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`ESTTA Tracking number:
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`ESTTA747212
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`Filing date:
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`05/18/2016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92063483
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Defendant
`Hazim Ansari
`
`HAZIM ANSARI
`191 WEST SECOND STREET
`SANTA ANA, CA 92701
`UNITED STATES
`
`Answer
`
`Hazim Ansari
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`hazim@novelip.com, sona@novelip.com
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`/hazim ansari/
`
`05/18/2016
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`Attachments
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`AnswertoCancellationComplaint_FinalPackage_20160518.pdf(4272505 bytes )
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`
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`I hereby certify that a true and complete copy of the foregoing Answer to Cancellation No. 92063483 has been served on
`Brian L. Main of Kutak Rock LLP by mailing said copy on May 18, 2016, via First Class Mail, postage paid to: Brian L.
`Main, Kutak Rock LLP, Two Pershing Square, 2300 Main Street, Suite 800, Kansas City, MO, 64108-2416.
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`
`
`Electronic Signature for Hazim Ansari: /hazim ansari/
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
`
`In the Matter of Registration No. 4,502,329
`Registered: March 25, 2014
`Mark: RECON
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`
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`Cancellation No. 92063483
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`TOUCHNET INFORMATION SYSTEMS, INC
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`Petitioner,
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`v.
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`HAZIM ANSARI
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`Respondent.
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`ANSWER
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`Hazim Ansari (“Respondent”) is an individual with a correspondence address at 191 W.
`Second St., Santa Ana, CA 92701. Respondent opposes Petitioner’s petition to cancel U.S.
`Trademark Registration No. 4,502,329 for the mark RECON (the “RECON Registration”) and
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`submits, as an affirmative defense, a proposed registration with particular restrictions to the
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`current description of goods.
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`In response to the petition for cancellation, Respondent answers as follows:
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`1. Respondent does not have sufficient information to admit or deny the allegations of
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`Paragraph 1 of the Complaint and, therefore, generally denies the entirety of these
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`allegations.
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`2. Respondent does not have sufficient information to admit or deny the allegations of
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`Paragraph 2 of the Complaint and, therefore, generally denies the entirety of these
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`allegations.
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`1
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`3. Respondent does not have sufficient information to admit or deny the allegations of
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`Paragraph 3 of the Complaint and, therefore, generally denies the entirety of these
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`allegations.
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`4. Respondent does not have sufficient information to admit or deny the allegations of
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`Paragraph 4 of the Complaint and, therefore, generally denies the entirety of these
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`allegations.
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`5. Respondent does not have sufficient information to admit or deny the allegations of
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`Paragraph 5 of the Complaint and, therefore, generally denies the entirety of these
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`allegations.
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`6. Respondent does not have sufficient information to admit or deny the allegations of
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`Paragraph 6 of the Complaint and, therefore, generally denies the entirety of these
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`allegations.
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`7. Respondent does not have sufficient information to admit or deny the allegations of
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`Paragraph 7 of the Complaint and, therefore, generally denies the entirety of these
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`allegations.
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`8. Respondent does not have sufficient information to admit or deny the allegations of
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`Paragraph 8 of the Complaint and, therefore, generally denies the entirety of these
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`allegations.
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`9. Respondent admits that Hazim Ansari is an individual and has a correspondence address
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`of 191 West Second Street, Santa Ana, CA 92701. Respondent denies the remaining
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`allegations of Paragraph 9 in their entirety.
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`
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`FAILURE TO SUBMIT EVIDENCE OF USE
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`10. Respondent admits that an application for the RECON Registration was filed on June 1,
`2012 (the “RECON Application”).
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`11. Respondent admits that the USPTO issued a Notice of Allowance for the RECON
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`Application on April 23, 2013.
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`12. Respondent admits that Respondent submitted a web page specimen of use on October
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`18, 2013 but denies the rest of the allegations in Paragraph 12.
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`13. Respondent denies the allegations of Paragraph 13 in their entirety.
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`14. Respondent denies the allegations of Paragraph 14 in their entirety.
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`2
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`FAILURE TO MAKE A BONA FIDE USE OF THE MARK IN COMMERCE
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`15. Respondent denies the allegations of Paragraph 15 in their entirety.
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`16. Respondent admits that it submitted specimens that included screenshots of its service.
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`Respondent denies the remaining allegations of Paragraph 15 in their entirety.
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`17. Respondent does not have sufficient information to admit or deny the allegations of
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`Paragraph 17 of the Complaint and, therefore, generally denies the entirety of these
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`allegations.
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`18. Respondent denies the allegations of Paragraph 18 in their entirety.
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`19. Respondent does not have sufficient information to admit or deny the allegations of
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`Paragraph 19 of the Complaint and, therefore, generally denies the entirety of these
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`allegations.
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`20. Respondent denies the allegations of Paragraph 20 in their entirety.
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`21. Respondent denies the allegations of Paragraph 21 in their entirety.
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`FRAUD
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`22. Respondent admits that Sona Dalal registered the reconip.com domain name.
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`Respondent denies the remaining allegations of Paragraph 22 in their entirety.
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`23. Respondent admits that Hazim Ansari is the CEO of a company and that Sona Dalal is
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`the COO of that same company. Respondent denies the remaining allegations of
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`Paragraph 23 in their entirety.
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`24. Respondent denies the allegations of Paragraph 24 in their entirety.
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`25. Respondent denies the allegations of Paragraph 25 in their entirety.
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`26. Respondent denies the allegations of Paragraph 26 in their entirety.
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`27. Respondent denies the allegations of Paragraph 27 in their entirety.
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`OVERLY BROAD DESCRIPTION OF GOODS
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`28. Respondent admits that the RECON Registration is registered in International Class 9.
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`29. Respondent admits that the description of goods listed in the RECON Registration under
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`International Class 9 are: Computer software for identifying, via searching a third party
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`patent database or a patent database contained within the computer software, and
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`3
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`evaluating, via analysis of patents within a database, intellectual property related to at
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`least one field; computer software for providing a web platform for, via searching a third
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`party patent database or a patent database contained within the computer software, and
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`evaluating, via analysis of patents within a database, intellectual property; computer
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`software for allowing users to access, evaluate, and synthesize information and generate
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`reports related to intellectual property assets; Computer software for creating searchable
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`databases of information and data; Computer software platforms for allowing users to
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`access, evaluate, and synthesize information and generate reports related to intellectual
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`property; Computer software that provides information from various databases and
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`presents it in an easy-to-understand user interface; Computer software that provides
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`intellectual property information, and more specifically, patents, from various databases
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`and presents it in an easy-to-understand user interface; Computer software that provides
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`web-based access to applications and services through a web operating system or portal
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`interface.
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`30. Respondent denies the allegations of Paragraph 30 as being an inaccurate characterization
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`of the description of goods listed in Paragraph 29, which speak for themselves.
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`31. Respondent does not have sufficient information to admit or deny the allegations of
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`Paragraph 31 of the Complaint and, therefore, generally denies the entirety of these
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`allegations.
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`32. Respondent admits that the specimens submitted by Respondent pertains to the
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`investigation, analysis, and reporting of IP. Respondent denies the remaining allegations
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`of Paragraph 32 in their entirety.
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`33. Respondent denies the allegations of Paragraph 33 in their entirety.
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`34. Respondent denies the allegations of Paragraph 34 in their entirety.
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`35. Respondent admits that the descriptions of the RECON Registration should be restricted
`in accordance with Respondent’s affirmative defense. Respondent denies the remainder
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`of the allegations of Paragraph 35 in their entirety.
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`OVERLY BROAD DESCRIPTION OF GOODS
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`36. Respondent admits that the RECON Registration is registered in International Class 42.
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`4
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`37. Respondent admits that the description of goods listed in the RECON Registration under
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`International Class 42 are: Providing a members-only website featuring technology which
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`provides members with the ability to quickly and efficiently evaluate intellectual
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`property; Providing a secure electronic online system featuring technology which allows
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`for efficient evaluation of intellectual property; Providing a secured-access, members
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`only website featuring technology that gives members the ability to identify and evaluate
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`intellectual property; Providing a website that features technology that enables the secure
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`exchange of information by users; Providing an interactive website featuring technology
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`that allows users to access, evaluate, and synthesize information and generate reports for
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`use in consulting with research and development; Research and development and
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`consultation related thereto in the field of intellectual property.
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`38. Respondent denies the allegations of Paragraph 38 as being an inaccurate characterization
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`of the description of goods listed in Paragraph 37, which speak for themselves.
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`39. Respondent does not have sufficient information to admit or deny the allegations of
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`Paragraph 39 of the Complaint and, therefore, generally denies the entirety of these
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`allegations.
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`40. Respondent admits that the specimens submitted by Respondent pertains to the
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`identification, analysis, and reporting of IP. Respondent denies the remaining allegations
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`of Paragraph 40 in their entirety.
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`41. Respondent denies the allegations of Paragraph 41 in their entirety.
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`42. Respondent admits that the descriptions of the RECON Registration should be restricted
`in accordance with Respondent’s affirmative defense. Respondent denies the remainder
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`of the allegations of Paragraph 42 in their entirety.
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`AFFIRMATIVE DEFENSE
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`43. On May 10, 2016, attorney for Petitioner, Brian Main, asked, through an email
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`communication, if Respondent would be willing to voluntarily limit certain descriptions
`of goods associated with the RECON mark, in response to Respondent’s indication of a
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`willingness to settle the cancellation proceeding. Provided in Exhibit A is a true and
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`correct copy of that email communication.
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`5
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`44. On May 11, 2016, Respondent responded that “[w]e are willing to consider limitations to
`our descriptions”. Provided in Exhibit B is a true and correct copy of that email
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`communication.
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`45. On May 11, 2016, Mr. Main responded by offering the following limitations to the
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`current descriptions for the RECON mark in Class 9. Provided in Exhibit C is a true and
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`correct copy of that email communication.
` Computer software for creating searchable intellectual property databases
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`of intellectual property information and data related to intellectual property;
` Computer software that provides intellectual property information from
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`various intellectual property databases and presents it in an easy-to-understand
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`user interface;
` Computer software that provides web-based access to intellectual
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`property applications and services related to intellectual property through a
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`web operating system or portal interface.
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`46. In that same email communication, attached in Exhibit C, Mr. Main also responded by
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`offering the following limitations to the current descriptions for the RECON mark in
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`Class 42.
` Providing a website that features technology that enables the secure exchange
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`of intellectual property information by users;
` Providing an interactive website featuring technology that allows users to
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`access, evaluate, and synthesize intellectual property information and generate
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`reports related to intellectual property for use in consulting with research and
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`development.
`47. On May 11, 2016, Respondent responded by stating the “revisions are acceptable”.
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`Provided in Exhibit D is a true and correct copy of that email communication.
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`48. Accordingly, Respondent submits that both Petitioner and Respondent agree that the
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`restrictions provided in paragraphs 45 and 46 would narrowly and accurately reflect
`Respondent’s goods and services and, therefore, that the description of goods and
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`services associated with the RECON mark should be so amended and modified.
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`6
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`49. Respondent therefore pleads that it is at least entitled to a registration with the
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`restrictions, as proposed by Petitioner and listed in paragraphs 45 and 46, instead of
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`cancelling the RECON registration.
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`WHEREFORE, Respondent requests that the petition to cancel U.S. Registration No.
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`4,502,329 for the mark RECON be denied in its entirety. In the alternative, Respondent
`requests that the registration for RECON be modified in accordance with Respondent’s
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`affirmative defense.
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`Respectfully submitted,
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`By: /Hazim Ansari/
`Hazim Ansari (Respondent)
`191 W. Second St.
`Santa Ana, CA 92701
`Telephone: (949) 233-5172
`Facsimile: (714) 464-5413
`Email: hazim@novelip.com
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`7
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`EXHIBIT A
`EXHIBIT A
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`| Closewindow
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`Subject: Recon Trademark
`
`From: "Main, Brian L." <Brian.Main@KutakRock.com>
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`Date: Tue, May 10, 2016 7:06 am
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`To: "hazim@nove|ip.com" <hazim@nove|ip.com>
`
`Hazim:
`
`Thank you for calling last week. I have spoken with Ed Marquette regarding this matter and, at this time, we
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`believe that it is not in our client's best interests to purchase the your Recon registration (Trademark
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`Registration Number 4502329, the ”Recon Registration”). Instead, we would like to proceed with the consent
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`agreement we discussed last week.
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`Our client's goal is to obtain registration of their ”Recon 1" mark. Unfortunately, the Office has rejected our
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`efforts (see Trademark Application Number 86466041, the ”Recon 1 Application”) due to a perceived
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`likelihood of confusion associated with the following goods and services described in the Recon Registration:
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`Computer software for creating searchable databases of information and data (Class 9)
`
`Computer software that provides information from various databases and presents it in an easy—to-
`
`understand user interface (Class 9)
`
`Computer software that provides web-based access to applications and services through a web
`
`operating system or portal interface (Class 9)
`
`Providing a website that features technology that enables the secure exchange of information by
`
`users (Class 42)
`
`Providing an interactive website featuring technology that allows users to access, evaluate, and
`
`synthesize information and generate reports for use in consulting with research and development
`
`As discussed in the Petition to Cancel the Recon Registration, the above listed descriptions of goods and
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`services are overly broad. Consequently, the Office will likely require these overly broad descriptions to be
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`deleted or adequately limited prior to allowing the Recon 1 Application to proceed towards registration. As a
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`preliminary matter, prior to drafting a consent agreement, we would like to determine whether you are willing
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`to amend the Recon Registration to delete these overly broad descriptions. If you are unwilling to delete these
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`descriptions, we would like to determine whether you are at least willing to limit these overly broad
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`descriptions sufficiently enough to allow the Recon 1 Application to proceed towards registration. In either
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`case, upon entering into a mutually agreeable consent agreement, we would be willing to suspend the Petition
`
`to Cancel. Furthermore, if the consent agreement resolves the Office’s rejections of the Recon 1 Application,
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`we would be willing to dismiss the Petition to Cancel.
`
`Please advise as to your willingness to proceed with the consent agreement under the conditions outlined
`above.
`
`Rega rds,
`
`Brian L. Main
`
`Kutak Rock LLP
`
`Two Pershing Square
`
`2300 Main Street, Suite 800
`
`Kansas City, MO 64108-2416
`Phone:
`816-960-0090
`
`Facsimile: 816-960-0041
`
`
`
`5/17/2016
`
`Workspace Webmail :: Print
`
`
`
`https://em ai |06.godaddy.com/viewJ)ri nt_m ulti .php?uidArray= 1 07266| IN BOX&aEm I Part=0
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`2/2
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`EXHIBIT B
`EXHIBIT B
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`| Closewindow
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`Subject: RE: Recon Trademark
`
`From: hazim@nove|ip.com
`
`Date: Wed, May 11,2016 8:53 am
`
`To: "Main, Brian L." <Brian.Main@KutakRock.com>
`
`Brian,
`
`Please send me a revised set of
`We are willing to consider limitations to our descriptions.
`descriptions for our review.
`I would appreciate a response this week since I'm travelling
`starting Friday and would like to determine how we plan to address this proceeding before then.
`
`Thanks,
`Hazim Ansari
`949-233-5172
`
`------ -- Original Message --------
`Subject: Recon Trademark
`From: "Main, Brian L." <Brian.Main@KutakRock.com>
`Date: Tue, May 10, 2016 7:06 am
`To: " azim@nove|ip.com" <hazim@nove|ip.com>
`
`Hazim:
`
`Thank you for calling last week. I have spoken with Ed Marquette regarding this matter and,
`
`at this time, we believe that it is not in our client's best interests to purchase the your Recon
`
`registration (Trademark Registration Number 4502329, the ”Recon Registration”). Instead,
`
`we would like to proceed with the consent agreement we discussed last week.
`
`Our client's goal is to obtain registration of their ”Recon 1" mark. Unfortunately, the Office
`
`has rejected our efforts (see Trademark Application Number 86466041, the "Recon 1
`
`Application”) due to a perceived likelihood of confusion associated with the following goods
`
`and services described in the Recon Registration:
`
`Computer software for creating searchable databases of information and data (Class 9)
`
`Computer software that provides information from various databases and presents it in an
`
`easy—to—understand user interface (Class 9)
`
`Computer software that provides web—based access to applications and services through a
`
`web operating system or portal interface (Class 9)
`
`Providing a website that features technology that enables the secure exchange of
`
`information by users (Class 42)
`
`Providing an interactive website featuring technology that allows users to access, evaluate,
`
`and synthesize information and generate reports for use in consulting with research and
`
`development
`
`As discussed in the Petition to Cancel the Recon Registration, the above listed descriptions
`
`of goods and services are overly broad. Consequently, the Office will likely require these
`
`overly broad descriptions to be deleted or adequately limited prior to allowing the Recon 1
`
`Application to proceed towards registration. As a preliminary matter, prior to drafting a
`
`consent agreement, we would like to determine whether you are willing to amend the
`
`Recon Registration to delete these overly broad descriptions. If you are unwilling to delete
`
`
`
`5/17/2016
`
`Workspace Webmail :: Print
`
`these descriptions, we would like to determine whether you are at least willing to limit
`
`these overly broad descriptions sufficiently enough to allow the Recon 1 Application to
`
`proceed towards registration. In either case, upon entering into a mutually agreeable
`
`consent agreement, we would be willing to suspend the Petition to Cancel. Furthermore, if
`
`the consent agreement resolves the Office’s rejections of the Recon 1 Application, we would
`
`be willing to dismiss the Petition to Cancel.
`
`Please advise as to your willingness to proceed with the consent agreement under the
`conditions outlined above.
`
`Rega rd 5,
`
`Brian L. Main
`
`Kutak Rock LLP
`
`Two Pershing Square
`
`2300 Main Street, Suite 800
`
`Kansas City, MO 64108-2416
`Phone:
`816-960-0090
`
`Facsimile: 816-960-0041
`
`This E-mail message is confidential, is intended only for the named recipients above and
`may contain information that is privileged, attorney work product or otherwise protected
`by applicable law. If you have received this message in error, please notify the sender
`at 402-346-6000 and delete this E-mail message.
`Thank you.
`
`Copyright © 2003-2016. All rights reserved.
`
`https://em ai |06.godaddy.com/viewJ)ri nt_m ulti .php?uidArray= 1 2686| IN BOX.Sent_|tems&aEm I Part=0
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`EXHIBIT C
`EXHIBIT C
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`| CIoseWindow
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`Subject: RE: Recon Trademark
`
`From: "Main, Brian L." <Brian.Main@KutakRock.com>
`
`Date: Wed, May 11, 2016 9:14 am
`
`To: "hazim@nove|ip.com" <hazim@nove|ip.com>
`
`Hazim:
`
`Glad to hear that you are willing to consider limitations to the descriptions. How about the following?
`
`Computer software for creating searchable intellectual property databases of intellectual property information
`
`and data related to intellectual property
`
`Computer software that provides intellectual property information from various intellectual property
`
`databases and presents it in an easy-to-understand user interface
`
`Computer software that provides web-based access to intellectual property applications and services related
`
`to intellectual property through a web operating system or portal interface
`
`Providing a website that features technology that enables the secure exchange of intellectual property
`
`information by users
`
`Providing an interactive website featuring technology that allows users to access, evaluate, and synthesize
`
`intellectual property information and generate reports related to intellectual property for use in consulting
`
`with research and development
`
`If the above is acceptable to you, I will reach out to the examining attorney to see if the above would be
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`sufficient to overcome the examining attorney's current rejection.
`
`Please let me know. Thank you.
`
`Regards,
`
`Brian L. Main
`
`Kutak Rock LLP
`
`Two Pershing Square
`
`2300 Main Street, Suite 800
`
`Kansas City, MO 64108-2416
`Phone:
`816-960-0090
`
`Facsimile: 816-960-0041
`
`From: hazim@nove|ip.com [mailtozhazim@nove|ip.com]
`Sent: Wednesday, May 11, 2016 10:53 AM
`To: Main, Brian L.
`Subject: RE: Recon Trademark
`
`Brian,
`
`Please send me a revised set of
`We are willing to consider limitations to our descriptions.
`descriptions for our review.
`I would appreciate a response this week since I'm travelling
`starting Friday and would like to determine how we plan to address this proceeding before then.
`
`
`
`Thanks,
`Hazim Ansari
`949-233-5172
`
`—————— —— Original Message --------
`Subject: Recon Trademark
`From: "Main, Brian L." <Brian.Main@KutakRock.com>
`Date: Tue, May 10, 2016 7:06 am
`To: " azim@nove|ip.com" <hazim@nove|ip.com>
`
`Hazim:
`
`Thank you for calling last week. I have spoken with Ed Marquette
`regarding this matter and, at this time, we believe that it is not in our
`client's best interests to purchase the your Recon registration (Trademark
`Registration Number 4502329, the “Recon Registration”). Instead, we
`would like to proceed with the consent agreement we discussed last
`week.
`
`Our client's goal is to obtain registration of their “Recon 1" mark.
`Unfortunately, the Office has rejected our efforts (see Trademark
`Application Number 86466041, the “Recon 1 Application”) due to a
`perceived likelihood of confusion associated with the following goods and
`services described in the Recon Registration:
`o Computer software for creating searchable databases of information and data
`(Class 9)
`Computer software that provides information from various databases and
`presents it in an easy-to-understand user interface (Class 9)
`Computer software that provides web-based access to applications and services
`through a web operating system or portal interface (Class 9)
`Providing a website that features technology that enables the secure exchange
`of information by users (Class 42)
`Providing an interactive website featuring technology that allows users to
`access, evaluate, and synthesize information and generate reports for use in
`consulting with research and development
`
`As discussed in the Petition to Cancel the Recon Registration, the above
`listed descriptions of goods and services are overly broad. Consequently,
`the Office will likely require these overly broad descriptions to be deleted
`or adequately limited prior to allowing the Recon 1 Application to proceed
`towards registration. As a preliminary matter, prior to drafting a consent
`agreement, we would like to determine whether you are willing to amend
`the Recon Registration to delete these overly broad descriptions. If you
`are unwilling to delete these descriptions, we would like to determine
`whether you are at least willing to limit these overly broad descriptions
`sufficiently enough to allow the Recon 1 Application to proceed towards
`registration. In either case, upon entering into a mutually agreeable
`consent agreement, we would be willing to suspend the Petition to
`Cancel. Furthermore, if the consent agreement resolves the Office's
`rejections of the Recon 1 Application, we would be willing to dismiss the
`Petition to Cancel.
`
`
`
`5/17/2016
`
`Workspace Webmail :: Print
`
`Please advise as to your willingness to proceed with the consent
`agreement under the conditions outlined above.
`
`Regards,
`
`Brian L. Main
`
`Kutak Rock LLP
`
`Two Pershing Square
`2300 Main Street, Suite 800
`Kansas City, MO 64108-2416
`Phone:
`816-960-0090
`
`Facsimile: 816-960-0041
`
`This E-mail message is confidential, is intended only for the named recipients above and
`may contain information that is privileged, attorney work product or otherwise protected
`by applicable law. If you have received this message in error, please notify the sender
`at 402-346-6000 and delete this E—mail message.
`Thank you.
`
`Copyright © 2003-2016. All rights reserved.
`
`https://em ai |06.godaddy.com/viewJ)ri nt_m ulti .php?uidArray= 1 07342| IN BOX&aEm I Part=0
`
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`
`
`
`
`
`EXHIBIT D
`EXHIBIT D
`
`
`
`
`| CIoseWindow
`
`Subject: RE: Recon Trademark
`
`From: hazim@novelip.com
`
`Date: Wed, May 11, 2016 4:24 pm
`
`To: "Main, Brian L." <Brian.Main@KutakRock.com>
`
`Brian,
`
`Your revisions are acceptable. Let's try to wrap this up in the next couple of business days.
`
`Regards,
`Hazim
`
`------ -- Original Message ————————
`Subject: RE: Recon Trademark
`From: "Main, Brian L." <Brian.Main@KutakRock.com>
`Date: Wed, May 11, 2016 9:14 am
`To: " azim@novelip.com" <hazim@nove|ip.com>
`
`Hazim:
`
`Glad to hear that you are willing to consider limitations to the descriptions. How about the
`
`following?
`
`Computer software for creating searchable intellectual property databases of intellectual property
`
`information and data related to intellectual property
`
`Computer software that provides intellectual property information from various intellectual property
`
`databases and presents it in an easy-to-understand user interface
`
`Computer software that provides web-based access to intellectual property applications and services
`
`related to intellectual property through a web operating system or portal interface
`
`Providing a website that features technology that enables the secure exchange of intellectual
`
`property information by users
`
`Providing an interactive website featuring technology that allows users to access, evaluate, and
`
`synthesize intellectual property information and generate reports related to intellectual property for
`
`use in consulting with research and development
`
`If the above is acceptable to you, I will reach out to the examining attorney to see if the above would
`
`be sufficient to overcome the examining attorney's current rejection.
`
`Please let me know. Thank you.
`
`Regards,
`
`Brian L. Main
`
`Kutak Rock LLP
`
`Two Pershing Square
`
`2300 Main Street, Suite 800
`
`Kansas City, MO 64108-2416
`Phone:
`816-960-0090
`
`Facsimile: 816-960-0041
`
`
`
`From: hazim@novelip.com [mailtozhazim@novelip.com]
`Sent: Wednesday, May 11, 2016 10:53 AM
`To: Main, Brian L.
`Subject: RE: Recon Trademark
`
`Brian,
`
`Please send me a revised set
`We are willing to consider limitations to our descriptions.
`of descriptions for our review.
`I would appreciate a response this week since I'm
`travelling starting Friday and would like to determine how we plan to address this
`proceeding before then.
`
`Thanks,
`Hazim Ansari
`949-233-5172
`
`------ -- Original Message --------
`Subject: Recon Trademark
`From: "Main, Brian L." <Brian.Main@KutakRock.com>
`Date: Tue, May 10, 2016 7:06 am
`To: " azim@nove|ip.com" <hazim@nove|ip.com>
`
`Hazim:
`
`Thank you for calling last week. I have spoken with Ed Marquette
`regarding this matter and, at this time, we believe that it is not in
`our client's best interests to purchase the your Recon registration
`(Trademark Registration Number 4502329, the “Recon
`Registration”). Instead, we would like to proceed with the consent
`agreement we discussed last week.
`
`Our client's goal is to obtain registration of their “Recon 1" mark.
`Unfortunately, the Office has rejected our efforts (see Trademark
`Application Number 86466041, the “Recon 1 Application”) due to a
`perceived likelihood of confusion associated with the following
`goods and services described in the Recon Registration:
`Computer software for creating searchable databases of information
`and data (Class 9)
`Computer software that provides information from various databases
`and presents it in an easy-to-understand user interface (Class 9)
`Computer software that provides web-based access to applications and
`services through a web operating system or portal interface (Class 9)
`Providing a website that features technology that enables the secure
`exchange of information by users (Class 42)
`Providing an interactive website featuring technology that allows users
`to access, evaluate, and synthesize information and generate reports
`for use in consulting with research and development
`
`As discussed in the Petition to Cancel the Recon Registration, the
`above listed descriptions of goods and services are overly broad.
`Consequently, the Office will likely require these overly broad
`
`
`
`5/17/2016
`
`Workspace Webmail :: Print
`
`descriptions to be deleted or adequately limited prior to allowing
`the Recon 1 Application to proceed towards registration. As a
`preliminary matter, prior to drafting a consent agreement, we
`would like to determine whether you are willing to amend the
`Recon Registration to delete these overly broad descriptions. If
`you are unwilling to delete these descriptions, we would like to
`determine whether you are at least willing to limit these overly
`broad descriptions sufficiently enough to allow the Recon 1
`Application to proceed towards registration. In either case, upon
`entering into a mutually agreeable consent agreement, we would
`be willing to suspend the Petition to Cancel. Furthermore, if the
`consent agreement resolves the Office's rejections of the Recon 1
`Application, we would be willing to dismiss the Petition to Cancel.
`
`Please advise as to your willingness to proceed with the consent
`agreement under the conditions outlined above.
`
`Regards,
`
`Brian L. Main
`
`Kutak Rock LLP
`
`Two Pershing Square
`2300 Main Street, Suite 800
`Kansas City, MO 64108-2416
`Phone:
`816-960-0090
`
`Facsimile: 816-960-0041
`
`This E-mail message is confidential, is intended only for the named recipients
`above and may contain information that is privileged, attorney work product or
`otherwise protected by applicable law. If you have received this message in
`error, please notify the sender at 402-346-6000 and delete this E-mail message.
`Thank you.
`
`Copyright © 2003-2016. All rights reserved.
`
`https://em ai |06.godaddy.com/viewJ)ri nt_m ulti .php?uidArray= 1 2694| IN BOX.Sent_|tems&aEm I Part=0
`
`3/3
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