration over Applicant.
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`14.
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`Therefore, Applicant adopted the Opposed Mark well after it was on constructive
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`notice of Opposer’s rights in the ASK DAVE and 1-800-ASK-DAVE marks.
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`15.
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`Further, Applicant had actual notice of Opposer’s rights in the ASKDAVE and 1-
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`800-ASK-DAVE marks through direct correspondence with Opposer prior to the Applicant’s
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`filing date.
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`LIKELIHOOD OF CONFUSION
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`16.
`
`The registration of the Opposed Mark in Class 45 is likely to cause confusion, or
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`mistake, or to deceive consumers as to the source of each party’s services and may lead consumers
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`to falsely infer the existence of an affiliation, connection or association between the parties in
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`violation of 15 U.S.C. §1052(d).
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`17.
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`The Opposed Mark is confusingly similar to the Marks. Applicant’s mark incorporates the
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`DAVE term in its entirety and the addition of the word CALL, which is a common term to describe a
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`“contact or attempt to contact,” is not sufficient to differentiate the marks. Furthermore, “Ask” and “Call”
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`may be used interchangeably by Consumers in the context of seeking legal services, as well as the “1-800”
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`and “Call” portions of the mark. Consumers may believe that CALL DAVE AND MIKE may be related to
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`the Dismuke Marks. Moreover, Applicant’s services in Class 45 are either identical to or closely
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`commercially related to Opposer’s services. Given these similarities, consumers will mistakenly believe
`
`that Applicant’s services are offered by, affiliated with, or sponsored by Opposer, when the same is not
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`true.
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`18.
`
`Due to the highly similar nature of Applicant’s mark and Opposer’s marks, and
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`the exact nature of the services provided by the respective parties, consumers, and potential
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`consumers are likely to believe that Applicant’s services originate from Opposer, resulting in a
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`likelihood of confusion in the marketplace and damage to Opposer.
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`19.
`
`Registration of the Opposed Mark will thus result in damage to Opposer under the
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`provisions of §2(d) of the U.S. Trademark Act, 15 U.S.C. § 1052.
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`4
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`WHEREFORE, Opposer believes that it is being damaged, and will be damaged, by
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`registration of the mark shown on Application Serial No. 90/100,572 in Class 45 and respectfully
`
`request that its Opposition be sustained and the registration be refused.
`
`Respectfully submitted this 12th day of May, 2021.
`
`DIANGELO LAW
`
`
`
`/s/ Erica DiAngelo
`Erica DiAngelo
`1112 Channelside Drive, Suite 3
`Tampa, FL 33602
`Phone: 813-551-2484
`erica@diangelolaw.com
`
`Attorneys for Opposer Dismuke Law, PLLC
`
`5
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`Exhibit A
`
`Exhibit A
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`
`
`Reg. No. 5,170,604
`
`Registered Mar. 28, 2017
`
`DISMUKE LAW, PLLC (FLORIDA LIMITED LIABILITY COMPANY)
`2316 Lakeland Hills Boulevard
`Lakeland, FL 33805
`
`Int. Cl.: 45
`
`Service Mark
`
`Principal Register
`
`CLASS 45: Legal services
`
`FIRST USE 6-14-2004; IN COMMERCE 6-14-2004
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`PARTICULAR FONT STYLE, SIZE OR COLOR
`
`The name shown in the mark identifies David C. Dismuke, whose consent to register is made
`of record.
`
`SER. NO. 87-138,731, FILED 08-15-2016
`MARCO JABBAR WRIGHT, EXAMINING ATTORNEY
`
`
`
`5/12/2021
`
`
`
`Trademark Electronic Search System (TESS)
`
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Wed May 12 04:07:23 EDT 2021
`
`mumas
`
` ' -' ' CURRLIFI
`
`
`
`
`
`r~i.:;.:'
`
`
`m-Please logout when you are done to release system resources allocated for you.
`
`List At:
`
`OR -to record:
`
`Record 1 out Of 2
`
`m ( Use the "Back" button of the Internet Browser to return to
`
`TESS)
`
`ASK DAVE
`
`Word Mark
`
`ASK DAVE
`
`Goods and Services
`
`IC 045. US 100 101. G & 8: Legal services. FIRST USE: 20040614. FIRST USE IN COMMERCE:
`20040614
`
`Standard Characters
`Claimed
`
`Mark Drawing Code
`Serial Number
`
`(4) STANDARD CHARACTER MARK
`87138731
`
`Filing Date
`Current Basis
`
`August 15, 2016
`1A
`
`Original Filing Basis
`Published for
`
`Opposition
`
`1A
`
`January 10, 2017
`
`Registration Number 5170604
`
`Registration Date
`
`March 28, 2017
`
`Owner
`
`(REGISTRANT) DISMUKE LAW, PLLC LIMITED LIABILITY COMPANY FLORIDA 1920 South Florida
`Avenue Lakeland FLORIDA 33803
`
`Attorney of Record
`
`Erica DiAngelo
`
`Type of Mark
`
`SERVICE MARK
`
`Register
`
`PRINCIPAL
`
`Other Data
`Live/Deadlndicator
`
`The name shown in the mark identifies David C. Dismuke, whose consent to register is made of record.
`LIVE
`
`
`
`mumas —- - ' CURRLIH r~i.-_.:
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`httpszl/tmsearch.uspto.gov/bin/showfieId?f=doc&state=4805%3Agl6389.2.1
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`
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`Reg. No. 5,170,603
`
`Registered Mar. 28, 2017
`
`DISMUKE LAW, PLLC (FLORIDA LIMITED LIABILITY COMPANY)
`2316 Lakeland Hills Boulevard
`Lakeland, FL 33805
`
`Int. Cl.: 45
`
`Service Mark
`
`Principal Register
`
`CLASS 45: Legal services
`
`FIRST USE 6-14-2004; IN COMMERCE 6-14-2004
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`PARTICULAR FONT STYLE, SIZE OR COLOR
`
`The name shown in the mark identifies David C. Dismuke, whose consent to register is made
`of record.
`
`SER. NO. 87-138,721, FILED 08-15-2016
`MARCO JABBAR WRIGHT, EXAMINING ATTORNEY
`
`
`
`5/12/2021
`
` V |
`
`Trademark Electronic Search System (TESS)
`
`|
`
`|
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`|
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`|
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`|
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`|
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`|
`
`Trademarks > Trademark Electronic Search System (TESS)
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`TESS was last updated on Wed May 12 04:07:23 EDT 2021
`
`W... mum “rams
`
` " CURRLIFI
`
`l‘i‘L.
`
`
`Please logout when you are done to release system resources allocated for you.
`
`List At:
`
`OR -to record:
`
`Record 2 out Of 2
`
`m ( Use the "Back" button of the Internet Browser to return to
`
`TESS)
`
`1-800-ASK DAVE
`
`Word Mark
`
`1-800-ASK DAVE
`
`Goods and Services
`
`IC 045. US 100 101. G & 8: Legal services. FIRST USE: 20040614. FIRST USE IN COMMERCE:
`20040614
`
`Standard Characters
`Claimed
`
`Mark Drawing Code
`Serial Number
`
`(4) STANDARD CHARACTER MARK
`87138721
`
`Filing Date
`Current Basis
`
`August 15, 2016
`1A
`
`Original Filing Basis
`Published for
`
`Opposition
`
`1A
`
`January 10, 2017
`
`Registration Number 5170603
`
`Registration Date
`
`March 28, 2017
`
`Owner
`
`(REGISTRANT) DISMUKE LAW, PLLC LIMITED LIABILITY COMPANY FLORIDA 1920 South Florida
`Avenue Lakeland FLORIDA 33803
`
`Attorney of Record
`
`Erica DiAngelo
`
`Type of Mark
`
`SERVICE MARK
`
`Register
`
`PRINCIPAL
`
`Other Data
`Live/Deadlndicator
`
`The name shown in the mark identifies David C. Dismuke, whose consent to register is made of record.
`LIVE
`
`mm mum “mm ' CURRLIH r~i.-_.
`
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`httpszl/tmsearch. uspto.gov/bin/showfieId?f=doc&state=4805% 3Agl6389.2.2
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`1/2
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