Dr. Robert Jackler, “Freedom to Vape”: Unregulated Exuberance in Electronic Cigarette Advertising (Dr. Jackler is talking to FDA and to Congress about the same issues on his trip to the East Coast)
Note: I’m just going to stuff Dr. Jackler’s images into this post until Blogger rebels, because they are amazing.
Study of advertising looked at outrageous ads (doctors recommending) as well as tobacco ads targeting women and African-Americans; Ebonyhas 3-4 tobacco ads/month and no antismoking/ “talk to your kids” content.
Vape ads faithfully reproduce all the excesses of the past century—seem to have been using historical ads to inform their own claims. Stanford Research into the Impact of Tobacco Advertising: many high-resolution scans online. Themes and subthemes, all annotated with metadata and theme descriptors; fully searchable. Stanford’s collection, shared with Smithsonian’s collection, is over 20,000 original ads. Also an antismoking ad compendium, largely far less sophisticated—someone in a county is given a budget with no idea what to do. Also have comparisons: then and now. Many videos, including many from 40s-60s that were broadcast. Also videos done in 2014 for electronic cigarettes.
E-cigarettes becoming very prominent: 2x on front page of NYT in last few weeks. (Also a new store just opened near my home, so I’m quite interested.) Almost all e-cigarette ads are online. Invented in 2004 in China; entered American market in 2007. Varieties: look like cigarettes, Vape PENS (often used for marijuana), and e-hookahs; e-cigars and ePipes. Even inhalers (look like asthma inhalers) have been repurposed—for social acceptability?
Two forms: emulate cigarettes and distinctive design in some way. Some disposable w/fixed battery, and some rechargeable. They come as systems; can even get a USB charger to charge one from your smartphone. Battery; atomizer; cartridge filled with vapor. Suck on it = lights up and produces a mist. E-liquid/e-juice. Unlike tobacco, the vapor is much more extensive. In Mad Men, when they smoke, it’s not tobacco but clove—but that big plume is part of the glamor of smoking of that time. Ads tout the thickness of the vapor.
How bad is this stuff? Much less cancer causing bad stuff than combustible tobacco.
Marketplace is a gold rush. Over 250 brands, many startups, in US alone. Lorillard just bought a couple. Altria/Philip Morris is buying them up; RJ Reynolds too. Selling both ends of the market: owning both the problem and the solution.
Where made? China. Handful of Chinese mfgrs. Look at boxes: different brands, same boxes with different printing. You can have your own e-cigarette company by buying off the shelf.
¾ of adults who use are committed tobacco smokers who aspire to quit. Unlike patches and gums, e-cigarettes have advantage of recapitulating social glamor of smoking; sucking, primordial human urge. Smoking is also a social identity, given the ostracization. E-cigarettes allow you to participate in that social identity.
Teens are very different. Teens aren’t motivated by desire to quit. Many haven’t chosen to smoke conventional tobacco at all. Expressing individuality by conforming to “coolness.” Percentage of teens smoking doubled in a year. Many are “tobacco naïve.” Smoking is only started by young people, not by adults. If you get them started with nicotine addiction at an early age, you have them.
Museum ads: themes of freedom. E-cigarette ads use freedom to show: freedom to break the rules, to smoke anywhere, freedom from stigma, etc. Ad shows woman giving smoking ban the finger. “Inhale the freedom.” “Liberty Vapor.” “Smoke Revolt.” “Take back your freedom.” Compare classic Philip Morris ad: “Freedom from throat irritation.”
“Welcome Back.” Shows diner: welcome back to being allowed to be in a restaurant; welcome back to the glamor of the 60s; welcome back to the Greensboro diner, where the sit-ins were—an image that appears in every history textbook. Discontinuity of nicotine in bloodstream from bans on airplanes and restaurants and work—that helps people quit. Risk with e-cigarettes: people dual-use and keep nicotine levels high.
“Rewrite the Rules.” Woman fueling up at gas station (with retro car). Though e-cigarettes do explode; they have lithium ion batteries in them.
Now we are seeing more explicit health claims—lots of images of doctors; image of caduceus to connote health. “eHealth Cigarette.” (Also claim “Marlboro flavor.) Label says “Smoking is bad for your health. e-cigarette is good for your health.”) Safer is likely true; safe is likely untrue. “I plan to be a grandfather; therefore I smoke e-cigarettes.” Compare historical claims for specific tobacco brands promoting health. Claims that esmoking is the smart/logical choice. “Pure”—compare purity claims in historical ads. “True Cigarettes” were supposedly safer; now you have “Tru e-cigarettes.” “Lung Buddy.” “Breathe Freely.”
What’s changed is that online you don’t only have ads; you have blogs, forums, Twitter. Website: “Women and COPD: Reducing the Risk”—looks scientific. “No smokers cough”—like old tobacco promises. 6 different e-cigarette companies put out breast cancer-themed e-cigarettes. ProSmoke uses American Cancer Society logo and donation promise to advertise. (Hmm…wonder what TM counsel thinks about that.)
Health claims: “Vitamin Smokes.” “iSlim,” “NutriCigs” to make you slim. “Inhale Flavors. Curb Cravings. Lose Weight.” This is “Reach for a Lucky instead of a sweet” revisited.
Energy claims: similar to energy drinks. “Energy Surge.”
Targeting teens: They claim not to target teens. They have sham age certifications—you click and go in. The ads have 20-something models doing things that 15 year olds could do. Very youth-oriented. Cartoons are forbidden to tobacco under master agreement, but e-cigarettes use them. Then they blog about parents secretly buying teens e-cigarettes. Sampling is illegal for tobacco, but they’re doing it. Online games that result in coupons for e-cigarettes.
Cheapness as lure: youth are notably price sensitive. “Student discount” for cigarettes.
Sex sells: XXX e-cigarettes. Sex Stimulant, Tiger E cigarette. Party with Playmates at Playboy’s Top Party Schools—2 Playmates hand out e-cigarettes; Playboy even has its own brand. Subliminal sex signals too.
Teen flavors: primary way of attracting teens is sweetness, which was also true in tobacco; 2009 FDA banned tobacco flavors, but flavored mini-cigars escaped the FDA ban. Vapor companies produce flavors like bubble gum, gummi bears, candy corn, cotton candy, peppermint patty, honey, chocolate, caramel, banana split, Fruit Loops, Lucky’s Charms; Trix (again, TM counsel pay attention); cakes, colas, coffees; alcohol flavors—beer, champagne, amaretto, gin & tonic; pepperoni pizza; popcorn; kosher; bacon. If you want to create your own, you can buy an e-liquid kit online and mix your own. Dangerous!
Teens crave social acceptability, and one of the ways they advertise is the avoidance of trash, yellowed teeth, stinky hair/clothes. You can vape around your loved ones. “Save humanity. Start vaping.”
Second hand vapor does contain nicotine, but not combustion products of leaf. Probably considerably safer than secondhand smoke. Many ads show people in love smoking. Touted as good Mother’s Day gifts (as tobacco historically was). Ads show smoking in groups; organized meetups for people who smoke the same brand; sponsor festivals. Social media: Your Blu cigarette pack can be turned on so that it identifies nearby Blu smokers, stores, or other relevant locations. “Friends don’t let friends smoke.” Indeed, if he knew a smoker he’d want them to switch; he’s not saying that vaping is bad but that the combination of nicotine, flavor (and marketing) is bad. Bringing back the era of glamorous smoking.
Even mking them as luxury items—Louis Vuitton e-cigarettes (query whether authorized); one Russian oligarch ordered one covered in diamonds. Women’s brands; started to segment women, though not African Americans yet—recapitulation of history of tobacco. Dozens of pink e-cigarettes.
Celebrity endorsements—Courtney Love. (Wow, that’s quite an ad.) Jenny McCarthy (hates vaccines, loves e-cigarettes). Steven Dorff (actor who has emphysema). E-cigarettes are at Oscars in the grab bags, and advertise heavily around that. Golden Globes—Julia Louis-Dreyfuss smoked on camera. Websites show celebrity vapers like Jack Nicholson (and they photoshop John Lennon and Marilyn Monroe in). (Intermediate conclusion: these small players don’t actually care about any advertising rules.)
Nicotine fix: advertised as giving big dose. Deaths in children from toxic liquid. Doses even in small bottle will kill a kid. Industry is trying to normalize nicotine addiction, as with caffeine. Some brands even have “no nicotine” e-cigs.
What of the argument that it helps you quit? That’s not a good business model. Look at data: most-cited study is that an adult smoker with counseling has 5.8% chance of quitting on patches, 7.3% chance on e-cigarettes. Another recent study showed no assistance of e-cigarettes. If marketed as cessation aid, FDA can regulate as drug—so they say something like “smoking alternative,” or “kiss tobacco goodbye” or “it works” (without saying works for what). Deniability. FDA needs consumer perception studies because tobacco industry has cleverest people money can buy; banning some words aren’t enough. “Why quit? Switch to Blu” as reverse psychology: consumers perceive as “quit” message.
Consumer testimonials include disallowed claims, and companies post those on their websites and try to disclaim responsibility. (Again, these people just don’t care to conform their conduct to the law.)
Additive free, organic, and natural in tobacco—same gimmick in e-cigarettes. Young people also like tech, and they emphasize the technological aspects. Apps track your vape consumption and plot your “life expectancy increase” v. tobacco.
Also of course used heavily for cannabis. You can get cannabis flavored e-cigarettes.
Sponsorships: forbidden to tobacco, now coming to e-cigarettes. Big investment in car racing; showed an Olympic ad that I can’t imagine was authorized.
NJOY ran a Super Bowl ad; but most ads are on websites and elsewhere online. Blogs, wikis, chats—claims that FDA would regulate as drug claims made on social media. Many “independent” sites are highly laudatory of particular brands—he suspects that they are actually marketing arms. There are road shows with free samples; discounts; contasts with iPad giveaways; stores all over America. Sophisticated point of sale displays, not required to be behind the counter like tobacco. Vapor bars: you can fill your cigarette at the bar. Estimated 250,000 retail outlets like 7-11s are markets for e-cigarettes, and the business trajectory is sharply upward. Prediction that they may overtake tobacco cigarettes in 10 years.
Business model is like printer cartridges: they want you to buy the liquid, and they want to stop you from buying from other makers.
Right now FDA is in a process called “deeming.” Land rush for market share. But when they deem it to be a tobacco product, e-cigarettes will have the same regulation, which will take away flavoring, health claims, cessation claims, medicinal roles, celebrity endorsements, and sponsorships; will leave channels intact (except TV & radio that they don’t use anyway). Backdoor online channels are a challenge. (Is the FTC talking to the FDA about this? The endorsement guidelines would seem very relevant.)
Jurisdictional issues: nicotine free e-cigarettes; nicotine can be extracted from tomatoes, though that’s not economical now—if becomes possible, then it will escape FDA authority. Local ordinances are everywhere.
Unless youth adoption can be stemmed, public health gain will be offset by youth initiation and dual-use smoking where vaping is used to support tobacco.
His end game strategy: replace combustible tobacco with vapor. He supports e-cigarettes, but not the Wild West. E-cigarettes could be used to provide glamor/social benefits. If they have no nicotine: low tax, flavors allowed; youth drawn to it. Nicotine: high tax, flavors forbidden, for experienced smokers.
Q (from RT): is FDA talking to FTC? FTC has useful guidelines for the online advertising with which you are so justly concerned, especially the undisclosed advertising.
A: there’s inertia there. Big players want regulation—that will put all the riffraff out of business; want expensive burdens for testing/purity to get rid of the competition. That’s their endgame. His hope is they’ll have deeming, but what we’ve learned from history of ad regulation is that they figure a way around any regulation. In Europe etc. they can be much more effective, but the First Amendment restrictions (that killed graphic warnings on packs) is a barrier here.
Q: what of the impact on throat and mouth cancer?
A: seems unlikely to be as bad as combustible tobacco, given the carcinogens in the partially burnt hydrocarbons in combustible tobacco. We’re seeing a big explosion in cancer from HPV, but we hope vaccinations of young women—and men—will produce herd immunity.
Q: what are the materials—plastic? Leaching?
A: Some of the stuff, they’ve detected cadmium/nickel in; not much known about the polymers. Stuff is being deeply inhaled in the lungs that you wouldn’t normally inhale, and especially extended use is an unknown. A few reports of pneumonia, reactive airway disease. The additives are also an issue. Not meant to be in the lungs! Your nose is usually a filter. We should see what’s growing in these liquids—the compounders are not necessarily trustworthy. But it’s here to stay, and probably will replace combustible tobacco.
Q: what is the vapor?
A: People are starting to study. Mostly water/propylene glycol, which is well known. Really key thing: right now, smoking is declasse; it’s a deprecated social signal and was growing over time. That’s changing—reglamorizes/renormalizes smoking. He is a realist about this. Genie won’t go back in bottle.
Precedential No. 14: Junior User Awarded Concurrent Use Registration for Entire Country Except New Jersey and New York
Plaintiff BNB owned a registration for the BOI NA BRAZA mark, but it was cancelled in 2009 on the ground of likelihood of confusion with Terra Sul's previously-used mark. BNB still owned an incontestable, geographically unrestricted registration for the mark BOI NA BRAZA in the design form shown immediately above, for restaurant and bar services. Because that registration was claimed by the plaintiff in the subject concurrent use application, it was included in this proceeding. See TBMP Section 1104.
There are two conditions precedent to the issuance of concurrent registrations: (1) that the parties are presently entitled to concurrently use the mark in commerce, and (2) there is no likelihood of confusion, mistake, or deception in the marketplace as to the source of the goods. In addition, a party who claims concurrent rights must have commenced use of its mark prior to the filing date of any application owned by the conflicting claimant to the same mark or to a mark likely to cause confusion. The applicant/plaintiff has the burden of proof to demonstrate its entitlement to a concurrent use registration.
Plaintiff BNB claimed that it first used its mark in 1999, in good faith and without knowledge of Terra Sul's use, prior to the filing dates of any of Terra Sul's applications. Therefore it met the "jurisdictional requirement" for a concurrent use proceeding, and BNB was entitled to use its mark in its own geographical area of use. There remained in dispute the rights to the remainder of the United States.
The next question was whether, with an appropriate geographical restriction, likelihood of confusion could be avoided. The Board concluded that the answer was yes.
The parties had already co-existed for 15 years without credible evidence of actual confusion, and that fact weighed heavily against a finding that confusion would be likely in geographically restricted territories. Furthermore , the Board and other tribunals "have often found that confusion can be avoided when restaurant services in particular are offered under identical marks but in geographically restricted territories." Moreover, by definition, restaurant services are rendered in particular geographic locations.
Although the parties' advertising overlapped, that did not change the Board's conclusion, nor did the fact that both parties have a presence on the Internet, because in this case the overlap in advertising was minimal.
The Board then turned to the issue of the territory to which each party was entitled. Actual use in a territory is not necessary to establish rights in that territory. And as a general rule, a prior user of a mark is entitled to a registration covering the entire United States, limited only to the extent that the junior user can establish that no likelihood of confusion exists and that it has concurrent rights in its actual area of use plus its area of natural expansion. However, this presumption may be overcome if a senior user "remains static" and the junior user is the first to file for registration.
In other words, there is a policy of encouraging prompt registration of marks, and the concurrent use provision of Section 2(d) exhibits no bias in favor of the prior user.
Moreover, this case presents the unusual circumstance in which the plaintiff/applicant owns an "incontestable registration" for a composite mark that incorporates the term BOI NA BRAZA. Pursuant to Sections 15 and 33(b)(5) of the Trademark Act, use of such a mark cannot be challenged on the basis of prior rights and likelihood of confusion. A prior user normally may carve out of an incontestable registration only "the specific areas in which it has established its prior rights prior to actual or constructive note of said registration." [This is a rare circumstance in which the incontestable status of a registration has some importance in a TTAB proceeding - ed.].
Since the first use of their mark in 1996, Terra Sul and its predecessors never expanded beyond their Newark, New Jersey neighborhood. BNB, the first to file an application, offered restaurant services in three cities geographically remote from one another and from Terra Sul. Although Terra Sul provided its services in New York to a limited extent, there was no evidence of use or promotion targeted to New York prior to its receipt of constructive notice of BNB's (now-cancelled) registration. Nonetheless, the record evidence suggested that Newark is a neighbor near enough to New York to draw customers from New York City (who must traverse nearly 10 miles, three river crossings (including the Holland Tunnel), and Jersey City to reach Newark's Ironbound neighborhood.) Nonetheless, the Board concluded that "the New York's restaurant scene's embrace is sufficiently broad to reach Newark" (based on inclusion of Terra Sul's restaurant in the Village Voice "best of nyc 2006" and evidence that some of its customers live in New York). [BNB had moved, in the alternative, to restrict the subject application to exclude New Jersey and New York].
The Board concluded that BNB is entitled to a nationwide registration, but excluding New Jersey and New York. And it stated that Terra Sul may elect to amend its two pending application to include a concurrent use statement limiting its registration rights to New Jersey and New York.
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Text Copyright John L. Welch 2014.
Genericness counterclaim: The Board found the genus of Petitioner's services to be volume discount buying services. The relevant public comprised companies that purchase volume discount buying services for customers and employees, as well as individuals who join organizations offering volume discount buying services.
In determining how the relevant purchasers perceive the marks PERKS and PERKSCARD, the Board considered dictionary definitions, Petitioner's own use of the marks, and third-party use of the word "perks," including third-party registrations.
The dictionary evidence showed that a "perk" is an employee benefit that is additional to salary. Third-party use showed that the term "perks" has been extended to describe benefits provided to a person in order to induce him or her to enter into a commercial relationship, or provided as a reward to build loyalty.
A volume discount buying service is not, by its nature, a "perk." Neither PERKS nor PERKSCARD is the generic name of such a service. Although a volume discount buying service may be a "perk," not all volume discount buying services are "perks." For example, such a service may be offered to a customer other than as compensation for employment or as an inducement to enter into some other commercial relationship.
And so the Board dismissed the genericness counterclaim. [Note that at page 3 of the decision, the Board said that all three pleaded registrations were the subject of this counterclaim - ed.].
Mere Descriptiveness Counterclaim: Petitioner's registration for the mark Perks had already been cancelled for failure to file the Section 8 declaration of use, but because the parties had briefed the mere descriptiveness issue, the Board decided it.
The Board noted that Petitioner's registration for the mark PERKS was more than five years old when the petition for cancellation was filed, and so that registration cannot be cancelled on the ground of mere descriptiveness (See Section 14 of the Trademark Act). The marks found the marks Perks and PERKS to be legal equivalents, and the services in each registration substantially equivalent.
Petitioner asserted that the counterclaim to cancel the Perks registration was an improper collateral attack on its "incontestable" PERKS registration. The Board agreed that it appeared illogical to cancel the Perks registration while the PERKS registration cannot be attacked for mere descriptiveness. However, the Board pointed out, the "prior registration" or Morehouse defense is an equitable defense that is not available against a claim of mere descriptiveness. The public interest demands that registrations for marks that are merely descriptive be cancelled. Petitioner's prior registration would remain viable, but the newer registration, with a newer filing date and less than five years of existence, was not immune to a mere descriptiveness attack.
The Board then found that the term "perks" directly conveys information concerning a characteristic of Petitioner's services because the services are administered as "perks" programs. Consequently, judgment was entered in favor of Respondent on this counterclaim.
Likelihood of Confusion: The Board next considered the likelihood of confusion issue vis-a-vis Petitioners' two remaining pleaded registrations, for PERKS and PERKSCARD. It found the involved services to be legally identical, and it therefore presumed that the channels of trade and classes of purchasers are the same.
As to the strength of the pleaded marks, the Board found that in terms of conceptual strength, PERKS is descriptive. The fact that the PERKS registration is "incontestable" means only that it cannot be challenged as invalid on the ground of mere descriptiveness. However, for purposes of a likelihood of confusion analysis, the mark can be considered descriptive.
The mark PERKSCARD is likewise descriptive because it describes a card used to obtain perks or benefits.
Given the weakness of the term "perks" in Petitioner's marks, the Board concluded that Respondent's mark PERKSPOT is sufficiently different from the marks PERKS and PERKSCARD to avoid a likelihood of confusion. And so the Board denied the petition for cancellation of the PERKSCARD registration.
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TTABlog note: Zzzzzzzzzzzzzz!
Text Copyright John L. Welch 2014.
The Board's treated its findings made in its prior decision as the law of the case. Pirincci, appearing pro se, shot himself in the foot by submitting an unverified declaration as his testimony. The parties had stipulated that testimony by declaration was acceptable, but Pirincci failed to verify his statement, and so the Board refused to consider it.
Next, the Board denied Pepsico's motion to strike Pirincci's brief at final hearing because it was filed one day late. Although the delay was unjustified, it was minimal in duration, caused no prejudice to opposer, had little impact on the proceeding, and apparently was not the result of bad faith.
Moving to the merits of the case, the Board went farther than in its earlier decision, here ruling that Pepsico's mark DEW is also famous for soft drinks. It found applicant's CAN DEW mark to be highly similar to Pepsico's DEW mark, and found the involved goods to be related "to the extent that they are drinks (or mixes to make drinks) which might be nutritious." Moreover, the Board inferred from third-party registrations that consumers might assume that the involved goods emanate from a single source.
The consumers for the involved goods overlap, and the goods travel in partly identical channels of trade (e.g., drugstores, grocery stores, and supermarkets). And the goods are inexpensive and likely to be purchased with only ordinary care.
Balancing the relevant duPont, the Board found confusion likely, and it sustained the opposition regarding Pirincci's class 5 goods, on the ground of likelihood of confusion.
[A]lthough opposer has not shown on this record that the parties’ goods share an especially close relationship, its strong showing on the other relevant factors — including the opposer’s fame and the similarity of the marks — more than makes up for its somewhat weaker showing on the second du Pont factor.
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TTABlog note: The well-written, 48-page opinion in this case discusses a number of interesting points raised by the parties: Pirinnci's intent in adopting the mark, his reliance on a statement supposedly made by the interlocutory attorney regarding the due date for the final brief, the motivation of Pepsico in bringing the opposition, the inapplicability of "file wrapper estoppel" to the interpretation of the identification of goods, among others. The footnotes alone are worth a careful reading.
Text Copyright John L. Welch 2014.
Anyway: Transcript of oral argument, for those who prefer not to read secondhand postmortems.
Supreme Court post-argument discussion at AU's Washington College of Law: Pom Wonderful v. Coca-Cola (webcast available)
Moderated by Prof. Christine Farley, American University Washington College of Law
Rebecca Tushnet, Professor, Georgetown Law School
How we got here: excellent work on the cert petition by Pom, because while it was hard to call what was going on in the lower courts a split, it was certainly an unholy mess.
Brian Boynton, Partner, Wilmer Hale (Pom Wonderful)
“Pomegranate Blueberry” with “flavored blend of five juices” is the product; 99.4% apple and grape juice, only .3/.2% pomegranate and blueberry. Pom thought it was losing business from this and sued. Coca Cola internally acknowledged that the product posed a risk from a misleadingness perspective but accepted the risk.
DCt dismissed on the ground that the FDA juice regulations precluded this claim. Wasn’t clear what the 9th Circuit’s rationale was; we thought there was a tangible split and the US agreed there was tension.
Farley: Coca-Cola’s argument?
RT: Disclaimer that while I am not always on Pom’s side I think it had the better argument here. That said, Coke relied on the detailed nature of FDA regulations and need for national uniformity; problem is that sounds like field preemption, which isn’t part of the FDCA.
Samuel Gedge, Associate, Wiley Rein LLP (Chamber of Commerce)
Need for national uniformity is an interest of the Chamber.
Boynton: noted US brief—Pom shouldn’t be able to challenge the full name “Pomegranate Blueberry Flavored Blend of 5 Juices” since that choice was specifically authorized, but should be able to challenge other aspects of label including how that name is presented (large typeface for PB, small for everything else) as well as coloring of juice to be darker.
Farley: any other avenues for challenge?
Boynton: Cal. UCL claim; FDA does not provide administrative route for challenges of this sort.
Farley: what’s preempted?
RT: nonidentical state laws—you can’t enforce the FDCA but you can enforce state laws identical to those of the FDCA.
Farley: Congress thought hard about this, it seems, but didn’t say anything about the Lanham Act. What about a nonidentical Lanham Act claim: is it in limbo? Pom says no preclusion; Coke says yes.
Boynton: preemption provision mentions only state law.
Farley: the argument is that Congress intended to preempt this kind of claim; broad preemption (preclusion) is desirable.
Gedge: national uniformity is a significant concern of Congress and has been for a while. If a consumer can’t bring a state law claim that they were misled, why should a competitor be able to bring a derivative claim?
Farley: what is the worst case scenario? That Pom wins and the labeling is enjoined? What’s disruptive of uniformity?
Gedge: we aren’t dealing with just one jury. Juries across the nation can come to drastically different conclusions. Juries don’t say what the label should be, just that the Lanham Act was violated. Same need for uniformity/certainty.
RT: not exactly; Lanham Act is a uniform federal law. Juries enforce FDCA too in various circuits. There’s no uniform single jury for FDCA claims. Moreover, the fact that the jury doesn’t say what the label should be is a reason this isn’ta uniformity/preclusion problem; the jury just says a particular version is or isn’t misleading, which is a burden borne by all manufacturers. The FDA regulations do not specify what juices must be named, the way they specify how fat content must be disclosed on the nutrition panel.
Farley: what about that email from Coke suggesting the risk of misleadingness and going with regulatory compliance? What is Coke saying its compliance is?
Boynton: we don’t know yet, but we think that it’s compliance with the very specific regulation about what names for blended juices are offlimits as misbranding. Not as specific with respect to other aspects of the label, such as the fruit vignette.
Gedge: there are different levels of specificity with regard to different parts. The requirement for usual/common name is more specific than the relative type sizes. US government’s position tried to split the baby—specific enough = precluded. Court didn’t seem particularly persuaded. But regardless of whether there are FDCA juries, but Congress had that information before it and nonetheless implemented preemption, because other regimes would cause damage.
Farley: why not mention Lanham Act?
Gedge: never been a requirement for Congress to scour federal statutes for conflicts; courts should reconcile competing regimes.
Farley: any difference between federal and state claims?
Gedge: Same concerns were juries under different standards, making determinations that Congress vested in the FDA. Presumption against preemption at state level, not applicable here. Separation of powers: courts determining which statutes to give effect to. In the end, there’s tension that needs to be reconciled.
Farley: turn to the oral argument.
Boynton: Pom got to make the arguments it wanted to make, as did Coca-Cola. All the issues were hashed out.
Gedge: Kennedy was open about the fact that the container misled him. Court seemed to be taking a view that Coke was advocating field preemption, and that’s understandable because there was confusion about what the 9th Circuit actually held. We aren’t saying everything is off limits, just that there should be mirror of state preemption.
RT: I couldn’t distinguish Coke’s position from the 9th Circuit’s. Mini field preemption? But you can comply with both.
Boynton: if we took Coke’s position that the existence of a state preemption provision automatically created a federal preclusion provision, we’d have a very different world. Congress carefully considered which laws to displace, and only displaced (certain) state law. No reason to think it was an oversight. Hearing testimony included availablility of Lanham Act claims against misleading food labels.
Farley: difference of opinion about Congress’s intent.
We’ve seen Lanham Act claims supplementing other types of claims—patent, copyright. Limits of the Lanham Act.
RT: Many thoughts about this!
(1) Amicus participation: INTA and AIPLA despite the absence of any TM interest—the other half of the Lanham Act has arrived!
(2) Role of Dastar—nice argument by Coke about how SCt interpreted Lanham Act restrictively in Dastar in order to preserve the scope of the Copyright Act. I think it’s a bigger stretch here: “origin means physical origin” is easier than “false or misleading means false or misleading unless heavily regulated by the FDA.” But still worth thinking about.
(3) Court’s skepticism about FDA’s capacity to understand what consumers are thinking—Justice Kennedy was very clear that he didn’t trust the FDA to figure out what’s deceptive—helps Pom in this case, but has bad implications for FDA authority when its regulations are challenged on First Amendment grounds.
(4) Limiting the Lanham Act only when consumers are deceived by non-IP issues seems like a bad limit.
Farley: how does the FDA know what’s misleading?
RT: historically anecdotal evidence/reasoning sufficed, though this may be changing as the evidentiary burden on adminstrative agencies increases.
Gedge: Even if the FDA didn’t have resources, vesting private actors as roving AGs isn’t necessarily the solution. FDA is competent, and hears from stakeholders on all sides.
Farley: can’t Lanham Act cases provide really specific evidence that’s useful?
Boynton: FDA’s limited resources were discussed in the briefing.
RT: in defense of the other side: surveys suck and cases can be brought for anticompetitive reasons. One way to look at this: Pom sold a very expensive juice that was more expensive because of health claims that the FTC has found to be misleading. It’s not clear how customers are harmed by drinking apple juice instead. (I think the harm is to their autonomy and that ought to be enough, but I recognize the issue.)
Farley: read the tea leaves.
Gedge: Kennedy seemed convinced of misleadingness. Arguments on both sides. Don’t let competitors cloak themselves in consumer’s mantle but not let consumers sue.
Farley: of course that’s what TM does.
RT: The Court likes corporations a lot better than consumers! Pom seemed to have a pretty good day. No one was obviously on Coca Cola’s side.
Farley: we rely a lot on private actions to check misleadingness—TM is about private regulation of the markets. Is the best case superregulation by an all encompassing agency?
Boynton: express preemption provision here excludes the provision of the FDCA that makes misleading claims actionable, so misleadingness claims should be allowed anyway (I don’t think this is true).
Gedge: Coca-Cola’s position is that this blanket ban is just a summary/statement of comprehensiveness, not an independent authorization of state misleadingness claims.
Q: will customers’ sophistication grow over time?
Boynton: that will be picked up in surveys. There was some discussion today about whether a discerning consumer understood what “flavored” meant in terms of small amount of juice.
RT: No, it won’t. We’re cognitive misers; we will always have gaps in our ability to process information. We will be sophisticated about some things and not others. Even if the market were static there’d still be predictable gaps in our information processing.
Q: posted calorie content in NYC restaurants.
RT: doesn’t work that well; if it works, would decrease other information, which is certainly a valid policy choice but it can’t make our brains take in more information. Regulation usually changes the behavior of retailers/manufacturers more than understanding of consumers.
Q: how much is this case about authenticity?
Boynton: Pom’s view is that you should provide consumers accurate information and then they can decide.
Gedge: fundamental disagreement between parties about what consumers want to know; FDA considered that in the rulemaking. Pom says people are buying juice for pom’s benefits; Coca Cola says people buy it for the taste, so we can provide them the same with that label.
Boynton: if you took the same label and simply disclosed .3% pom and .2% blueberry, Coca Cola could still convey its view that it has the same flavor. Don’t have to deceive someone.
Gedge: trenches on trade secrets.
Q: if Coca Cola wins, would that effectively be a limit on the scope of the Lanham Act? Would it continue to other regulatory bodies?
Boynton: we say yes. Nothing that stops this rationale at juice labeling. Some lower courts have extended it beyond FDA to USDA regulated cosmetics. FTC regulation could have preclusive effect.
Gedge: depends on what argument the Court decides on. Anchor would be express preemption clause.
RT: many statutes do have them: FIFRA, USDA’s organic regulations, etc.
Q: taste is so subjective—is there a way to prove it’s pomegranate flavored?
Boynton: no record in this case. We don’t think it’s likely that .3% could provide the flavor; in the gov’ts view this should get litigated.
RT: Your brain will fool you: pink ice cream flavored vanilla will be judged to taste like strawberries, so it’s hard to figure out what the appropriate testing would be to judge what the flavor is.
Farley: what should this product be called?
Gedge: its current name.
Boynton: many alternatives: could call it Pom-Blueberry Flavored Apple & Grape Juice, or Apple & Grape Juice w/Pom-Blueberry Flavor, or disclose percentages.
To quote Mark Prus, Principal at NameFlash, Frankenames are “names created by slamming two or more word parts together to make a new name. This would include a name like “Toasterrific” (toaster + terrific).” See full article here.
Despite his warning, the proliferation of Frankenames continues.
In fact, I am an owner of a Frankename trademark, Pretzel’tizers. While I don’t love the name, consumers quickly and easily understood the meaning. It’s an appetizer made out of pretzels. I also tested Pretzioli (Pretzel Ravioli) which was quickly understood by only about 50% of the consumers. The other 50% didn’t grasp the meaning and didn’t put in any effort to do so. And to quote Mark again “no matter how clever you think you are being, consumers really don’t care and won’t work to get the meaning.”
Here are some particularly bad Frankenames I have encountered recently.
If you need to define your name in parentheses, it’s probably not a good name.
I didn’t know frying pans could be organic.
The consumer protection statutes of every state are currently under attack by a proposed model law that would effectively eliminate the critical private enforcement provisions that give these laws their power. The American Legislative Exchange Council (ALEC) has produced a purported law reform vehicle that is actually a wrecking ball to destroy one of the building blocks of consumer protection, namely the private enforcement of state unfair and deceptive practices acts. It does this by systematically weakening each and every provision of these laws, such as lower burdens of proof, special damages, and attorney’s fees, that were designed to provide consumers with access to justice for small economic wrongs. This article examines the history and goals of the state consumer protection statutes, with their private enforcement mechanisms, and then demonstrates how the ALEC model act would undermine these goals. The article also critically examines certain research studies that claim to demonstrate abuses of the current laws. The article concludes that while the statutes in question could perhaps benefit from some limited reforms, the ALEC proposal is an ill-conceived attempt to effectively repeal the private enforcement of state consumer protection statutes.
Precedential No. 20: TTAB Affirms Mere Descriptiveness Refusal of TOURBILLON & Design for Jewelry and Watches
Swatch stated in its application that the mark "consists of the term ‘TOURBILLON’ below a design of a 'tourbillon," and it disclaimed any exclusive right in TOURBILLON for horological and chronometric instruments (but not for jewelry). As described in Wikipedia:
In horology, a tourbillon ... is an addition to the mechanics of a watch escapement. Developed around 1795 by the French-Swiss watchmaker Abraham-Louis Breguet from an earlier idea by the English chronometer maker John Arnold a tourbillon aims to counter the effects of gravity by mounting the escapement and balance wheel in a rotating cage, to negate the effect of gravity when the timepiece (and thus the escapement) is stuck in a certain position.
Moreover, the Board concluded, TOURBILLON is merely descriptive of jewelry because, the evidence showed, the category of "jewelry" includes watches.The fact that this reading of the term "jewelry" results in some redundancy in the identification of goods was of no concern, because "redundancy in identification does not limit or otherwise adversely affect the evidentiary value of a registration certificate."
As to the design element of the mark, the Board noted that a design that comprises merely an illustration of a product is unregistrable under Section 2(e)(1), just as merely descriptive wording would be. Examining Melissa Vallillo maintained that the design element (which Swatch described as a tourbillon) "is the legal equivalent of the wording TOURBILLON," and that "the design element in the mark features various parts commonly found in a tourbillon, with such parts appearing as they would in a tourbillon."
Swatch argued that the depiction in its mark is not an exact representation of its extremely intricate escapement, but rather is an abstract, highly stylized version. The Board, however, pointed out that the question is is whether the design forthwith conveys an immediate idea of a feature of the goods and lacks any additional fanciful, arbitrary, or suggestive matter. "The fact that applicant’s design is not completely accurate, realistic or true-to-life does not exempt it from a finding of mere descriptiveness." Although the record showed "many subtle variations in the basic design of the device, it is clear that the design in applicant’s mark depicts a tourbillon and would be easily recognized as such."
Considering the applied-for mark as a whole, the Board found that the combination of the design with the word TOURBILLON "reinforces the singular impression conveyed by the mark as a whole, which is nothing more than the significance of 'tourbillon.'"
And so the Board affirmed the refusal.
Read comments and post your comment here.
TTABlog note: Maybe Swatch should rely on copyright to protect the design element of its applied-for mark. Or maybe it should file an application to register the mark for "jewelry, not including horological and chronometric instruments."
Text Copyright John L. Welch 2014.
- Brian Boynton, Partner, Wilmer Hale
- Rebecca Tushnet, Professor, Georgetown Law School
- Samuel Gedge, Associate, Wiley Rein LLP
Precedential No. 19: TTAB Grants Bayer's Petition for Cancellation Of FLANAX Registration Under Section 14(3)
Because Bayer could not show use of the FLANAX mark in the United States, the Board, in a prior ruling, dismissed its claims of likelihood of confusion and fraud. Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587 (TTAB 2009) [precedential]. [TTABlogged here]. That same ruling also dismissed Bayer's claim of violation of Section 6bis of the Paris Convention because the Paris Convention is not self-executing and does not afford an independent cause of action for parties in Board proceedings.
Standing: Belmora challenged Bayer's standing at every stage of the proceeding, pointing out that Bayer does not own a registration for the mark FLANAX in the United States, and has not used and does not plan to use the mark here. In short, Belmora asserted, no use means no trademark rights. Bayer responded that Section 14 of the Trademark Act imposes no use requirement, in contrast to Section 2(d).
Bayer established ownership of a Mexican registration for the mark FLANAX for pain relievers, and that it licenses its corporate affiliate to sell the product under that mark in Mexico. FLANAX brand analgesic has been sold in Mexico since 1976 and ranks as the top-selling pain reliever in Mexico. The Board found that Bayer met the CAFC's liberal standard for standing because it established that "it has an interest in protecting its Mexican FLANAX mark."
If respondent is using the FLANAX mark in the United States to misrepresent to U.S. consumers the source of respondent’s products as petitioner’s Mexican products, it is petitioner who loses the ability to control its reputation and thus suffers damage. *** [T]he record in this case clearly establishes that the reputation of the Mexican FLANAX mark does not stop at the Mexican border.
Section 14(3) Under Section 14(3) of the Trademark Act, a party may petition to cancel a registration of a mark if the mark "is being used by, or with the permission of, the respondent so as to misrepresent the source of the goods or services on or in connection with which the mark is used." The petitioner must show that respondent took steps to deliberately pass off its goods as those of petitioner.
The Board observed that, "although the facts before us present a matter of first impression, they do not present a close case." It found that Belmora"knowingly selected the identical mark FLANAX, used by petitioner's Mexican licensee on naproxen sodium-based painkillers, for use in the United States on the same type of goods." The Board pointed to the fabrication of documents by, and untruthful testimony of, Belmora's founder regarding the origin of its FLANAX mark, the substantial copying of the FLANAX logo and packaging used in Mexico, and perhaps most importantly Belmora's repeated invocation of the reputation of Bayer's FLANAX mark when marketing its own FLANAX product in the United States - which the Board deemed an admission that Bayer's FLANAX mark "is known among the U.S. retailers and Hispanic consumers to whom respondent markets its products."
Belmora asserted that, because its own name and not Bayer's appears on its product, it could not have misrepresented the source of the product. The Board disagreed.
Respondent .. need not use the Bayer name to affirmatively misrepresent the source of its FLANAX-brand products. Respondent purposely achieved the same result by not only copying petitioner’s mark and logo – and, for several years, significant aspects of its packaging – but also by repeatedly holding itself out as the source in the United States of the product sold for decades under the same mark in the bordering country of Mexico.
Finally, Belmora maintained that it changed its packaging and discontinued its attempts to link its FLANAX product to Bayer's product, but the Board found that, even if those assertions were true, Belmora's "continued use of the FLANAX mark, coupled with its earlier deceptive marketing over several years as it built its business, constitutes misrepresentation of the source of respondent’s goods within the meaning of Section 14(3)."
And so the Board granted the petition for cancellation.
Read comments and post your comment here.
TTABlog note: Wow! What would happen if Bayer brought a civil action in an attempt to enjoin Belmora's use of FLANAX? The courts in the United States do not recognize the "well-known mark" basis for relief (but see Grupo Gigante v. Dallo), so what claim would it have? What if Bayer started using FLANAX in the United States. Could Belmora stop it? And what if a third-party began using FLANAX?
Marty Schwimmer, my go-to guy on these inter-jurisdictional trademark use issues, provides his commentary here at the Trademark Blog, in a post entitled "Bayer v Belmora (FLANAX): Is This The First TTAB 'Reputation Without Use' Case?"
Suppose Bayer had filed an intent-to-use application for FLANAX in the United States. Could it then bring a likelihood of confusion claim under Section 2(d)? Compare Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111 (TTAB 2010) [precedential] [TTABlogged here], in which the Board held that a foreign owner of a famous mark, who has filed an I-T-U application, may oppose an application on the basis of dilution.
Text Copyright John L. Welch 2014.
On April 30, 2014, the Supreme Court will be hearing oral argument in the case of Limelight Networks, Inc. v. Akamai Technologies. The question presented and to be decided is incredibly significant for future patent infringement cases:Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under § 271(a). (See QP Report here.) As you can see from the docket report, numerous amicus briefs have been filed, demonstrating the significant interests at stake in this case. Since 2007, patent infringement law has required that all steps of a method patent be performed by a single entity for there to be infringement. A party was liable for direct infringement where it performed all steps of the method itself, and a party was liable for inducing infringement where it induced another individual actor to perform all steps of the method. Suffice it to say, this led to a gigantic loophole where one person or entity would perform the first, say, three steps of a method patent, and a final end-user would perform the last step. In the Akamai case, the Federal Circuit held for the first time that a party could induce infringement by performing some of the method steps itself, and then directing the end user to perform the final steps, if the person directing the end user was aware that there would be infringement: Limelight would be liable for inducing infringement if the patentee could show that (1) Limelight knew of Akamai’s patent, (2) it performed all but one of the steps of the method claimed in the patent, (3) it induced the content providers to perform the final step of the claimed method, and (4) the content providers in fact performed that final step. (Full decision here.) While the expansion of the induced infringement standard created by the Federal Circuit in Akamai seems to make logical sense, there is concern in the industry that it will unseat settled expectations in the marketplace. This could be particularly disruptive in industries that rely heavily on method patents, such as internet technology and financial services. The argument and the subsequent decision will be much anticipated events.
In the district court, the parties filed cross-motions for summary judgment, and Adams submitted evidence in addition to that presented to the TTAB. The court recognized that because new evidence was presented on a disputed fact question, it must make a de novo finding in order to assess the new evidence together with the evidence before the Board.
The court was particularly concerned with the "undeniable tension between patent law and trademark protection of product designs. "In patent law, the purpose is to encourage innovation while inviting competition; the recipient of a patent is granted a monopoly for a limited time, after which the innovation passes to the public for copying and improvement. *** In contrast, the purpose of trademark is not to encourage invention, but to maintain quality by protecting the reputation of the producer for an unlimited time."
Adams obtained a utility patent in 1991 on a "suction cup for use on windows," which claimed the improvement to a suction cup comprising a "plurality of surface deformations ... such that light rays passing through said suction cup will not converge at a single point." The issuance of the patent gave Adams "a production monopoly for the concentric ring suction cup." The patent expired on May 29, 2010, but Adams had meanwhile filed the subject trademark application.
Adams contended that because there are alternative designs that are equally effective at approximately the same cost of manufacture as its two-ring design, registration of its mark would not adversely affect competition.
The court found that the first two Morton-Norwich factors - the existence of a utility patent claiming the design, Adams' promotion of the utilitarian advantages of the design - led "inescapably" to the conclusion that the subject design is de jure functional and barred from registration by Section 2(e)(5).
The utility patent obtained by Adams was "overwhelming evidence" that the applied-for mark was functional.
A previous utility patent therefore adds "great weight" to the already burdensome statutory presumption that the features are deemed functional. In order to overcome this "heavy burden," a person seeking trade dress after an expired patent must show that the feature is not functional by showing that it is "merely an ornamental, incidental, or arbitrary aspect of the device." (citing TrafFix, 532 U.S. at 30.)
The court found that Adam's concentric-ring design "is the essential feature advocated as the 'central advance'" of its utility patent. The two-ring design was not merely incidental or ornamental. It was the "fundamental purpose of the utility patent, advanced to prevent the danger of converging light rays through clear suction cups attached to windows."
Adams cannot claim that the claimed design was an arbitrary flourish. The design of the Adams' suction cup is necessary to its operation, to prevent light passing through the suction cup from converging on a focal point. As advertised, it is the reason the patented device works, and therefore the two ring design is not random or artistic, but is designed to address a specific safety issue.
As to the second Morton-Norwich factor, the court found that Adams had "consistently and repeatedly touted the utilitarian advantages of its proposed mark."
The existence of alternative designs was irrelevant, because the applied-for design was "influenced by its light diffusing quality, as described in the utility patent an in Adams' product literature." In short, the existence of alternative designs does not render the design nonfunctional or incidental.
Finally, the court agreed with the TTAB's determination that the subject design does not cost significantly more than other designs, nor is it significantly less expensive to manufacture.
Balancing the four functionality factors, the Court concluded that no reasonable jury could find that the subject design was not functional.
TrafFix imposes a heavy burden on Adams to establish that its product promotion and ‘045 Patent do not render the two-ring design functional, a burden which Adams has not met in this case. Because the essential feature of the applied-for mark is the same as the central advance of the patent, there is no material issue of fact which needs to be decided by a finder of fact.
In light of its ruling that registration was barred by reason of functionality, the court found it unnecessary to rule on the issue of acquired distinctiveness.
Read comments and post your comment here.
TTABlog note: Compare this decision to the Hershey candy bar scoring case, wherein the Board reversed a Section 2(e)(5) refusal to register the configuration of a Hershey bar. [TTABlogged here]. Despite the existence of a utility patent, the Board found most significant the fact that many alternative configurations were available to competitors. But was scoring not the "central advance" of that patent?
On April 18, 2014, Adams filed a notice of appeal to the United States Court of Appeals for the Third Circuit.
Text Copyright John L. Welch 2014.
The Office of the Lieutenant Governor for Louisiana owns a state trademark registration for LOUISIANA PICK YOUR PASSION:
The Louisiana Department of Culture, Recreation and Tourism, which is under the Office of the Lieutenant Governor, also registered the word mark PICK YOUR PASSION with the United States Patent and Trademark Office.
MoveOn.org used the trademark* on a billboard critical of the Governor of Louisiana:
If you can’t read it, the billboard says “Pick your passion! But hope you don’t love your health. Gov. Jindal’s denying Medicaid to 242,000 people.”
Because politicians do not appear to be able to take criticism gracefully, the Lieutenant Governor** sued MoveOn.org for trademark infringement. One argument was that since the Lieutenant Governor was the owner of the mark, it was not a lawful parody because the Governor, not the Lieutenant Governor, was the target of the message.
So that’s an interesting concept—is it true that the “parody”*** use of a trademark has to be about the owner of the mark?
According to the court, no:
First, viewers would have to know that the service mark in question is a creation of and sponsored by the Lieutenant Governor’s Office. There is no evidence of this. Furthermore, neither the Lieutenant Governor himself, nor the Office of the Lieutenant Governor as an agency of the State, is the owner of the mark. The owner of the mark is the State, and more specifically its citizens.[****] Hence, the Court is being asked to find that viewers of the billboard are likely to believe that the State, as the owner of the service mark, is being critical of the Governor. The State argues that MoveOn.org’s billboard does not criticize the owner of the mark, the State of Louisiana, but rather it criticizes Governor Bobby Jindal. Essentially, the State argues that the target of MoveOn.org’s parody (Governor Jindal) is not the holder or owner of the mark (the State). The question is whether the disconnect between the owner of the mark and the target of the parody creates viewer confusion. In other words, is a motorist viewing the billboard likely to conclude that the State of Louisiana is criticizing Governor Jindal. The Court thinks not.
It doesn’t matter who the owner is because the question is whether anyone is confused and clearly, here, no one would be. But you can see what an aggravating problem it could be for an otherwise-uninvolved trademark owner. What if the billboard had said “Can You Hear Me Now? Vote Gov. Jindal out of office for denying Medicaid to 242,000 people.” I suspect the likelihood is low that anyone would think that Verizon was related to an ad critical of the Governor of Louisiana, but Verizon would nonetheless be unhappy about it.
And as you would expect here, the court held the MoveOn.org billboard was protected speech under the First Amendment.
Dardenne v. MoveOn.org, No. 14-00150-DDD-SCR (M.D. La. April 7, 2014).*****
*And did kind of a lousy job copying “Louisiana.” The state registration specifically claims that both letters “I” in “Louisiana” are replaced with exclamation marks, but MoveOn.org only replaced one. Lousy replication of the font, too, but good enough to make the point.
**I’m not sure why the Louisiana Department of Culture, Recreation and Tourism, owner of the federal registration, wasn’t also named as a plaintiff, although, as will be discussed, the court sorts out that problem.
***I say “parody” because that’s what the parties argued. I don’t see how this is a parody. There’s nothing “comic” whatsoever about the billboard, but, hey, it’s how the parties and court talked about it so we’ll go with it.
****Thus, the Department of Culture, Recreation and Tourism probably didn’t need to be named as a plaintiff. Although I wonder what the PTO would think about the validity of the registration if the State is actually the owner.
*****Any guesses why the State filed in federal court instead of state court?
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