Introduction
For business owners, protecting your brand identity is vital to maintaining trust and standing out in your market. Common law trademarks offer a form of brand protection derived from actual use within a specific geographic area, rather than formal federal registration. These rights come with unique legal boundaries and challenges. This article breaks down how common law trademark infringement operates, starting with its geographic scope and legal boundaries, moving on to how you can establish and enforce these rights effectively, and concluding with the limitations and remedies available compared to federally registered trademarks. Together, this will equip you to make informed decisions about protecting your brand locally and preparing for broader protection if needed.
Tables of Contents
Chapter 1: Geographic Scope and Legal Boundaries of Common Law Trademark Infringement
- How Digital Technology Reshapes the Reach and Limits of Common Law Trademark Rights
- Economic Dynamics Shaping the Geographic Reach and Legal Limits of Common Law Trademark Rights
- How Geopolitical Dynamics Shape the Reach and Limits of Common Law Trademark Protection
- Navigating Societal Dynamics within the Territorial Limits of Common Law Trademark Protection
Chapter 2: Establishing and Enforcing Common Law Trademark Infringement Rights
- Proving Priority and Ownership: The Cornerstone of Common Law Trademark Protection
- The Crucial Influence of Consumer Recognition in Safeguarding Common Law Trademark Rights
- Navigating Consumer Confusion: Assessing Likelihood of Confusion in Common Law Trademark Infringement
- Navigating Legal Remedies and Enforcement Strategies for Common Law Trademark Violations
Chapter 3: Limitations and Remedies in Common Law Trademark Infringement Compared to Registered Marks
- Navigating Territorial Boundaries: How Geographic Scope Shapes Common Law Versus Registered Trademark Protection
- Navigating Enforcement Complexities and Evidentiary Demands in Common Law Trademark Infringement
- Balancing Enforcement Power: Remedies in Common Law Versus Registered Trademark Infringement
- Strategic Defenses and Procedural Edge: How Common Law and Registered Trademarks Differ in Infringement Battles
Chapter 1: Geographic Scope and Legal Boundaries of Common Law Trademark Infringement
1. How Digital Technology Reshapes the Reach and Limits of Common Law Trademark Rights
Technological advancements, especially the internet and AI, have transformed the geographic reach and legal complexity of common law trademark infringement. Traditionally, these rights are confined to the geographic area in which a mark is actively used and recognized, typically a local or regional market. However, the rise of online commerce and social media has made trademarks accessible worldwide, expanding potential infringement beyond historical territorial boundaries.
The “natural zone of expansion” doctrine, which allows some extension of protection to nearby areas, now faces challenges as intangible digital platforms enable marks to be seen and used globally. A small business with a recognized mark in a city may find its brand copied by distant actors through websites or online marketplaces, raising questions about how far common law rights extend when physical boundaries are less relevant.
Enforcement remains anchored to proving priority of use and consumer recognition within a defined area, yet technology both complicates and aids enforcement. Artificial intelligence tools scan countless digital channels to detect unauthorized mark use, counterfeit products, or fraudulent sites. These innovations allow owners to monitor infringement more effectively despite the expanded geographic scope. E-commerce platforms also offer structured programs for reporting violations, facilitating quicker responses to infringement worldwide.
Despite these digital protections, common law trademark claims continue to face legal limits shaped by territorial principles. Jurisdictional issues and evidentiary burdens in proving use often require owners to seek federal registration for stronger, broader protection. Still, the intersection of technology and law creates a dynamic environment where the old geographic restrictions are increasingly tested, and technology becomes both a facilitator of infringement and a critical tool in its defense.
For businesses wondering whether their brand qualifies for this localized protection amidst digital expansion, understanding these nuances is essential. More insight can be found by exploring when and why you might need a trademark for your business at Trademark2Go.
2. Economic Dynamics Shaping the Geographic Reach and Legal Limits of Common Law Trademark Rights
Common law trademark rights are fundamentally shaped by economic realities that define the geographic scope and legal effectiveness of their protection. Unlike federally registered trademarks, which offer nationwide coverage, common law protections are confined to markets where the trademark has gained consumer recognition through actual use. This geographic restriction reflects a balance between protecting business investments and avoiding inefficient legal disputes over areas where the mark is unknown or unused.
From an economic standpoint, limiting infringement claims to specific localities reduces litigation costs and focuses enforcement where consumer confusion is most likely. For instance, a business operating in a distinct region may establish priority rights by consistently using a mark and building brand awareness. In contrast, expanding protection beyond this zone often lacks justification since it risks encroaching on another party’s legitimate market or triggering costly nationwide conflicts.
The decision to rely on common law rights versus pursuing federal registration hinges on anticipated market reach, enforcement expenses, and potential damages. While federal registration involves upfront costs, it grants expansive rights, presumptive ownership, and stronger remedies such as monetary damages and attorney’s fees. Businesses often weigh these factors carefully, as common law rights can serve well for smaller-scale operations but may leave gaps in protection when markets grow or cross state lines.
Internationally, managing geographic boundaries takes on new complexity. Cross-border trademark use demands clear contractual terms and proactive monitoring to mitigate risks from inconsistent IP laws and enforcement challenges. Moreover, doctrines holding third parties liable for indirect infringement increase financial risks, encouraging businesses to implement safeguards such as careful vendor screening.
Ultimately, economic considerations guide how entities navigate and enforce common law trademark protections, aligning legal boundaries with practical market presence and cost-effective risk management.
For further strategic guidance on trademark use and protection, businesses can explore resources such as trademark2go.com to make informed decisions tailored to their market realities.
[1] Thrifty Rent-a-Car System v. Thrift Cars case; [2] International licensing and arbitration considerations.
3. How Geopolitical Dynamics Shape the Reach and Limits of Common Law Trademark Protection
Geopolitical dynamics profoundly shape the geographic reach and legal boundaries of common law trademark infringement, influencing both where and how rights are protected and enforced. Unlike federally registered trademarks, common law marks rely heavily on actual market presence within specific regions, making the enforcement landscape highly susceptible to the political and legal environment of those territories. National priorities tied to security and economic competition drive IP enforcement strategies, with countries like the United States and China embedding trademark protections within broader geopolitical aims to bolster domestic industries and global technological leadership. For instance, China’s evolving intellectual property regime reflects a state-led effort to shift towards quality-driven innovation protection, which molds how trademark disputes are resolved domestically and in cross-border contexts.
Legal frameworks further diverge across borders, as enforcement practices in the U.S. contrast against bifurcated systems found elsewhere, such as in China, where patent validity and infringement are decided separately. This structure impacts how trademark claims are pursued and limits the geographic extent of enforceable rights under common law principles. Political tensions and sanctions add layers of complexity: Russia’s recent laws enabling authorities to license patents without compensating foreign owners—targeting nationals from certain countries—illustrate how geopolitical conflicts can disrupt trademark enforcement and restrict geographic protection zones.
Global supply chains and market access strategies also come into play, as nations select enforcement venues based on geopolitical alignments and anticipated judicial outcomes. This pragmatic forum shopping constrains the practical scope of common law protections to favorable jurisdictions. Moreover, rising geopolitical rivalries reduce international cooperation on IP standards, fragmenting enforcement efforts and further narrowing geographic reach. Common law trademark holders thus face a complex, fragmented legal environment, where enforcement depends increasingly on the interplay of geopolitical interests rather than purely legal merits.
Understanding these factors highlights why relying solely on common law protections can leave trademark rights vulnerable internationally. It also underlines the importance of federal registration for expanding enforceable geographic coverage and legal certainty. For a deeper perspective on how trademark needs intertwine with business strategy amid such complexities, explore guidance on whether you need a trademark for your business here.
For further insight into the global geopolitical influences on IP enforcement systems, refer to comparative analyses of U.S. and Chinese patent practices.
4. Navigating Societal Dynamics within the Territorial Limits of Common Law Trademark Protection
Navigating Societal Dynamics within the Territorial Limits of Common Law Trademark Protection
Common law trademark infringement serves as a critical mechanism to shield businesses’ goodwill and consumers’ trust within clearly defined geographic boundaries. Unlike federally registered marks that confer national protection, common law rights arise directly from a mark’s commercial use in a specific locale. This territorial limitation creates a delicate societal balance where the goal is to prevent consumer confusion while fostering fair competition and respecting free expression.
Within these spatial confines, the mark’s recognition by local consumers directly influences the strength of protection. Such regional focus helps guard against market deception by clarifying product origins and affiliations through enforceable rights. However, the segmented nature of these protections can inadvertently expose consumers outside these areas to overlapping or similar marks, potentially diluting brand identity and complicating purchasing decisions.
For businesses, these geographic boundaries compel strategic market development. Enterprises are encouraged to cultivate strong local reputations, yet expansion may lead to conflicts when encountering existing common law users with similar marks in adjacent territories. This interplay shapes competition, compelling companies to weigh brand exclusivity against growth ambitions.
Moreover, the common law framework accommodates defenses such as descriptive fair use, preserving freedom of expression and enabling legitimate comparative advertising. This is especially relevant amid the rise of digital platforms where the geographical lines of commerce blur. Social media’s expansive reach challenges traditional territorial protections, as the use of marks in hashtags or influencer content may mislead consumers or imply false endorsements beyond the mark’s established region.
Legal enforcement under common law often demands significant resources to prove priority and likelihood of confusion within defined areas, presenting obstacles particularly for smaller businesses. This disparity underscores the importance of accessible legal avenues and public awareness of trademark rights.
Ultimately, the geographic scope of common law trademark infringement reflects a nuanced societal calculus—protecting consumer clarity and market fairness while adapting to evolving commercial and digital landscapes.
For a deeper understanding of practical legal challenges in common law trademark enforcement, see Trademark Litigation Guidance.
Chapter 2: Establishing and Enforcing Common Law Trademark Infringement Rights
1. Proving Priority and Ownership: The Cornerstone of Common Law Trademark Protection
In the realm of common law trademark infringement, establishing ownership and priority hinges on demonstrating actual, continuous use of a mark in commerce. Unlike federally registered trademarks, common law rights arise automatically upon first bona fide use of a distinctive mark tied to goods or services, yet these rights are strictly limited to the geographic regions where the mark has gained consumer recognition and association.
The foundational principle is that the first party to use the mark in a specific marketplace generally holds priority over any subsequent users within that area. This priority is critical because common law trademark rights do not grant nationwide protection and do not depend on formal registration. Instead, businesses must rely on convincing evidence of their mark’s usage and distinctiveness, which typically includes sales records, advertising campaigns, customer testimonials, and digital footprint indicators like website traffic within the relevant geographic territory.
Courts focus heavily on whether the public has come to identify the mark with a single source in its market. This consumer recognition is the linchpin for demonstrating ownership and priority. However, because these rights are not recorded in any official registry, the trademark owner bears the burden of proving their claim in infringement disputes, often making enforcement more complex and litigation more demanding than for registered marks.
This inherent limitation means that common law trademarks can coexist with federally registered marks elsewhere, without conflict, as long as there is no overlapping market confusion. But if a later party registers a mark federally in an area outside the common law user’s market, it may defeat the local user’s ability to expand rights. As a result, many businesses seek federal registration after securing local priority to benefit from broader, nationwide protection.
Understanding how priority and ownership are proven is essential for navigating common law infringement claims effectively. For a deeper exploration of these legal principles, consult the detailed explanation on common law trademark rights.
2. The Crucial Influence of Consumer Recognition in Safeguarding Common Law Trademark Rights
Consumer recognition is the cornerstone of establishing and defending common law trademark infringement rights. Unlike federally registered marks, common law rights arise solely from actual use in commerce, dependent on the extent to which consumers associate a mark with a particular source of goods or services. This association is essential because common law trademark protection is geographically limited to areas where the mark has gained market presence and consumer identification.
Proving consumer recognition involves demonstrating that the public in the relevant region identifies the mark as originating from a specific business. Evidence such as sales figures, advertising outreach, consumer surveys, and brand awareness initiatives plays a critical role. Without such proof, infringement claims lack the necessary factual foundation since courts require a showing of likely consumer confusion—meaning consumers could mistake another party’s similar mark as connected to the original source. This confusion or mistaken belief lies at the heart of infringement under common law principles.
Legal analysis often applies tests like the Sleekcraft factors, which examine whether the allegedly infringing use creates a likelihood of confusion among consumers. These tests directly connect the concept of consumer perception with enforceable rights. Because common law protection does not extend nationwide, the geographic scope is defined by where consumers have come to recognize and rely on the mark for product or service origin.
Enforcement efforts frequently include educating buyers about authentic trademarks to reinforce recognition and reduce counterfeit risks. Tactics such as unique product identifiers and ongoing marketing amplify consumer awareness and strengthen infringement claims by confirming the mark’s distinctiveness in the marketplace.
Given these dynamics, nurturing and demonstrating consumer recognition is essential for any business relying on common law trademark protections to defend its brand and prevent unauthorized use.
For additional insights into the necessity of trademark use and protection, see trademark2go.com.
More detailed information on common law trademark infringement is available at UpCounsel.
3. Navigating Consumer Confusion: Assessing Likelihood of Confusion in Common Law Trademark Infringement
At the heart of common law trademark infringement lies the critical question of whether consumers are likely to be confused about the source of goods or services offered under similar marks. Courts apply a multifaceted analysis to assess this likelihood, considering how the marks are perceived in the relevant marketplace. Rather than a simple side-by-side comparison, this evaluation requires examining the overall commercial impression created by each mark—including visual appearance, sound, and meaning. The degree of similarity alone does not establish infringement; courts weigh this alongside the relatedness of the goods or services involved, since confusion is more probable when the parties operate within intersecting markets.
Additionally, the strength of the original mark greatly influences protection scope. Stronger, more distinctive marks enjoy broader safeguards because they are better known and more apt to cause consumer mix-ups if mimicked. Marketing channels also play a major role; overlapping advertising mediums or sales environments can magnify confusion risks. Courts further assess the typical consumer’s level of care, recognizing that products purchased after little scrutiny are more vulnerable to deceptive similarity.
Evidence of actual consumer confusion provides compelling support for infringement claims but is not mandatory. Equally important is the behavior of the alleged infringer—courts scrutinize whether the party acted in bad faith, deliberately capitalizing on the original mark’s reputation. In common law contexts, establishing priority through first legitimate use in commerce within a geographic area is essential, alongside proof that the alleged infringement creates real potential for misleading consumers about the origin of the goods or services.
This nuanced approach reflects legal precedents such as the DuPont factors, adapted to the local, use-based rights granted by common law trademarks. Beyond confusion, considerations like dilution and fair use also influence enforcement, balancing protection with legitimate descriptive uses. Owners should remain vigilant against deceptively similar marks within their markets to preserve their rights effectively.
For businesses concerned about protecting their brand under common law principles, further guidance can be found by exploring common law trademark protections and business needs. Additional depth on evaluating confusingly similar trademarks is available via external resources such as Confusingly Similar Trademarks.
4. Navigating Legal Remedies and Enforcement Strategies for Common Law Trademark Violations
Legal remedies for common law trademark infringement center primarily on injunctive relief, monetary damages, and occasionally the destruction of infringing goods. Injunctive relief serves as the cornerstone of enforcement, where courts order the infringer to cease unauthorized use of the mark to prevent further consumer confusion and harm. Monetary damages can include compensation for actual losses, the defendant’s profits from infringement, and court costs. In instances of willful infringement, courts may award treble damages to deter deliberate violations. Additionally, courts can mandate seizure or destruction of counterfeit or infringing goods to eliminate continuation of misuse.
Since common law trademark rights arise from actual use rather than registration, enforcement requires clear proof of prior use within a defined geographic area and established consumer association with the mark. Owners often start enforcement by issuing cease-and-desist letters to the alleged infringers, seeking voluntary compliance. If this approach fails, filing an infringement suit in state or federal court follows, where the owner must demonstrate likelihood of confusion caused by the defendant’s mark to prevail.
The law also recognizes contributory infringement, extending liability to parties who knowingly assist or facilitate infringement. Such intermediaries are liable if they have actual or constructive knowledge of infringement and materially contribute to it. Common defenses to infringement claims can include arguments against the likelihood of confusion, prior legitimate use by the accused, consent from the mark owner, abandonment, or fair use doctrines for descriptive terms.
Because these enforcement complexities vary by jurisdiction, consulting specialized intellectual property counsel is advisable for guidance on litigation strategy and procedural nuances. Understanding the interplay of geographic scope, consumer recognition, and available remedies ensures better protection and enforcement of common law trademark rights.
For more information on protecting your business identity, refer to this guide on do I need a trademark for my business.
External resource: Legal remedies and enforcement procedures.
Chapter 3: Limitations and Remedies in Common Law Trademark Infringement Compared to Registered Marks
1. Navigating Territorial Boundaries: How Geographic Scope Shapes Common Law Versus Registered Trademark Protection
Common law trademark rights are inherently tied to the specific geographic regions where a mark is actually used and recognized by consumers. These rights arise from real use in commerce, granting protection only within territories where the mark has garnered consumer association with a particular source. Courts acknowledge this territorial limitation, often tailoring injunctions and other remedies to the geographic scope of the mark’s established market. For instance, relief may be confined to prohibiting infringing uses within a defined radius or area where the plaintiff maintains a business presence or where consumer confusion is likely.
In stark contrast, federally registered trademarks offer a powerful legal advantage: constructive nationwide priority from the registration date. This means even if the owner has not used the mark in all areas of the country, they can enforce exclusive rights across the entire jurisdiction of registration. Federal courts provide broader jurisdiction and can issue remedies that extend nationwide, such as prohibiting infringing uses or ordering destruction of infringing goods countrywide.
This distinction affects where claims are brought and the scope of relief available. Common law infringement cases frequently arise in state courts and depend heavily on proving local consumer recognition and first actual use. Registered mark holders, however, benefit from presumptive validity and can pursue claims in federal court, enjoying wider enforcement powers.
The geographic and jurisdictional divide also influences priority disputes and defenses. Common law rights can coexist with other similar marks if their territories do not overlap, often leading to fairness doctrines or coexistence agreements that respect local usage. Conversely, federal registration tends to override common law rights outside the latter’s territory.
Ultimately, these geographic boundaries shape litigation strategy and the effectiveness of trademark enforcement, underscoring the importance of understanding territorial limits when assessing infringement. For businesses weighing protection options, this territorial nuance often motivates securing federal registration to obtain broader, more robust rights. To explore foundational trademark protection steps, see whether you need a trademark for your business.
For further details on geographic restrictions and injunction scope, legal guidance such as PatentPC’s trademark infringement overview offers valuable insights.[3]
[3] The Library of Congress guide clarifies jurisdictional roles between state courts handling common law claims versus federal courts addressing registered marks.
2. Navigating Enforcement Complexities and Evidentiary Demands in Common Law Trademark Infringement
Common law trademark rights rest fundamentally on actual use and consumer recognition within a defined geographic area. Unlike federally registered trademarks, they lack formalized documentation affirming ownership and priority. This absence poses substantial enforcement challenges when infringement occurs. Without a nationwide presumption of validity, common law owners must marshal detailed evidence—such as sales records, advertising expenditures, and consumer testimony—to establish both their claim to the mark and the likelihood of confusion caused by a rival’s use.
The geographic limitation further complicates enforcement. Protection under common law extends only to regions where the mark has demonstrable market presence, effectively barring owners from preventing use in areas beyond this reach. In contrast, federally registered marks offer nationwide protection under the Lanham Act, enabling broad enforcement and minimizing territorial disputes. This localized scope means common law trademark holders face a higher legal burden trying to prove infringement, since courts carefully weigh the extent of the mark’s recognition and overlap of commercial activity.
Remedies available to common law trademark owners are typically narrower. Injunctive relief, if granted, tends to be confined to the geographic region of established use, while monetary damages may be difficult to quantify owing to limited evidence of harm and market impact. Registered marks enjoy stronger remedies, including nationwide injunctions and potential for enhanced damages, which incentivizes formal registration for businesses aiming at expansion. Moreover, common law trademark holders risk losing future opportunities if another party federally registers a similar mark outside their local area, effectively blocking growth.
Given these hurdles, businesses are advised to pursue federal registration to secure more robust, enforceable rights and simplify litigation. The heavier legal burden of proving ownership and confusion under common law amplifies the importance of comprehensive trademark searches and formal protections to safeguard long-term brand integrity.
For additional insights on trademark necessity and formal protections, see do I need a trademark for my business?.
External resource: https://www.upcounsel.com/common-law-trademark-search
3. Balancing Enforcement Power: Remedies in Common Law Versus Registered Trademark Infringement
The remedies for common law trademark infringement and those for federally registered trademarks often appear similar but differ significantly in their effectiveness. Both common law and registered trademark owners can pursue injunctive relief, monetary damages, and orders mandating the destruction of infringing goods. Injunctions—whether temporary or permanent—serve to halt unauthorized use of a mark, controlling geographic areas or trade channels to control confusion. However, the strength of injunctions often reflects the underlying scope of trademark rights, with registered marks enjoying nationwide reach versus the more localized bounds of common law marks.
Monetary damages are recoverable in both contexts, with plaintiffs able to recoup actual losses and infringers’ profits tied to unauthorized use. Registered marks benefit from enhanced remedies under federal law, such as treble damages for willful infringement or counterfeiting—a provision absent in common law claims. The difficulty for common law holders lies in establishing consumer recognition and first use without the advantage of federal registration presumptions. Registered marks, in contrast, enjoy a legal presumption of validity and ownership, easing the evidentiary burden in court.
Despite these parallels, federally registered trademarks benefit from significant procedural and strategic advantages. Their nationwide protection under the Lanham Act makes enforcement more robust, as the registry publicly signals ownership, deterring potential infringers. Additionally, the incontestability status that registered marks may achieve after five years of continuous use limits challenges to their validity, further strengthening their enforceability. Conversely, common law rights depend heavily on consumer association within a limited geographical region, imposing natural barriers to enforcement beyond those markets.
This disparity helps explain why many businesses pursue federal registration despite some protections coming from common law use. The federal system’s broader and stronger remedies provide clearer rights and more potent legal tools. For those navigating trademark protection, understanding this balance between localized common law claims and registered mark benefits is essential to developing effective enforcement strategies.
For further insight on trademark protection and registration benefits, see Trademark2Go’s guide on whether you need a trademark for your business.
Reference: McCarthy on Trademarks and Unfair Competition.
4. Strategic Defenses and Procedural Edge: How Common Law and Registered Trademarks Differ in Infringement Battles
In trademark infringement disputes, the nature of the mark—common law or federally registered—shapes the defensive strategies and procedural advantages available to the parties involved. Common law trademarks arise through actual commercial use within a specific geographic area, granting rights anchored in consumer recognition rather than formal registration. This foundation brings inherent limitations: defenses often hinge on disputing the trademark owner’s prior use, secondary meaning, and the likelihood of consumer confusion, all of which require intensive factual proof. For the alleged infringer, defenses like nominative fair use allow referencing the original mark without implying endorsement, while fair use defenses do not demand disproving consumer confusion as strictly as in registered mark cases. However, without statutory presumptions of validity, common law holders must invest considerable effort to establish their rights and local consumer recognition.
Procedurally, common law claims typically proceed in state courts where case law governs over codified trademark statutes. Without the benefit of nationwide priority or federal registration notice, these claims struggle with limited geographic scope and a higher evidentiary threshold. Remedies, including injunctions and monetary damages, are attainable but less predictable and more fact-dependent, often compelling mark owners to demonstrate bad faith infringement to strengthen their case.
Conversely, federally registered trademarks benefit from statutory frameworks granting nationwide priority and formal recognition. These marks come with procedural safeguards that streamline enforcement; trademark owners enjoy presumptions of validity that ease proving infringement. They gain access to federal courts equipped to issue prompt injunctions and order the destruction of infringing goods—remedies less commonly granted in common law settings. Registered mark holders can also engage in administrative proceedings like oppositions or cancellations to preempt or resolve conflicts. Nevertheless, the registration system requires formalities and compliance, and some defenses are more narrowly construed, especially after incontestability is achieved.
This contrast establishes a strategic trade-off: common law trademarks offer flexible, immediate protection through use, while registered marks provide expansive, enforceable rights fortified by procedural advantages. Understanding these distinctions helps rights holders and defendants anticipate the scope of defenses, the complexity of proof required, and the practical reach of available remedies.
For deeper insight into enforcement and remedies in trademark infringement, see Remedies and injunctions in trademark infringement.
Final thoughts
Understanding common law trademark infringement is essential for business owners who want to protect their brand within local markets. These rights depend on actual use and consumer recognition, offering valuable but geographically limited protection. By grasping the legal boundaries, how to establish and enforce your rights, and the comparative limitations against federally registered marks, you can better strategize your brand protection efforts. While common law rights provide a foundation, federal registration remains a critical step for businesses aiming for broader, more enforceable trademark protection. Ensuring your brand is safeguarded means making informed choices today to secure your success tomorrow.
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