A Trademark Debacle


I’m with my family in Hawaii, theoretically on vacation. I say theoretically because I’ve been at my keyboard and on the phone far more than I promised my wife I would be. And the reason why is Charles Pelkey’s Explainer piece on the tussle going on between Specialized and Café Roubaix.

Because of the number of emails, phone calls and other messages I’ve received, as publisher, I suppose I have to weigh in a bit.

First off, Charles didn’t go rogue. I asked him to address the story. I fully endorse what he wrote and am willing to stand by it even if Specialized decides to pull their advertising. Neither Wayne Thompson, my ad sales director, nor I have heard anything from their marketing department (and believe me, they have our numbers), so I’ll take this, so far, as their endorsement of the freedom of the press. Let me add that if they were to pull their advertising, this would be a colossal hit to me personally. I’d have to take Mini-Shred out of preschool and the Deuce out of daycare. It wouldn’t end there, either. My wife would have me sleeping in my car until I made up the shortfall. I shit you not. This would turn my life upside down.

Charles isn’t insensitive to these issues, either. After hitting “Publish” on his piece he had the inconvenient experience of noticing the Specialized ad for, of all things, the Roubaix. He called me and offered to pull the piece. I wouldn’t allow it. I stand by him and I stand by the work we publish. If I don’t stand up for the things I believe, I don’t know how I’ll be able to tell my sons that integrity matters.

Specialized is a big, complicated company. I don’t like all of their business practices, but they have a remarkable history of making great bikes. I’ve bought three (including two for Mini-Shred) in the last two years.

I flat-out think the Canadian Patent and Trademark office fucked up when they issued Specialized a trademark on the name Roubaix. Note that the U.S. office didn’t grant that trademark; that should tell us all something. However, I’m troubled by a couple of things contained (or not) in the Calgary Herald piece. Richter doesn’t mention that he’s selling wheels and tires branded Café Roubaix. The story suggests that the cease and desist letter concerns the bike shop name. While the folks at Specialized won’t talk right now, I have to imagine they were far more concerned with this guy selling parts bearing that mark.

Consider for a moment if this guy was selling wheels branded “Firecrest.” I can imagine SRAM would go after him with some verve. Whether he’s a vet or not isn’t an issue. You could be a one-armed, Nobel-Peace-Prize recipient but if you steal my car, I’m calling the cops.

Café Roubaix owner Dan Richter told the paper that Specialized, “made it clear on no uncertain terms, they are going to sue.” I have to wonder why you would tell a newspaper someone is going to sue you if they haven’t actually sued you. Specialized is on lockdown and won’t talk; that suggests that even if they are playing the heavy they are at least talking and not actually suing. Could it be that Richter wanted to head off a possible suit by igniting a fire storm of public opinion? Seems a genius strategy, but will it really be that helpful when they get back to the negotiating table?

A subsequent opinion piece in the Herald by staff writer David Marsden faults Richter for not doing a trademark search on the word Roubaix, but really, who saw that coming?

This is going to be a PR black eye for Specialized that will resonate for years. If they’d handled this more quietly (and maybe they were trying; after all, they didn’t contact the Calgary Herald) then this wouldn’t have played so poorly for them. However, their screw-up, in my opinion, wasn’t sending the C&D letter to Richter, it was filing for the trademark on the word Roubaix.

It doesn’t matter that Specialized only applied for the Roubaix mark in cycling. Cycling is the only forum in which it has value. Roubaix is one of those words that carries the weight of tradition; it telegraphs more than endurance, it is the bar by which we measure a fortitude that is more of the mind than body. It’s a word that carries mythic weight, imperial meaning. It’s part of an international trust. No one, in my opinion, should have an exclusive right to use that word in a cycling context, and that, really, is the root of the outrage being directed at Specialized.

I know a great many fine people at Specialized. I like and respect Mike Sinyard. When I think of the CEOs in the bike biz who most embody the life of a dedicated cyclist, I think of him. I use him as an example not just of someone who I believe is authentically a cyclist, but how I’d like to be living my life in another 15 years. Yes, he works a lot, but he also rides a lot, and in cool places, to boot.

But his legal team is another matter. Seeking to trademark a term whose value you haven’t personally built is a kind of greed at best, a kind of theft at worst. Had Specialized called that bike the turnbuckle or the outrigger—names that have no meaning in cycling—and then Café Whatever came out with Outrigger wheels or Turnbuckle tires, they could have sued straight away and everyone would have wondered what the hell Dan Richter was thinking. Public sentiment wouldn’t have been an issue.

I don’t believe shunning Specialized for this breach of community etiquette serves anyone, though consumers are entitled to vote with their dollars. And big companies are entitled to vote with theirs as well, which means the big red S may yet pull their ad from us. Whether they do or not, I’ll continue to do my job as I see fit, and that means if they are willing to continue to send me their product, I’ll continue to review it conscientiously. I think it’s better for the community if we remain engaged. After all, who cares what your enemy thinks of you? It’s when a friend says, “Please, don’t drive drunk; that’s dumb, I’ll call you a cab,” that you know you’ve got someone looking out for you—and everyone else.

Now, with that off my chest, I’m going back to my vacation, which is already in progress.

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  1. Brian Brackemyre

    Thanks for your comments. Thanks for letting Charles publish his piece. Thanks for telling us the fear and financial issues that face you. Thanks for being honest in your take on all of this. You raised a couple of points I hadn’t considered. Lastly, thanks for being candid in your approach to the story and how you handled it. In the popular press today, I don’t read much of that.

  2. Chris


    Specialized doesn’t have the ‘Roubaix’ trademark in the US, because Fuji does (since 1992). Not because it wouldn’t be valid.

    1. Author

      Everyone: Thanks for your comments and support. Seriously.

      Chris (and others): I may have gone too subtle in my comment about the US trademark; the implication was that they couldn’t get it because someone (ASI) already had it. Further, I’ve just learned that ASI has it worldwide. The interesting thing about this is how Specialized never had the right to file for the trademark in Canada. I feel for Larry Koury, Specialized’s managing director for Canada who was quoted saying, “A simple trademark search would have prevented this.” This is advice Specialized’s legal team would have done well to heed.

  3. Michael Robertson

    As someone who has also worked closely with Specialized, I too have been impressed by Mike’s genuine love of cycling and the way he bootstrapped the company from it’s humble beginnings. That one-man mythology is celebrated in the lobby of Specialized’s Morgan Hill HQ, and it’s always a source of interest for cyclists of all stripes and calibers visiting the mother ship. I know because I’ve photographed the reactions countless times.

    I’m hopeful that our friends at Specialized will connect the dots between their own history and a tiny bike shop celebrating the same classic race, a race that has inspired a truly great bicycle and countless other products in the marketplace that don’t detract one iota from the Specialized brand. In fact, anything that reinforces the core roubaix story elevates all products associated with the Hell of the North.

  4. Mike S.

    You’re aware that Specialized doesn’t have the mark in the US only because Fuji predates them, and that they license it from Fuji?

    We may not like the fact that they *can* trademark a concept the fans hold dear, but blame the government system that enables it, not the company who does it. I’m not sure if crystal wearing hippies feel the same way about a car named Sedona, but you can bet your ass it’s tm’ed and that “Sedona car sales” would get the same treatment.

    All that said, I’m rooting for the little guy on this one.

  5. e-RICHIE

    >>> After hitting “Publish” on his piece he had the inconvenient experience of noticing the Specialized ad for, of all things, the Roubaix.

    Where does this show?
    Does Specialized have a banner here atmo?

  6. mythbuster

    There is one thing that you did not mention.

    Part of the reason why this particular legal threat caught (social) fire is that it evidently caused the underlying resentment for the sue happy tactics that Specialized had been employing in the past.

    The notable legal threats and court cases include Stumptown, Epic, Volagi, and now presumably Roubaix, and former dealers in the past few years alone.

    Specialized is the only company which has this type of public image and profile in the bicycle industry. This is what is fanning the flames and which turned the public opinion into a veritable lynch mob even before any real evidence has been supplied.

  7. jim

    I like Specialized products, have friends who are dealers. Love my new Specialized shoes.

    I don’t like what they did here though, it really pushes the limit of TM law (cafe Roubaix wheels or not) and I’m waiting to see what they do.

    But that’s beside the point. It’s hard to go against the grain where money is on the line. I respect your integrity here, and respect Specialized for not pulling their ads so far. Grown ups can disagree and criticize without having to destroy their relationships.

  8. Joe Bartoe

    Padraig-the owner did indicate in at least one article that he offered to drop the name from his wheels if he could keep it for the shop, but this was rejected by Specialized. It does appear from the outside that Specialized is pulling a power play. Given their history of doing this, it looks like many people are growing tired of these tactics. Unfortunately, for many, the only way to express their displeasure is to vote with their pocketbook.


    Very simply, this whole deal could have been handled A LOT more diplomatically than with the threat of a lawsuit. What happened to the ‘creativity’ that Specialized touts … like offering to sell the TM license for a $1 (and attach whatever constraints they wanted at that time). I don’t think we’re getting the full story – or else Specialized is far more clueless to PR standards than the average layman that rides a bike. I guess that bothers me more than anything that a company couldn’t see this coming … just doesn’t reflect well on their level of ‘smartness’.

  10. Matt

    It never ceases to amaze me the number of cyclists that come out of the woodwork at these types of stories. What many posters fail to realized (not too many on RKP posting here as of yet) is that this is a *business* decision, and that your cycling heartstrings have nothing to do with it.

    Specialized, just like any other company doing business in Canada has the right and obligation to defend their patent.

    If you feel that the word “Roubaix” should not have been patented in CAN, write to your governmental authorities and request that it be stricken from public records. While we’re there, also write to your US representatives requesting that Advance Sports also lose their trademark in the USA.

    Folks, this is business. Cafe Roubaix is creating parts branded with a competitors mark. If I were Specialized, I’d aggressively pursue them too. This happens in ALL types of business, not just consumer sporting goods.

  11. Josh

    Doesn’t Specialized “lease” the name Roubaix from Advanced Composites in the US? Which is why they don’t go storming the castle at Fuji? the fact that they were approved a copyright for a name of an ancient city in France is insane, and you’re right, the Canadian patent office should have nipped that in the bud when it came across their desks.

    I’ve never been a fan of the big S as I’ve never seen their interest in truly supporting the reasons why we all ride…the pursuit of that ear to ear grin reminiscent of the days when we all did skids on our bigwheels.

    I would love to see the look on Mike Sinyard’s face today as he reads through the thousands of posts by consumers ready to speak with their wallets. I hope he looks at old photos of him shreading Repack with Tom Ritchey, Joe Breeze, Charlie Cuningham, Gary Fisher, and others and he remembers his, and the brand’s roots.

    I think it is safe to say that S-Works sales don’t keep that brand alive, everyone knows that racers don’t spend money if they can avoid it! It’s the hundreds of thousands of “bread and butter” bikes that people ride daily for fun, transportation, and exercise that pay the bills. These are kids, dreamers, enthusiasts, MAMILs, and average Joe’s. These consumers listen to us bike nerds who are likely following this like TMZ covers Lindsay Lohan. And when our friends ask us what to buy for their next bike, many of us may say “Not a Specialized” and that is going to be a problem.

    I don’t fault Specialized for bullishly standing their ground as they deserve the acclaim and success that they have as they make great products (and they spend millions on ensuring their product is great). But to refuse to see any sort of “big picture” that includes competition is shortsighted and just plain ignorant. It is also evidence that the roots of why Specialized is who there today has been forgotten, and this is a bigger problem.

    Now if only they could spend millions on advocacy also, we’d see a lot more of the bread and butter sales and that is good for everyone. If Specialized led the way in this area, and not in being a royal douche, they would be at the top for reasons NO ONE would fault.


  12. Jeff Spencer

    I like many Specialized products. I am in the market for a new FS XC 29er, and one of their products was on my list. If they don’t back pedal and back off, I can live happily ever after without any and all of their products.

    Same kind of thing happened to a grammar school friend of mine in the audio cable business. Monster Cable tried to put a cease and desist order on his company Blue Jeans Cable. What the Monster lawyers didn’t know was that the owner, Kurt Denke was a lawyer in a previous life. In this real life David v. Golliath story, Kurt became something of a folk hero in the audiophile home theater world. His response is long and can be technical but it is brilliant and very funny — a worthwhile read. http://www.audioholics.com/news/blue-jeans-strikes-back

  13. Rod

    Thanks for your honesty, Padraig.

    @Matt – it never ceases to amaze me that people will resort to heavy-handed tactics simply because they can without ever considering if that ability is justified. Just because the US has an atomic arsenal it means they should use it in every conflict.

    Read Pelkey’s piece again regarding the US IP office regarding “Trademark Bullying”, where the specific entity that grants the naming rights tries to dissuade the lawful owners from litigating those trademarks beyond reasonable use. “Cafe Roubaix” wheels from a small boutique shop in AB threatens the big S… how?

    You reasonably call this a business decision. Fair enough; business activities should be objectively measured by their performance in the market. Do you honestly believe that all this negative press has been a sound business decision? I can guarantee you that the PR and marketing department at Specialized were tearing away their hair during the weekend while Legal was probably playing a nice round of golf. Even if Cafe Roubaix renames itself “Cafe formerly named after a cobblestone race in France” this is hardly anything more than a pyrrhic victory for Specialized.

    For an example of amicable trademark infringement resolution, see Jack Daniels. Or Warner Vs. Radiohead fan blogs. Or Debora Wilcox’s (from the American Bar Association) advice on using a lighter approach on trademark infractions.

  14. joshua

    This is probably the best opinion expressed on this matter. I certainly appreciate the scope with which you addressed your response. Keep up the good work.

  15. Steve

    It appears that Specialized has overstepped their bounds according to the lawyers at ASI. While some may say Mike Sinyard is a nice guy, and it’s his legal team that are over zealous, I would just say that he is the one who could have reeled this in and he has not said a word. Further, he has supported the frivolous legal actions against many small entities going back decades (He threatened legal action against Georgina Terry in the 90s… when she was making a handful of women’s frames a year. Funny how that brand is now part of ASI).

    The statement by ASI in the BRAIN article below indicates that they are fine letting Cafe Roubaix keep the name and believe that there is no confusion created by their use of Roubaix. So their legal team sees no need to be malicious. As a corporate leader, Mike Sinyard sure doesn’t look like a role model to me – he appears to be a bully.


  16. Adam

    I can just imagine the devastation this must be causing Specialized in the Canadian market, all those poor consumers somehow getting the notion they could buy a ‘Specialized Roubaix’ complete bicycle from ‘Cafe Roubaix bicycle studio’.

    Actually, I’d better cancel my trip to Cochrane then…

  17. John Kopp

    So it looks like Cafe Roubaix will be licensed to Use the name, and maybe Specialized will use the trademark. Sounds like poetic justice to me, and ASI scores some good publicity.

    My first impression after seeing the first news report was why harras a veteran with PTSD. Does Mr. Sin yard have a death wish? I apologize for the reference to PTSD, but it was mentIoned in the article (Cycling News). I wish Dan Richter a successful enterprise and a fulfilling career. Best of luck to you, sir.

  18. Alex TC

    All this myth built around Mike Sinyard has a very precise purpose. He sure has his merits but there’s no mistaking it, no free lunch: to get where Specialized is you must be aggressive and cross some lines. It’s not like they “lost their soul along the way” either. Specialized was created from a concept and a name… uh… “borrowed” from Sinyard’s friend Tom Ritchey. I’m sure the older ones among us will remember how it all unfolded back then and how Tom felt about it… All very Monsanto, very Pirates of Silicon Valley indeed. So looking at the big picture, this kind of “business” ethic seems to me deeply ingrained into Specialized’s DNA. And makes me wonder how many Café Roubaix, Volagis, Epics, etc. we never got to hear about during this time…

  19. Bob Bleck

    Specialized’s behavior in this episode reminds me of the kid on the playground who licks an object and claims ” mine”! The only way to proceed is with a clever apology. Here is my idea. Photo of the fabled cobbles, “Sometimes you conquer Roubaix, sometimes it conquers you”. Get back up and move on. I’m sure they would love to show somebody else’s broken steerer.

    On a side note, I was riding with the guys from a local club, Velo Club Roubaix last year when multiple riders were complaining about the road condition. I proclaimed to all “If I hear one more crack about rough roads I’m going to rip that Roubaix right off your jersey”.

  20. jorgensen

    Bicycle Retailer has run a story where ASI, the holder of the trademark and one who allows Specialized to use it in the USA, has a different take than Specialized’s legal team. As mentioned, details that get left out of articles may have big implications. It will most probably get sorted out, with a rename of the bike shop’s wheel goods. A lesson though on the wielding of blunt power and the implications of using it in the digital age.

    Way back I worked for a car company who for a time had to answer the phone’s by saying “luxury division” while the legal hammer of Lexis/Nexis was being swung. Sometimes things get quite curious.

  21. Souleur

    Thanks padraig for a very reasoned opinion

    Fuji also has stated with ASI that there is no ‘trademark’ on Roubaix

    I suppose I’ll just leave this on the table and see where it goes, I just hope that Specialized rethinks, reconsiders and does the right thing here. Perhaps Dan R too, may well do the same. When letters get written like this, its like drinking something toxic and things become hateful quickly.

    Maybe, just maybe, there is room for something right to be done, like specialized regrets the action, Dan R also comes to the table, and maybe…just maybe he would even sell a specialized, maybe they partner, come together and he keeps what he has built….and specialized likewise.

    there is alot to lose on both parts

    and asswhacked lawyers actually don’t necessarily need to be a part of this, think about it

    likelihood of this taking place-0.00001% chance

  22. Mark

    Thanks for bringing this to us. On another note, if you are vacationing in Honalulu ride up Mt Tantulus, it’s amazing. I did it 21 times last summer, it will take your mind off this issue for a while. Aloha.

  23. Souleur

    Dan R just posted he had a ‘very good’ conversation with Mike Sinyard

    saying: it was all going to work out and be ok

    sounds promising for all involved

  24. Scott

    Thank you Padraig for respecting the traditional journalistic ethic that separates editorial from advertising. Trade magazines in many industries publish press releases as “news” in exchange for the interested party purchasing advertising space. This practice compromises the integrity of the publication and the publishing business in general. Where bicycling is concerned, this practice results in nearly every product getting a ringing endorsement.

    By publishing the Explainer’s opinion piece, you have established your credibility and that of every future product review you write. It is comforting to know that RKP’s endorsement cannot be bought.

    PS: If Specialized pulled advertising from every online publication where their credibility is being shredded by consumers, their advertising budget would be zero (that’s $0.06 in Canadian dollars, if you factor in the exchange rate).

  25. Anthony F

    You certainly know which side your bread is buttered.

    The outrage at Specialized isn’t as much about Specialized trying to usurp the name Roubaix, it’s about them bullying the little guy.

    If you asked around the bicycle industry, you’d learn that Specialized is the most hated and considered the douchiest company in the entire bike industry.

    Sinyard isn’t the nice guy you say he is and most of the inside people there are weird. It’s like scientology over there.

    Pelky wrote an awesome article. Don’t apologize for it.

  26. slowride(r)

    Thanks Padraig. I know this is a far more complicated issue than most of us realize, and you brought up a bunch of good points. My problem with Specialized is their history of repeatedly doing this. I have a used Specialized I use for a trainer bike and a few accessories. I’m not getting rid of any of them, but I’m watching this for resolution before making any future purchasing decisions

  27. AG

    Very fair analysis. I certainly hope that Specialized doesn’t pull their ads and can respect the need for a balance of opinions in public forums. It’s not clear to me if Mr. Richter offered to maybe just rename his wheels and other products that could have the appearance of being branded and labeled as a Specialized product before going to the press; and, just the same, Specialized might have even received some public kudos if they issued a qualified C/D letter asking Mr. Richter to stop selling product with the Roubaix name, explaining why, and not making an issue about the shop name (which is a great name BTW). Perhaps there could have been some middle ground. Perhaps not, but I hope that Specialized will allow the conversations to happen without pulling ads and support from the very sites that cyclists are frequently visiting.

  28. Pingback: Lessons from Roubaixgate, or why Cafe-Roubaix won | Santos Sez

  29. Larry T.

    Blaming the company legal team instead of the top-dog is lame. If those guys don’t reflect the boss’ philosophy, who the hell are they serving? This isn’t a publicly-traded company. And why do folks think it’s OK for the guy to name his shop Cafe Roubaix but not to put his shop name on products he sells? It seems that Sinyard’s outfit does NOT own the rights to use ROUBAIX on anything, they were granted them by ASI. Trademarking the name in Canada should be invalid as ASI should be the ones doing that as they are the owners. This is the same outfit who created Full Force to make an end-run around their retailer agreements back-in-the-day and also employed “Mr. Mail Order” Alan Goldsmith of Bikecology and Supergo fame. No friend of the IBD here folks. The big-S products may well be just wonderful, but just as the stuff sold at Wal-Mart may be equally wonderful, it still comes through an operation that bullies competitors as part of their business model. I prefer to buy products from more ethical folks if possible, meaning big-S products remain off-limits, just as I refuse to shop at Wal-Mart.

  30. Rob Templin

    Just wondering if anyone else sees the ironic connection/similarity of S-Works and L.A. (as it relates to being a bully and ‘owning’ the market?). You can have the best product in the world but you never, ever, give your competion ammunition and motivation to want to beat you.

  31. Ron

    I think with most things legal it is the nuances that are the key to the issue. In the Herald article they showed a photo of the wheels with the logo. He also sells logoed clothing by the look of it. Though this may or may not be an infringement is the key aspect of trademark law in my meagre understanding of the law, if a person would reasonably be confused. Would the phrase Cafe Roubaix be similar enough to the simple word Roubaix to cause a potential customer to think it was a Specialized product? That is the case that the lawyers were up to. Still just as Specialized licensed the name from Fuji they could have sublicensed to the bike shop based upon the likelihood of confusion. They could have limited the license to current stock or that already committed to so that after a short period Don would no longer be able to sell that name? All sorts of options that could have been dealt with. Since Fuji has already stepped into this, the case will drop, since they state Specialized was acting outside their license agreement. Fascinating stuff but all the facts are meaningless, the public has decided this case.

  32. jasper gates

    This story reminds me of a similar case a few years ago involving a cafe in a remote, mostly First Nations, village on the Queen Charlotte Islands. The cafe was named Haidabucks (referring to the Haida First Nation), and it featured a green and white symbol that looked suspiciously like that of another west coast coffee maker.

    Starbucks went after the cafe owner, eventually forcing him to change the name. The local chief argued, somewhat cheekily, that “buck” was simply a term for a young native man. After conceding that he couldn’t win the fight against Starbucks, the owner quipped, “At least they let us keep the ‘Haida’ part.”

  33. Joe

    Padraig, I agree with a lot of your points, but think you’re missing a core component of the backlash, at least from where I sit.

    This is just the long line in behavior like this from the Big S. Whether it’s Epic, or Stumptown and now Roubaix, the company has aggressively gone after what seem to be small guys that aren’t a direct threat to their trademarks. Now, part of this of course is the nature of IP law in this country — see Ford’s pursuit of Ferrari over the F150 race car… — but part of it increasingly looks like the big guy with thin skin hiding behind trademark bullying. There’s also ways to handle these kinds of issues (see the Jack Daniels letter that’s been floating around) and you get the sense they really took the jerkiest route possible.

    I think a lot of folks have just had enough with them.

    FWIW on my end, my first road bike was a Specialized Allez. Still hanging in my garage waiting to get rebuilt as it has regularly over the last two decades. It’s my favorite bike by far and what got me seriously into the sport. It changed my life, and I don’t see that as hyperbole. So Sinyard and Co have had a dramatic impact on my life. Now, I’m the kind of buyer who is in the target market for their high end bikes. But given everything, I’m highly, highly unlikely to buy another Specialized again.


    I find it an interesting comparison but I think a lot of us wouldn’t have been as pissed at LA if he hadn’t been such a bully (among other personality issues!), and had run his life with a different approach to others that conflicted with his own interests. I think what ticks so many off at Specialized is not so much they tried to “protect” their biz interests but HOW they went about the process. And as many others have pointed out – and doesn’t need repeating here – is that a ‘smart’ company would have opted for a less flawed option than heavy-handed legal action (ESPECIALLY after earlier bungles). Makes me (and others) wonder whether we want to buy a product from a ‘dumb’ company that spends huge amounts of money to ‘defend’ their identity (and guess WHO pays for this mess – the consumer, like myself, that formerly purchased their products).

  35. Khal Spencer

    Thanks for standing by Pelkey. Specialized didn’t have to handle this so badly. If their engineering department was as inept as its legal team, we would have never heard of the Big Red S.

    Let’s move on. I’m not about to throw my Stumpjumper off a cliff (unless its accidental, and with me on it). Great bike.

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