29 min read
Chris Daming, J.D., LL.M.
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This guide--part of our intellectual property series--helps you determine if you should register your mark for trademark protection. You’ll want to know (1) if you should do it, and then (2) determine if your mark is eligible for registration. Once you know that, we'll go over how to perform a trademark search, how to register your mark, and steps to take after registering to ensure you retain trademark protection.
And we'll do it all in 7 easy steps!
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First, you'll want to determine if you even want to learn all this. Registering a mark only makes sense for certain businesses ("Mark" means service mark or trademark, so we'll use trademarks to simplify everything).
Specifically, it makes sense if your brand matters to your business.
By using a mark to represent your brand you are telling the public that they can expect a certain kind of quality from a product that has that mark. Registering your trademark gives you legal protections in your mark that ultimately help protect your brand. These include:
If your brand matters, then the next step is to make sure your Brand would be eligible for trademark protection.
Are you using an identifying name, sound, color, smell, logo, or symbol to communicate your brand to the public? Are you using your mark in “interstate” commerce (in more than one state?). Do you plan to do this in the future? If you answered yes to these questions you probably have something you can trademark.
First determine if there is any name, logo, symbol, or sound that you are using to identify your brand to the public. Consider some examples:
If you are using something to identify your brand to the public you meet this qualification. This is true even if that “something” is your own personal name (think of Coco Chanel, Louis Vuitton, or Vera Wang).
The next step if to consider whether you are using this mark in interstate commerce. This question is simply asking whether you are using your mark, in business, across state lines. Here are some examples:
If your business operates across state lines and you use your mark in those interactions, you are engaged in interstate commerce. This also means that you have a mark you can register.
If you are not currently using the mark in interstate commerce, you may still have something you can trademark. The USPTO allows marks to be registered for future use. Do you have a legitimate (or “bona fide” as the USPTO calls it) intent to do so in the next three to four years? If the answer to this question is yes, then you also meet this qualification.
If your "Brand" is eligible for protection, now let's see if your mark that identifies your brand and company will be eligible.
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To be eligible, your mark must be "distinctive." Certain types of trademarks are too generic to qualify for registration. And it makes sense -- imagine a company selling bananas that wanted to trademark “banana” -- this would cause the English language to not be able to use that word, and would be terrible public policy.
Other types of trademarks are too similar to another mark to qualify. If you trademarked “Google,” you don’t want other internet search companies to be able to name themselves “Gogle” or “Googler.” Consumers would get confused and the knock-off companies would profit off Google’s goodwill. You’ll learn more about this in our trademark search post.
But in a nutshell, trademark evaluations are heavily based on how likely they are to confuse a consumer. The stronger the trademark, the less likely it is to cause confusion. Strong trademarks are easier to register, easier to protect, and easier to use in commerce.
For now, let’s dive into what makes a business name eligible for trademark registration. Specifically, the trademark must be “distinctive.” And the US Patent & Trademark Office (USPTO) uses five categories of strength to help you determine if your mark would fit that “distinctive” definition.
We’ll start with the weakest category and work our way down to the strongest:
A generic name cannot be trademarked. A generic name tells the consumer the everyday term for the product. Examples might be:
A descriptive mark simply gives the consumer some kind of description of the product. These are the second weakest and most likely to be denied for registration. Some examples include:
A suggestive mark gives the consumer a sense of one of the attributes of a product without simply describing it. They require imagination, thought, or perception to reach a conclusion about the nature of the goods or services.
Compare suggestive to descriptive terms, which immediately tells you something about the goods or services. Some examples include:
Suggestive marks are the closest calls (some descriptive marks might think they’re suggestive and vice versa), so here are some more examples in case your mark falls in this category:
ExamplesSPEEDI BAKE for frozen dough was found to fall within the category of suggestive marks because it only vaguely suggests a desirable characteristic of frozen dough, namely, that it quickly and easily may be baked into bread. NOBURST for liquid antifreeze and rust inhibitor for hot-water-heating systems found to suggest a desired result of using the product rather than immediately informing the purchasing public of a characteristic, feature, function, or attribute. DRI-FOOT was held suggestive of antiperspirant deodorant for feet in part because, in the singular, it is not the usual or normal manner in which the purpose of an antiperspirant and deodorant for the feet would be described). |
Arbitrary marks are the second strongest classification of marks. All arbitrary marks take a word that can be found in the dictionary and apply it to a product that has nothing to do with that word. In other words, they apply the word “arbitrarily.”
Some examples include:
Fanciful words are the most creative and strongest class of trademark available. They are simply made up words that can be applied to any brand because they weren’t in existence before the brand.
Now that you know the spectrum of trademark strength, here are a few other considerations to keep in mind:
Trademark strength also can be gained organically through its actual use in business. If you’ve been using your trademark for a long time, have a solid customer base, and the mark is often associated with your brand, you probably already have a strong trademark. Here is one way we’ve seen this come to life for another brand:
Use these factors and considerations to increase the strength of your trademark before you apply to register your trademark. You’ll increase the likelihood of your application being approved and save yourself time and money.
If you have determined that you have something you can trademark then you should continue to learn whether you should register the trademark. If you are using a mark in interstate commerce, this applies to you.
Still, you don’t want to just register any mark. Additionally, registration is not required to use your mark. Registration is expensive, time-consuming, and requires a good deal of work. If your application is denied you won’t get a refund.
Understanding if you should apply for registration of your trademark is an important business consideration and investment in your brand.
Here are the considerations you need to go through when considering if you should register your trademark:
If you are answering “yes” to these questions then you have a mark that you should apply to register as a trademark with the USPTO.
If you are answering “no” here then ask yourself whether that “no” will be a “yes” in the coming years. Viewing the time and money you put into your trademark as an investment in the future of your brand should help you make the right decision on this issue.
ExampleWill operated Salesly, LLC in Jackson Hole, Wyoming. Will did a trademark search when forming and saw he was the only Salesly that existed. Salesly sold a product that automated the automation of sales. They were only selling to customers in Wyoming for their first year. A year later, Will started advertising using Facebook ads across the country. Shortly after, Will got a letter from an attorney for another Salesly that had recently formed and trademarked the name Salesly instructing Will to cease and desist from advertising across the country because the new Salesly had a federal trademark for that name. Because Will didn’t register his trademark federally, he would have first priority to the name Salesly in places where he operated first--in this example, in Wyoming. But the federally registered new Salesly had trademark rights to the name in all places Will’s Salesly had not been operating in at the time of the trademark’s approval. Will could’ve avoided all this by registering his trademark federally with the USPTO. |
If you have determined that your brand is represented by a mark that you should invest in registering, continue reading to learn how to pursue registration.
Whether you want to register your trademark or not, you still need to make sure your business name won’t infringe on someone else’s trademark.
Sometimes even if someone’s last name (surname) is generic, it still might have been registered as a trademark because it acquired the proper level of distinctiveness. For example, McDonald’s is a registered trademark, despite the fact that thousands of people in the U.S. have that last name.
Similarly, the name “Schlafly” is a beer brewing company and was sued by another person named Schlafly who argued that the name was made famous by the other person, not the brewing company. The brewing company prevailed.
You have a few options for a trademark search. You can:
Most people do none of those three simply because they don’t know about it. But, we’ll walk you through some guidance if you choose to DIY (of course, we have to mention that you should always consult an attorney). Before you do the search, you should understand what to search for and -- if you find anything close to your mark -- what might be okay and not be okay.
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Will a reasonable consumer confuse your mark with one that’s registered? Just imagine that a company in your hometown has a registered trademark. Then you travel somewhere else and see a name that looks or sounds similar.
If you’re that person, might you think it’s the same brand? Is it possible you could confuse the brand in your hometown for the one you’re seeing at the store? If so, you can’t pick that name for your business.
Having trademark protection is great for everyone. It helps consumers know brands they can trust and avoid being deceived. It helps companies want to establish a good name for themselves. And once they do, it helps them ensure other people can’t profit off of that company’s hard work in building that brand.
To start, make a quick list of words that could be used to describe your mark. If it is text (e.g. your company’s name), then you will search for that name and names that could sound or look/read similar. If it’s a symbol or logo, your list should include all of its attributes so that your search is more efficient.
Sound Matters. It’s important that the name you’ve chosen is not too similar to existing names that it may cause confusion.
ExampleSalesly, a sales company, could cause a customer to be confused if there was another company named Sailsly, Inc. They are spelled differently but sound the same. The test is, “is there a likelihood that a customer could confuse the new name with the trademarked name.” In the Salesly example, if someone was only hearing about the brand (as opposed to reading about it), they would get confused. |
In the interest of time you may want to begin with an “informal” internet search. If the mark can be found quickly and easily by using Google, it makes sense that you start there. Search for the terms on your list in both the regular search and image search. Make a list of companies you find that are using something that appears to be similar to your mark and use these results to search more formally.
Related -- what are common law trademark rights?
You should also search on your state and the federal trademark websites.
The USPTO has a database, known as the Trademark Electronic Search System. You can find it here.
Within TESS, you can search for a basic word or a word and design combination. If you are searching for a design (rather than a word) you need to search the USPTO’s design database within TESS. Start by reading the design code manual. The platform is easy to use and equipped with step by step instructions.
Check out the USPTO resources as well to improve your chances of completing a successful search. They have incredible resources that can give you a lot of guidance, which are linked here.
Note that when you’re doing a search, you don’t necessarily need to include your corporate or LLC designation (i.e. “LLC” or “Inc.” or “corp”)--unless that’s part of your branding.
Almost no customer identifies a company by their type of entity. For example, if we were searching for Legal GPS trademarks, we’d search for “legal gps” and "legalgps" (among other things) rather than “Legal GPS, Inc.” We’d also search for GPS, legal, global positioning system, and other variations.
It depends, but all is not necessarily lost. See below. It’s not exact, but it helps you determine if you would be infringing on someone else’s trademark (or vice versa).
You can register a mark that is identical to one that already exists if the goods or services you make are almost completely different from those made by the other company and the mark isn’t extraordinarily famous or distinctive (confusing? We try to simplify it).
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You can’t make a shoe company and name it Google or a furniture company named Kleenex. Those companies are either so unique and large that everyone would assume your similarly named company was actually owned by them. |
If they’re not registered, they still arguably have common law trademark rights. If they operate in a completely different market than yours, it’s probably okay, but consider consulting an attorney.
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Sometimes your business might be national, especially if you’re an online-sales business; but if you’re a lawnmowing company in Kansas City, Missouri, and the similarly named company is a lawnmowing company that serves a neighborhood in Austin, Texas, you’re probably not overlapping markets. But if you’re an arts and crafts company that sells nationally on Etsy, you arguably have the entire country as your market. |
If they’re completely different, and the name isn’t distinctive (for example, if it’s a suggestive name), you might be okay. Here are some examples:
It will say this when you do a TESS search, which is explained below. If it’s dead, you might be able to use it, but first you’ll want to see if the original owner still uses it. If they do, they’ll still be entitled to common law trademark rights.
If you’ve completed your trademark search and have no confusingly similar names, then you’re ready either to form your company knowing your name is protected and/or register your trademark. You should also consider hiring an attorney to double-check your results.
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Acting in a timely manner by putting in your application ahead of potential competitors will help (but not guarantee) that you are the one who ends up owning the trademark.
Although other people can object to your use of the mark, registration creates a legal presumption that acts as evidence of ownership if your ownership is ever challenged in court. In short, registering sooner rather than later will help you protect your mark
Begin the application process by choosing which application best suits your needs. Your only application filing options in the Trademark Electronic Application System are:
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You will need the following information for the sections that are indicated and you should have it ready before you begin filling out the application. You need to read the application carefully and click on the linked explanations within the application to be sure you are filling it out correctly.
The next sections will break down the various parts of the application, regardless of which application you choose.
The owner of the mark is the legal entity that will own the registered mark. The information you put in this section is available to the public. For this reason, you should consider using a business address or a post office box, even if you are filing as an individual.
Note: Make sure to check the box that authorizes the USPTO to communicate with you via email (this is found in the box labeled “Internet E-mail Address”) if you are doing a TEAS RF or TEAS Plus. This isn’t required for TEAS Regular, but if you want to communicate via email for efficiency purposes, you should still check the box.
This isn’t a literal “drawing,” it is a depiction of the mark. The exact depiction you submit will be displayed on your certificate and will be your official trademark. There are a few different phrases to be familiar with here:
Special Form Marks have a field for “literal element.” Here, you must fill out all of the words, letters, or numbers that appear in your trademark. Don’t include any numbers, words, or letters that don’t appear in your mark.
Special Form Marks also have a field that calls for a “Description.” This description should be accurate but not unnecessarily specific. Here are some examples:
Be aware that every variation of a trademark requires a separate application. If you have a name, a special font for your name, a logo, and you also use the name and logo together sometimes, you probably won’t want to file and pay for four separate trademark applications.
Depending on your business needs, consider filing for the one you will most often use to save time and money. Remember that a Standard Character Mark will allow you to have rights to the name that is trademarked no matter what font, size, or color is used.
Click the box after you’ve completed the “Drawing Section” to see if any of the additional statements apply to your mark. They are not commonly used and it won’t help your application to include statements that don’t apply.
You’ll see asterisks here but the statement is only required if it actually applies to your mark. The USPTO warns applicants “if in doubt, leave it out.” If you read through the Additional Statements list and none applied, simply un-check the Additional Statement box and the list will disappear.
This is potentially the most important section of the application. Inaccurate information will likely cause your application to be rejected. For this section, you need to identify whether you have goods or services and briefly offer a description of them.
You have goods if customers purchase something tangible from you. Examples might be:
You have services if customers pay you to perform a service. Examples might be:
To make this determination ask yourself if the customer is paying you to perform an activity that you would not have performed without that particular customer. If the answer is yes, you are providing a service. If you have a company that offers both goods and services, you need to identify and describe both.
The USPTO offers an online ID Manual with codes for common descriptions of goods and services. You should check this manual and if you find a code that matches your business, use it in the description section.
If there is no code, give a general description in your own words in the type box at the bottom of this section. You can use the ID Manual within the form itself or enter the descriptor into the free form text box on the same page. The text box is more likely to lead to a rejection; the ID manual is the safer route. To search the manual;
Don’t use too many descriptors. Only use those that specifically apply to your business. If you change your goods or services after you are registered, you will have to submit a new application. More descriptors will cost you more money in fees so be as accurate and concise as possible.
Your filing basis is something you need to understand for Section 1 and Section 44.
You must be either (1) using the mark in interstate commerce or (2) have a genuine intent to use the mark in interstate commerce. Only include the description of goods or services that meet one or both of these requirements. Do not include descriptions of goods or services that you aren’t using the mark for and don’t intend to use the mark.
If you’re already using the mark in commerce, you need to choose Section 1(a).
If you intend to use the mark but you haven’t yet, you need to choose Section 1(b).
1(b), the intent-to-use, is more common and allows you to submit your application before you’ve launched your product or service.
If you are not a U.S. citizen or resident, and you have filed an application for trademark protection in a country who is a member of one of many international trademark treaties with the United States, you should use Section 44(d).
If you are not a U.S. citizen or resident, and you have already received trademark protection in a country who is a member of one of many international trademark treaties with the United States, you should use Section 44(e).
This section is straightforward. Enter your information clearly and accurately. If you are appointing a representative within the U.S. (because you do not live in the U.S.) be sure the check the box that indicates the “domestic representative” box.
The simplest and fastest way to sign the application is to do it online. At the top of the page, you’ll see a “sign directly” option. Click the circle directly to the left of this option.
Click each of the categories shown to ensure that all of the information you’ve entered is correct. If you aren’t ready to file, simply click the “save form” button so that you can return to your information at a later time. Read the notice, click the box stating that you’ve read the notice, and click “pay/submit.”
Once you pay your fee, congratulations! You have submitted your application. Within the next three months, an agent will begin the review process.
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After you’ve applied for federal registration of your trademark, check on your application at least once every three months, if not more often.
You’ll do this by going on the USPTO’s online system known as the Trademark Status and Document Retrieval. You’ll type in your Serial or Reference number in the search bar and check the status of your application.
If the agent needs further information you will see this on the homepage along with a new deadline. If you fail to keep up to date with your application, the USPTO may deem it abandoned and you’ll have to start the application process from the beginning.
The USPTO will likely communicate with you through email. This means that you need to keep your email address updated and watch for emails from uspto.gov domains. If you need to change your address, use the Change of Correspondence Address form.
When you receive a communication from the USPTO be sure to:
This form will require that you provide the following:
Your submission here will depend on whether you provide goods or services.
If you apply for goods you can submit a specimen of the label or logo that is on or attached to the goods. Tags, packaging, and labeling counts here.
For services, you can submit many different kinds of materials as long as they show the mark in use with the services you provide. Here are some examples:
Some specimens will be refused. Here are some examples:
You must file the Statement of Use within six months.
If you can’t do it within six months, you must file an extension. The extension will only last six months and there is a fee. You can file an extension up to five times but after the first extension you have an additional requirement of demonstrating that you are making an “ongoing effort” to file the Statement of Use.
You might want to file an extension if:
Without a properly filed Statement of Use, you will not be granted a trademark registration. This is just as important as the initial application.
If you’ve ever taken out a mortgage or a car loan, you’ve probably seen some deceptive solicitations that insist you “ACT NOW” or pretend to be a “final notice” about your loan. If you apply for a trademark, this will likely happen again.
Private companies will reach out to you claiming that you should pay them to keep your application alive. They might be selling a service to appeal your application, for example. This could be long before you need an appeal (if you even need one at all).
They might sell you a “guarantee” - of which, there is none. They also might sell expedited application services. All of these, and more, are not exactly accurate and many are filled with false representations.
Solicitations may include your serial number or other seemingly official information about your application.
Here are some steps you should take to be sure that what you are reading is official and actually relevant to your application:
You’ll probably receive even more solicitations once the USPTO begins communicating with you during the review process. This is because these communications are public record, available online, and are monitored by private companies.
Be on guard for suspect phone calls, letters, or emails. You don’t want to end up wasting time, money, or energy from a solicitation that doesn’t even apply to your application.
Once you have a registered trademark, you can indicate that to the general public by using the “Ⓡ” symbol next to your logo. (This is in contrast to the ™ symbol which indicates that the mark is unregistered.) Using your mark often is also important to keeping it active.
In order to make sure you retain protection in your mark, you essentially have to “police” how and where your mark is used. You do this by monitoring your competition and occasionally performing an informal search to see if your mark appears in connection with someone else’s business.
ExampleJude had a company called Templeton’s Donuts, which sold donuts to the residents of Columbia, South Carolina. A year after Jude’s company began, Jude’s best friend, Chris, bought a pig named Templeton and wanted to also open a donut shop named after his porcine. Jude was fine with it and they both got along great for the first couple years until Chris got in a car accident that damaged his brain and turned him into a nightmare to be around. Jude and Chris had a falling out and Jude was sick of Chris stealing Jude’s goodwill generated from his donut shop so told Chris to cease and desist from operating his donut shop by the name the Templeton. Chris hired an attorney and argued that Jude had abandoned any common law trademark rights by not enforcing his trademark infringement rights earlier. And that Chris had relied on Jude’s abandonment when establishing his own goodwill under the name “Templeton.” Chris’s attorney was right, and Jude could’ve prevented all of this by enforcing his trademark rights earlier against Chris’s company. |
Also, keep an eye on the USPTO’s Official Gazette which is published weekly and tells you about new trademark applications. If you find one similar to yours, you have one month to challenge it with the USPTO. There are several private companies that you can pay to do these actions for you if you decide that hiring them would be cost-effective.
It’s the unauthorized use of a mark--any mark--in a way that could confuse a buyer. The “mark” here would be whatever your trademark is - it could be a logo, slogan, colors, design or even sound. It’s anything consumers might confuse with your trademark.
Here are the biggest reasons why protecting your trademark from infringement is important:
When someone infringes on your TM, meaning they use a similar mark or any mark that causes confusion with your mark, your mark necessarily becomes less and less distinctive. The more the infringing mark gets established with use (when you don’t stop it), the worse the confusion gets and the weaker your TM gets. The weaker your trademark gets, the more likely you are to not be able to enforce its protections.
Also, failure to protect you mark or act on infringement may be considered as evidence of abandonment. Remember that TM rights are only protected as long as you use the mark as a trademark. If you are deemed to have abandoned your mark, it means you are considered to have stopped using it. Consequently, the protection over your trademark stops as well.
The weakening of your trademark or abandonment, if you don’t do anything about it, can eventually lead to loss of your trademark rights altogether. What’s worse, the original infringer may end up with better rights than you in the end.
TM infringement can affect your bottom line in 2 ways: loss of sales - when buyers get confused and buy the infringer’s product when they intend to buy yours - and loss of patrons when, thinking they got your product, they are disappointed by the quality of the infringer’s product they bought by mistake.
Legally speaking, three elements must be met to prove that infringement has occurred.
Courts that consider this question look at the following factors:
Here you need to look at two things in relation to each other:
If it’s strong and easily distinguishable, there’s a greater likelihood of confusion. If you have a completely arbitrary trademark like “Google” anything that sounds or looks similar will result in confusion. The logic is - you’re the only using that mark so if someone sees it on anything then you must have made it.
Contrast that with a generic mark, like an element in your mark that is associated with your type of product (regardless of who made it). If your mark is more generic, chances are there will be a lot of companies with similar marks. There’s less of a chance of confusion because the presence of that element in a mark doesn’t tell people about the source of the product: it could have come from any one of a number of companies.
Think of the word “coffee” or a picture of a bean for coffee shops: if you see it, you think coffee, not one particular coffeeshop. Contrast that with when you see an apple on any gadget, there’s only one company you’d think that gadget came from.
The similarity we’re looking for is not simply looking alike; they don’t have to be identical. Similarity could also means the following:
Note: An exception to this includes famous trademarks. They are given more protection. The marks don’t have to be as similar for there to be infringement if the trademark is famous. If the trademark is famous, you won’t necessarily have to prove that the level of similarity causes likelihood of confusion; instead, you can just show that people are making money off of simply associating their products with yours. Good example, Charbucks was found to be infringing on “Starbucks” because the latter was famous. Same with “South Butt” and “North Face.”
Next, consider the products themselves that contain the marks. Are they the same or related, or are they completely disconnected from each other? If they’re related, it’s easier to think that they come from the same company. As an example, consider the Nike trademark. You see this trademark on many products from shoes to bags to clothes. If a competitor were to use a similar mark on socks, it would be easy for consumers to think that those socks were made by Nike. Consider instead that a bag of chips includes the Nike trademark. Most consumers wouldn’t assume the chips are related to Nike since the product is so dissimilar from the products that Nike typically sells.
The type of buyer also matters. If a buyer is choosy when purchasing the product, they’re not as likely to be confused because they’ve spent considerable time researching the buying process. For instance, many consumers spend a great deal of time researching major purchases like cars or computers. On the other hand, if you’re in a store buying something fairly commoditized, like printer paper, you’re less likely to look at the packaging closely. In that case, there’s a great likelihood of confusion.
Finally, if you can show that buyers are already confused between your product and another product using your trademark, that’s virtually a slam dunk in proving the likelihood of confusion.
To sum up: Infringement is not just when someone uses the same trademark as you. It includes using a similar mark or any mark as long as the use will cause confusion in relation to your products or the infringer’s products. When you come across a mark that might be infringing your trademark, you can use what we discussed on how to spot infringement to see if you should take action against these marks.
If you find someone else using your mark, you can take these steps:
If the use continues, you’ll probably want to hire an attorney to recover money for the infringement. You should talk to your attorney about:
Finally, you have to maintain the required documents with the USPTO. During the life of your trademark, there are a couple of specific filings the USPTO needs to keep your mark active. You need to:
The biggest question now is, "Do I need a lawyer for Trademarks” For most businesses and in most cases, you don't need a lawyer to start your business. Instead, many business owners rely on Legal GPS Pro to help with legal issues.
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Chris Daming, J.D., LL.M. : Aug. 3, 2024
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