Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87311869 MAXIMUM (Stylized and/or with Design, see http://uspto.report/TM/87311869/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Electric planes; power-driven wrenches; electric hammers; power-operated screwdrivers; ratcheting tool sets, namely, sets of power-operated ratchet wrenches; ratchet screwdrivers, namely, power-operated ratchet screwdrivers; portable power tools, namely, cordless drills, drills kits, corded drills, jigsaws, and circular saws; stationary bench type power tools, namely, drill press; power tool accessories, namely, drill bits, high speed drill bits, masonry drill bits, router bits, circular saw blades, jigsaw blades, screwdriver bits, wood drilling bits, and metal drilling bits; electric routers; cut off blades for power-operated hobby tools; chuck keys; keyless chucks; mechanics hand tools, namely, power-operated socket sets and wrenches; bench type power tools, namely, table saws; power tool accessories, namely, saw blades; carpenter's hand tools, namely, power-operated palm sanders; carpenter's hand tools, namely, power-operated angle grinders and power-operated routers
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA948777 registered 09/08/2016 with a renewal date of __________ and an expiration date of 09/08/2031 ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Electric planes; Carpenter's hand tools, namely, power-operated electric palm sanders; power-driven wrenches; carpenter's hand tools, namely, power-operated angle grinders and power-operated routers; electric hammers; hand-held electric planes; power-operated screwdrivers; hand-held power-driven wrenches; ratcheting tool sets, namely, sets of power-operated ratchet wrenches; hand-held electric hammers; ratchet screwdrivers, namely, power-operated ratchet screwdrivers; hand-held power-operated screwdrivers; portable power tools, namely, cordless drills, drills kits, corded drills, jigsaws, and circular saws; hand-held ratcheting tool sets, namely, sets of power-operated ratchet wrenches; stationary bench type power tools, namely, drill press; hand-held ratchet screwdrivers, namely, power-operated ratchet screwdrivers; power tool accessories, namely, drill bits, high speed drill bits, masonry drill bits, router bits, circular saw blades, jigsaw blades, screwdriver bits, wood drilling bits, and metal drilling bits; Mechanics hand tools, namely, power-operated impact wrenches; stationary bench type power tools, namely, drill press, bench type power tools, namely, table saws; portable power tools, namely, cordless drills, drills kits comprised primarily of cordless power tools, drills, drivers, Impact wrenches, batteries, impact sockets, corded drills, jigsaws, and circular saws; power tool accessories, namely, drill bits, high speed drill bits, masonry drill bits, router bits, circular saw blades, jigsaw blades, screwdriver drill bits, wood drilling bits, and metal drilling bits; electric routers; mechanics hand tools, namely, power-operated socket sets and wrenches; cut off blades for power-operated hobby tools; bench type power tools, namely, table saws; chuck keys; power tool accessories, namely, saw blades; keyless chucks; carpenter's hand tools, namely, power-operated palm sandersClass 007 for Carpenter's hand tools, namely, power-operated electric palm sanders; carpenter's hand tools, namely, power-operated angle grinders and power-operated routers; hand-held electric planes; hand-held power-driven wrenches; hand-held electric hammers; hand-held power-operated screwdrivers; hand-held ratcheting tool sets, namely, sets of power-operated ratchet wrenches; hand-held ratchet screwdrivers, namely, power-operated ratchet screwdrivers; Mechanics hand tools, namely, power-operated impact wrenches; stationary bench type power tools, namely, drill press, bench type power tools, namely, table saws; portable power tools, namely, cordless drills, drills kits comprised primarily of cordless power tools, drills, drivers, Impact wrenches, batteries, impact sockets, corded drills, jigsaws, and circular saws; power tool accessories, namely, drill bits, high speed drill bits, masonry drill bits, router bits, circular saw blades, jigsaw blades, screwdriver drill bits, wood drilling bits, and metal drilling bits; electric routers; cut off blades for power-operated hobby tools; chuck keys; keyless chucks;
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA948777 registered 09/08/2016 with a renewal date of __________ and an expiration date of 09/08/2031 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 008 for Hand tools, namely, handsaws, utility knives, planes; hand-operated tools, namely, chisels; hand-operated wrenches; hand-operated wrench holders; hand-operated hammers; hand tools, namely, screwdrivers; non-electric ratcheting tool sets, namely, sets of hand-operated ratchet wrenches; ratchet screwdrivers, namely, hand-operated ratchet screwdrivers; tap and die sets; mechanics hand tools, namely, hand-operated socket sets and wrenches; carpenter's hand tools namely, hacksaws; carpenter's hand tools namely, clamps; carpenter's hand tools namely, wire cutters; carpenter's hand tools namely, hand-operated palm sanders; carpenter's hand tools namely, hand-operated angle grinders
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA948777 registered 09/08/2016 with a renewal date of __________ and an expiration date of 09/08/2031 ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Hand tools, namely, handsaws, utility knives, planes; hand-operated tools, namely, chisels; hand-operated wrenches; hand-operated wrench holders; hand-operated hammers; hand tools, namely, screwdrivers; non-electric ratcheting tool sets, namely, sets of hand-operated ratchet wrenches; ratchet screwdrivers, namely, hand-operated ratchet screwdrivers; tap and die sets; tap and die sets being hand tools; mechanics hand tools, namely, hand-operated socket sets and wrenches; carpenter's hand tools namely, hacksaws; carpenter's hand tools namely, clamps; carpenter's hand tools namely, wire cutters; carpenter's hand tools namely, hand-operated palm sanders; carpenter's hand tools namely, hand-operated angle grinders; carpenter's hand tools namely, hand-operated angle grinders, not power-operatedClass 008 for Hand tools, namely, handsaws, utility knives, planes; hand-operated tools, namely, chisels; hand-operated wrenches; hand-operated wrench holders; hand-operated hammers; hand tools, namely, screwdrivers; non-electric ratcheting tool sets, namely, sets of hand-operated ratchet wrenches; ratchet screwdrivers, namely, hand-operated ratchet screwdrivers; tap and die sets being hand tools; mechanics hand tools, namely, hand-operated socket sets and wrenches; carpenter's hand tools namely, hacksaws; carpenter's hand tools namely, clamps; carpenter's hand tools namely, wire cutters; carpenter's hand tools namely, hand-operated palm sanders; carpenter's hand tools namely, hand-operated angle grinders, not power-operated
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA948777 registered 09/08/2016 with a renewal date of __________ and an expiration date of 09/08/2031 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Tape measures; carpenter's hand tools, namely, levels
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA948777 registered 09/08/2016 with a renewal date of __________ and an expiration date of 09/08/2031 ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Tape measures; Hand tools, namely, tape measures; carpenter's hand tools, namely, levelsClass 009 for Hand tools, namely, tape measures; carpenter's hand tools, namely, levels
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA948777 registered 09/08/2016 with a renewal date of __________ and an expiration date of 09/08/2031 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for Tool chests and cabinets not of metal; non-metal tool storage systems, namely, tool boxes and tool cabinets; metal tool cabinets
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA948777 registered 09/08/2016 with a renewal date of __________ and an expiration date of 09/08/2031 ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Tool chests and cabinets not of metal; Builder's hardware, namely, tool chests and cabinets not of metal; Non-metal tool storage systems, namely, tool boxes and tool cabinets; metal tool cabinets; tool storage systems, namely, metal tool cabinetsClass 020 for Builder's hardware, namely, tool chests and cabinets not of metal; Non-metal tool storage systems, namely, tool boxes and tool cabinets; tool storage systems, namely, metal tool cabinets
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA948777 registered 09/08/2016 with a renewal date of __________ and an expiration date of 09/08/2031 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Canadian Tire Corporation, Limited, a corporation of Canada, having an address of
      2180 Yonge Street
      Toronto Ontario, M4P2V8
      Canada

Proposed: Canadian Tire Corporation, Limited, Ontario Corporation legally organized under the laws of Canada, having an address of
      2180 Yonge Street
      Toronto Ontario, M4P2V8
      Canada

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
ANDREW D. PRICE
VENABLE LLP
P.O. BOX 34385
WASHINGTON
District of Columbia
US
20043-9998

Proposed:
Andrew D. Price of Venable LLP, having an address of
P.O. BOX 34385 WASHINGTON, District of Columbia 20043-9998
United States
trademarkdocket@venable.com;ADPrice@venable.com;STPhelan@Venable.com;PJWyles@Venable.com;CLFountain@venable.com
202.344.8156
202.344.8300
The docket/reference number is 412116 .



ADDITIONAL STATEMENTS
Miscellaneous Statement
With respect to Class 9, Canadian Trademark Reg. No. TMA948777 covers "hand tools, namely, ... tape measures." Applicant submits that it therefore does note need to include the extraneous word "carpenter's."


SIGNATURE(S)
Response Signature
Signature: /Sean T. Phelan/     Date: 11/15/2018
Signatory's Name: Sean T. Phean
Signatory's Position: Attorney of record, D.C. bar member

Signatory's Phone Number: 2023444459

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Andrew D. Price
   Venable LLP
   P.O. BOX 34385
   WASHINGTON, District of Columbia 20043-9998
        
Serial Number: 87311869
Internet Transmission Date: Thu Nov 15 22:40:18 EST 2018
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201811152240188
75569-87311869-610c27b33cf81b3c3f3e629c2
25456ab6791c9c16f2bf8c30e9dbf355855a1ac5
da-N/A-N/A-20181115221755813385