`
`ESTTA Tracking number:
`
`ESTTA1151883
`
`Filing date:
`
`08/09/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92076717
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Corrocoat Limited
`
`JOHN L. STRAND
`WOLF, GREENFIELD & SACKS, P.C.
`600 ATLANTIC AVENUE
`FEDERAL RESERVE PLAZA
`BOSTON, MA 02210
`UNITED STATES
`Primary Email: tmclients@wolfgreenfield.com
`Secondary Email(s): jlstrademarks@wolfgreenfield.com, cxltrade-
`marks@wolfgreenfield.com
`617-646-8000
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Response to Board Order/Inquiry
`
`John L. Strand
`
`jlstrademarks@wolfgreenfield.com
`
`/John L. Strand/
`
`08/09/2021
`
`Attachments
`
`92076717- Response to Show Cause Order.pdf(920129 bytes )
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`DOCKET NO.: C1472.50000US00
`
`
`
`
`
`Polyglass S.p.A.,
`
`Petitioner,
`
`v.
`
`Corrocoat Limited,
`
`Registrant.
`
`
`
`
`
`
`
`Mark: POLYGLASS
`
`Registration No. 6198001
`Cancellation No. 92076717
`
`
`REGISTRANT’S RESPONSE TO SHOW CAUSE ORDER
`
`Pursuant to Rule 55(c) of the Federal Rules of Civil Procedure, registrant Corrocoat
`
`Limited (“Registrant”), respectfully moves the Trademark Trial and Appeal Board (the “Board”)
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`to set aside the Notice of Default entered against Registrant and re-open this proceeding.
`
`Registrant’s default is attributable to a technical error that caused Registrant not to receive either
`
`the Petition to Cancel (the “Petition”) or Notice of Default, or notification of either, when those
`
`papers issued on March 18 and May 8, 2021, respectively. (Dkt. 1, 4.) Notice of those papers had
`
`been sent to an email account that Registrant’s counsel, Wolf, Greenfield & Sacks, P.C. (the
`
`“Firm”), had set up to receive notices, but which the Firm’s Information Technology (“IT”)
`
`department had inadvertently left on a default setting that blocked receipt of email from external
`
`addresses. Because of this technical error, Registrant had no knowledge of this proceeding until
`
`after the Firm discovered the error and informed Registrant on June 9, 2021.
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`- 1 -
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`
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`I.
`
`FACTUAL BACKGROUND
`
`On February 15, 2020, the USPTO implemented a mandatory electronic filing rule that
`
`required the inclusion of owner email addresses in trademark filings. See Declaration of April J.
`
`Fitzpatrick in Support of Registrant’s Preliminary Response to Show Cause Order (“Fitzpatrick
`
`Decl.”) (filed as Exhibit A), at ¶ 3. On February 14, 2020, the USPTO announced that attorneys
`
`could create an email address specifically for this purpose. Id.
`
`In light of the new rule, the Firm’s Trademark Practice Group chose to create the
`
`TMClients@wolfgreenfield.com email account, which the group considered preferable to listing
`
`clients’ email addresses for several reasons: (a) having an email listed associated with the Firm for
`
`the life of each registration furthered risk management objectives; (b) a Firm email address offered
`
`more permanence given that client contacts frequently change; (c) USPTO emails may be marked
`
`as spam if clients receive USPTO communications infrequently; (d) clients may have ignored
`
`USPTO emails assuming that the Firm had already received the emails; and (e) to improve
`
`administrative efficiency at both the client and Firm level. Id., at ¶¶ 4-5.
`
`The Trademark Practice Group contacted the Firm’s IT department on February 17, 2020,
`
`to request creation of the TMClients@wolfgreenfield.com email account. Id., at ¶ 6. The Firm’s
`
`IT department set up the account so that emails would be saved to a public folder in Microsoft
`
`Outlook that multiple people can access. See Declaration of Kevin A. Henry in Support of
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`Registrant’s Preliminary Response to Show Cause Order (“Henry Decl.”) (filed as Exhibit B), at
`
`¶ 5. The default settings for Firm email accounts associated with public folders do not permit
`
`external emails to be sent to those accounts. Id., at ¶ 6. Inadvertently, the permissions for
`
`TMClients@wolfgreenfield.com were not changed from the default settings, thereby preventing
`
`incoming external emails from reaching the TMClients@wolfgreenfield.com inbox. Id., at ¶ 7.
`
`- 2 -
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`
`
`
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`When the set-up process for TMClients@wolfgreenfield.com was complete, a member of
`
`the IT department confirmed whether the email account was functioning by sending a test email
`
`from an internal email address ending in @wolfgreenfield.com, which allowed the email to reach
`
`the TMClients@wolfgreenfield.com inbox. Id., at ¶¶ 8-9. As a result, the email account appeared
`
`to be working properly. Id., at ¶ 9.
`
`Because the TMClients@wolfgreenfield.com email account was linked to new trademark
`
`filings only, the Firm did not anticipate a high volume of emails to be sent to the account initially.
`
`Fitzpatrick Decl., at ¶ 9. In January 2021, the IT department tested whether the account was
`
`functioning, but again used an internal email address that was able to reach the account’s inbox,
`
`so the account appeared to be working properly. Henry Decl., at ¶ 10. By June 2021, the Firm
`
`suspected that the account was not receiving incoming messages and asked the IT department to
`
`run another test. Fitzpatrick Decl., at ¶ 10. During the June 2021 test, the IT department sent emails
`
`from both internal and external email accounts, and after only the internal email was able to reach
`
`the inbox, the IT department realized that incorrect permissions were set up for the account, which
`
`blocked incoming external emails. Henry Decl., at ¶ 11.
`
`On June 9, 2021, the Firm reviewed the recovered external emails sent to the
`
`TMClients@wolfgreenfield.com email account and saw the email notice from the USPTO of the
`
`Notice of Default (issued on May 8, 2021) for the subject cancellation proceeding. Fitzpatrick
`
`Decl., at ¶ 12. Upon discovering the Notice of Default, the Firm took swift action by filing a
`
`Preliminary Response to Show Cause Order and Request for Additional Time that same day. Id.,
`
`at ¶ 13.
`
`The Firm reviewed the individual email accounts and mail reception for Firm personnel
`
`involved with Registrant’s subject registration and confirmed that no one at the Firm received any
`
`- 3 -
`
`
`
`
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`email communications or physical mail from either the USPTO or Petitioner’s counsel about the
`
`subject proceeding. Id., at ¶ 14.
`
`Due to the mandatory electronic filing rule, all communications with the USPTO became
`
`electronic on February 15, 2020. Id., at ¶ 15. Because the address TMClients@wolfgreenfield.com
`
`was listed as Respondent’s email address in USPTO records for the subject registration,
`
`Respondent would not have received either an electronic or hard copy of the relevant papers for
`
`this cancellation proceeding. Id.
`
`Following this incident, the Firm implemented procedures to prevent similar errors from
`
`occurring in the future. Id., at ¶ 16; Henry Decl., at ¶ 16. The IT department now tests all email
`
`accounts using both internal and external emails to ensure that the appropriate permissions are in
`
`place and the accounts are functioning properly. Id.
`
`II.
`
`ARGUMENT
`
`Rule 55(c) allows an entry of default to be set aside for “good cause.” Fed. R. Civ. P. 55(c).
`
`To determine if good cause exists to permit the late filing of an answer in a cancellation proceeding,
`
`the Board considers whether: (i) the registrant acted willfully in failing to file an Answer; (ii) delay
`
`in the proceeding substantially prejudices the petitioner; and (iii) the registrant has a meritorious
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`defense to the petitioner’s claims. See Paolo's Associates Ltd. Partnership v. Bodo, 21 U.S.P.Q.2d
`
`1899, 1902 (T.T.A.B. 1990). Based on these factors, good cause exists to set aside the Notice of
`
`Default against Registrant in this proceeding.
`
`In this case, Registrant’s failure to answer the Petition was clearly not the result of “an act
`
`that is willful, in bad faith, or in gross neglect.” Paolo’s Associates, 21 U.S.P.Q.2d at 1903 n.2. As
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`noted above, Registrant was without any knowledge of the Petition or its duty to answer until
`
`receiving the Notice of Default after the Firm discovered the technical error that blocked notice of
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`- 4 -
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`
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`
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`the filing from being received by the email address listed for Registrant in the USPTO’s records
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`for the subject registration.
`
`Petitioner also will not suffer substantial prejudice if the Board allows Registrant to defend
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`against cancellation of its registration. Other than a delay of a few months in receiving Registrant’s
`
`Answer, Petitioner has not suffered any conceivable prejudice, and the Board has stated that “delay
`
`alone is not a sufficient basis for establishing prejudice.” Regatta Sport Ltd. v. Telux-Pioneer Inc.,
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`20 U.S.P.Q.2d 1154, 1156 (T.T.A.B. 1991).
`
`Finally, Registrant has a meritorious defense to the Petitioner’s claims. See Fred Hayman
`
`Beverly Hills Inc. v. Jacques Bernier Inc., 21 U.S.P.Q.2d 1556, 1557 (T.T.A.B. 1991). Petitioner’s
`
`basis for challenging registration is based on an alleged likelihood of confusion between the
`
`Petitioner’s POLYGLASS mark and Registrant’s POLYGLASS mark. Both parties own
`
`registrations for their respective marks in connection with different goods, which evidences that
`
`the marks are distinguished enough to avoid marketplace confusion. Moreover, the fact that the
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`parties’ marks have coexisted for over 13 years weighs heavily against a likelihood of confusion.
`
`Registrant has more than enough grounds to submit an Answer that is not frivolous, which favors
`
`allowing Registrant to defend this action. Id. Moreover, setting aside the Notice of Default would
`
`serve the Board’s policy that cases should generally be decided on their merits. See, e.g., Thrifty
`
`Corp. v. Bomax Enterprises, 228 U.S.P.Q. 62, 63 (T.T.A.B. 1985).
`
`Accordingly, as Registrant had no notice of this cancellation proceeding until receiving the
`
`Notice of Default, and as Registrant has shown that good cause exists for the Board to act pursuant
`
`to Rule 55(c) of the Federal Rules of Civil Procedure, Registrant respectfully requests that the
`
`Board set aside the default and allow Registrant to answer the Petition. Registrant additionally
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`- 5 -
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`
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`requests that the Board establish a new schedule for the filing of Registrant’s Answer and for the
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`discovery and testimony periods in this proceeding.
`
`
`
`Dated: August 9, 2021
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`
`_/John L. Strand/_________________
`John L. Strand
`Christina M. Licursi
`Jessica Vosgerchian
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Federal Reserve Plaza
`Boston, MA 02210
`617-646-8000
`jlstrademarks@wolfgreenfield.com
`cxltrademarks@wolfgreenfield.com
`jevtrademarks@wolfgreenfield.com
`
`Attorneys for Registrant, Corrocoat Limited
`
`- 6 -
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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on August 9, 2021, I served a copy of the REGISTRANT’S
`RESPONSE TO SHOW CAUSE ORDER on Petitioner’s Counsel via electronic service:
`
`JESS M. COLLEN
`COLLEN IP
`80 S. HIGHLAND AVE
`OSSINING, NY 10562
`UNITED STATES
`jcollen@collenip.com, docket@collenip.com, mnesheiwat@collenip.com
`Phone: 914-941-5668
`
`
`
`
`/John L. Strand/___________
`
` John L. Strand
`
`
`
`Attorney Docket No. C1472.50000US00
`
`- 7 -
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`
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`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`DOCKET NO.: C1472.50000US00
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`Mark: POLYGLASS
`Reg. No. 6198001
`
`Cancellation No. 92076717
`
`
`
`
`
`Polyglass S.p.A.,
`
`Petitioner,
`
`v.
`
`Corrocoat Limited,
`
`Respondent.
`
`
`
`
`
`DECLARATION OF APRIL J. FITZPATRICK IN SUPPORT OF
`
`REGISTRANT’S RESPONSE TO SHOW CAUSE ORDER
`
`I, April J. Fitzpatrick, declare as follows:
`
`1.
`
`I am over the age of 18 and make this declaration based on my own personal
`
`knowledge. I am familiar with the facts set forth in this Declaration and could testify competently
`
`to the truth thereof if called as a witness.
`
`2.
`
`I am currently the Senior Manager of the Trademark Practice Group at Wolf,
`
`Greenfield & Sacks, P.C. (“Wolf Greenfield”) where I have worked since 2007.
`
`3.
`
`On February 15, 2020, United States Patent and Trademark Office (“USPTO”)
`
`implemented a mandatory electronic filing rule that required the inclusion of owner email
`
`addresses in trademark filings. On February 14, 2020, the USPTO announced that attorneys could
`
`create an email address specifically for this purpose.
`
`4.
`
`In light of the new rule, the Trademark Practice Group chose to create the
`
`TMClients@wolfgreenfield.com email account.
`
`9337672.1
`
`
`
`5.
`
`Wolf Greenfield decided that using the TMClients@wolfgreenfield.com email
`
`account was preferable to listing clients’ email addresses for several reasons: (a) having an email
`
`listed associated with Wolf Greenfield for the life of each registration furthered risk management
`
`objectives; (b) a Wolf Greenfield email address offered more permanence given that client contacts
`
`frequently change; (c) USPTO emails may be marked as spam if clients receive USPTO
`
`communications infrequently; (d) clients may have ignored USPTO emails assuming that Wolf
`
`Greenfield had already received the emails; and (e) to improve administrative efficiency at both
`
`the client and firm level.
`
`6.
`
`On February 17, 2020, I contacted Wolf Greenfield’s Information Technology
`
`(“IT”) department about creating the TMClients@wolfgreenfield.com email account.
`
`7.
`
`Once the account was created, I was informed that the account had been tested and
`
`was fully functional.
`
`8.
`
`Because the TMClients@wolfgreenfield.com email account was linked to new
`
`trademark filings only, we did not anticipate a high volume of emails (particularly external emails)
`
`to be sent to the account initially.
`
`9.
`
`In the course of a January 2021 audit, I asked the IT department to confirm whether
`
`the TMClients@wolfgreenfield.com account was functioning. A member of the IT department
`
`reassured me that the account was working. I now understand that the account appeared to be
`
`working because the test email was sent from an internal as opposed to external email.
`
`10.
`
`In June 2021, I began to suspect that the TMClients@wolfgreenfield.com account
`
`was not receiving all incoming messages. I then contacted the IT department to conduct a more
`
`thorough investigation to ensure the account was functioning properly.
`
`
`
`2
`
`
`
`11.
`
`A member of
`
`the
`
`IT department proceeded
`
`to send
`
`test emails
`
`to
`
`TMClients@wolfgreenfield.com from both internal and external email accounts. When the test
`
`email from the external email account did not reach the account inbox, we realized that there was
`
`a problem with the account. The issue was confirmed once the IT department compiled email logs
`
`for the account on June 8, 2021. I then learned that the correct permissions were not set up for the
`
`account,
`
`thereby
`
`preventing
`
`incoming
`
`external
`
`emails
`
`from
`
`reaching
`
`the
`
`TMClients@wolfgreenfield.com inbox.
`
`12.
`
`On June 9, 2021, I reviewed the recovered messages for the account. In doing so, I
`
`came across the email notice from the USPTO of the Notice of Default (issued on May 8, 2021)
`
`for the subject cancellation proceeding. I immediately contacted Respondent’s counsel, Christina
`
`M. Licursi (a Shareholder in the Trademark Practice Group and counsel in this proceeding) to
`
`bring the Notice of Default to her attention.
`
`13. We then took swift action to prevent a default judgment. I assisted John L. Strand
`
`(also a Shareholder in the Trademark Practice Group and counsel in this proceeding) and Ms.
`
`Licursi with filing a Preliminary Response to Show Cause Order and Request for Additional Time
`
`that same day (June 9, 2021).
`
`14.
`
`After conferring with the relevant individuals at Wolf Greenfield, I subsequently
`
`confirmed that no one at Wolf Greenfield received any email communications or physical mail
`
`from either the USPTO or Petitioner’s counsel about the subject cancellation proceeding aside
`
`from
`
`emails
`
`sent
`
`to
`
`TMClients@wolfgreenfield.com.
`
`The
`
`inbox
`
`for
`
`cxltrademarks@wolfgreenfield.com (used by Ms. Licursi for USPTO filings) shows no evidence
`
`of receiving the relevant papers.
`
`
`
`3
`
`
`
`15.
`
`Due to the mandatory electronic filing rule, all communications with the USPTO
`
`became
`
`electronic
`
`on
`
`February
`
`15,
`
`2020.
`
`Accordingly
`
`and
`
`because
`
`TMClients@wolfgreenfield.com was listed as Respondent’s email, Respondent would not have
`
`received either an electronic or hard copy of the relevant papers for the cancellation proceeding.
`
` I
`
` declare under penalty of perjury that the foregoing is true and correct.
`
`
`
`Executed on August 6, 2021
`
`
`
`
`
`
`
`_________________________
`April J. Fitzpatrick
`
`4
`
`
`
`
`
`
`
`
`
`EXHIBIT B
`EXHIBIT B
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`DOCKET NO.: C1472.S0000USOO
`
`Polyglass S.p.A.,
`
`Petitioner,
`
`v.
`
`Corrocoat Limited,
`
`Mark: POL YGLASS
`Reg. No. 6198001
`
`Cancellation No. 92076717
`
`Respondent. zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`DECLARATION OF KEVIN A. HENRY IN SUPPORT OF
`REGISTRANT'S RESPONSE TO SHOW CAUSE ORDER
`
`I, Kevin A. Henry, declare as follows:
`
`1.
`
`I am over the age of 18 and make this declaration based on my own personal
`
`knowledge. I am familiar with the facts set forth in this Declaration and could testify competently
`
`to the truth thereof if called as a witness.
`
`2.
`
`I am currently the Manager of Network Systems in the Informational Technology
`
`
`
`("IT") department at Wolf, Greenfield zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA& Sacks, P.C. ("Wolf Greenfield") where I have worked
`
`
`
`since 2001.
`
`3.
`
`On February 17,2020, April Fitzpatrick (Senior Manager of the Trademark Practice
`
`Group
`
`at Wolf Greenfield)
`
`contacted
`
`the
`
`IT
`
`department
`
`about
`
`creating
`
`a
`
`TMClients@wolfgreenfield.com
`
`email account.
`
`4.
`
`The IT department designed the TMClients@wolfgreenfield.com
`
`email account to
`
`serve as an email repository.
`
`9337680.1
`
`
`
`5.
`
`We intended for messages sent to TMClients@wolfgreenfield.com
`
`to go into a
`
`public folder within Microsoft Outlook such that multiple people would have access to the
`
`mailbox.
`
`6.
`
`The default settings for Wolf Greenfield emails associated with public folders do
`
`not permit external emails to be sent to those accounts.
`
`7.
`
`Inadvertently,
`
`the permissions
`
`for TMClients@wolfgreenfield.com
`
`were not
`
`changed from the default settings, thereby preventing incoming external emails from reaching the
`
`TMClients@wolfgreenfield.com
`
`inbox.
`
`8.
`
`When the set-up process for TMClients@wolfgreenfield.com
`
`was complete, a
`
`member of the IT department confirmed whether the email account was functioning by sending a
`
`test email.
`
`9.
`
`The
`
`test
`
`email was
`
`sent
`
`from
`
`an
`
`internal
`
`
`address
`
`ending
`
`in
`
`@wolfgreenfield.com, allowing the email toreachtheTMClients@wolfgreenfield.cominbox.As
`
`a result, the TMClients@wolfgreenfield.com
`
`account appeared to be working properly.
`
`10.
`
`In January 2021, April Fitzpatrick asked the IT department to confirm whether the
`
`TMClients@wolfgreenfield.com
`
`account was functioning. Again, a test email was sent from an
`
`internal email account, indicating that the TMClients(a)wolfgreenfield.com
`
`account was working
`
`properly.
`
`11.
`
`In June 2021, April Fitzpatrick asked the IT department a second time to confirm
`
`whether
`
`the TMClients@wolfgreenfield.com
`
`account was functioning. A member of the IT
`
`department proceeded
`
`to send test emails from both internal and external email accounts. We
`
`realized that the TMClients@wolfgreenfield.com
`
`account was not working properly when the test
`
`email from the external email account did not reach the account inbox. zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`2
`
`
`
`12.
`
`On June 8, 2021, we compiled email 10gsforTMClients@wolfgreenfield.com
`
`which confirmed
`
`that there was a problem with the account. We deduced
`
`that the correct
`
`permissions were not set up for the account.
`
`13.
`
`We immediately rectified the error and successfully recovered emails that were sent
`
`to the account within the past 90 days. Email logs from the past 180 days were recovered as well.
`
`14.
`
`The email notice from the United States Patent and Trademark Office ("USPTO")
`
`of the Notice of Default (issued on May 8, 2021) for the subject cancellation proceeding was
`
`among the recovered messages.
`
`15.
`
`The IT department's delay in discovering the error is in part because the majority
`
`of external messages sent to TMClients@wolfgreenfield.com were sent by automated USPTO
`
`email accounts. Any bounce back messages informing the sender that their email was not delivered
`
`would not have reached a person or monitored email account.
`
`16.
`
`Following this incident, we implemented procedures to prevent similar errors from
`
`occurring in the future.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`'t, 2021
`Executed on August zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`Kevin A. Henry
`
`3
`
`