Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA584121
`ESTTA Tracking number:
`01/28/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`Edge Games, Inc.
`01/29/2014
`
`530 South Lake Avenue 171
`Pasadena, CA 91101
`UNITED STATES
`
`Correspondence
`information
`
`Edge Games, Inc.
`530 South Lake Avenue 171
`Pasadena, CA 91101
`UNITED STATES
`uspto@edgegames.com, tim@edgegames.com Phone:6264494334
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`85153981
`01/28/2014
`
`NONE
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`10/01/2013
`01/29/2014
`
`NONE
`
`Future Publishing Limited
`Beauford Court, 30 Monmouth Street, Bath
`Avon, GBX BA12BW
`GBX
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Downloadable electronic publications inthe
`nature of magazines relating to computer game software and computer hardware; downloadable
`publications in electronically readable form, namely, magazines relating to computer game software
`and computer hardware; downloadable electronic publications in the nature of magazines relating to
`computer game software andcomputer hardware
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: computerised electronic on-line retail store
`services featuring computer games software and computer hardware
`Class 038. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Providing on-line chat rooms, electronic
`bulletin boards and discussion groups for transmission of messages among computer users
`concerning computer game software and computer hardware
`Class 041. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Providing on-line non-downloadable
`electronic publications in the nature of magazines in the field of on-computer, on-console and online
`
`

`
`gaming, computer gamessoftware, computer hardware and relatedaccessories; publication of
`magazines, books and journals on-line; publication of magazines; publication of printed matter
`relating to computer games software and computer hardware; on-line journals,namely, blogs
`featuring commentary, news and information relating to computer game software and computer
`hardware; providing information on-line relating to computer game software
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`85153958
`01/28/2014
`
`NONE
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`10/01/2013
`
`NONE
`
`Future Publishing Limited
`Beauford Court, 30 Monmouth Street, Bath
`Avon, GBX BA12BW
`GBX
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Downloadable electronic publications inthe
`nature of magazines relating to computer game software and computer hardware; downloadable
`publications in electronically readable form, namely, magazines relating to computer game software
`and computer hardware; downloadable electronic publications in the nature of magazines relating to
`computer game software andcomputer hardware
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: computerised electronic on-line retail store
`services featuring computer games software and computer hardware
`Class 038. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Providing on-line chat rooms, electronic
`bulletin boards and discussion groups for transmission of messages among computer users
`concerning computer game software and computer hardware
`Class 041. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Providing on-line non-downloadable
`electronic publications in the nature of magazines in the field of on-computer, on-console and online
`gaming, computer gamessoftware, computer hardware and relatedaccessories; publication of
`magazines, books and journals on-line; publication of magazines; publication of printed matter
`relating to computer games software and computer hardware; on-line journals,namely, blogs
`featuring commentary, news and information relating to computer game software and computer
`hardware; providing information on-line relating to computer game software
`
`Grounds for Opposition
`
`Deceptiveness
`False suggestion of a connection
`Priority and likelihood of confusion
`Dilution
`Torres v. Cantine Torresella S.r.l.Fraud
`Other
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Under a contract between the parties
`(predecessors) dated 2004 Applicant has been
`Opposer's (predecessor's) licensee for the mark
`and the classes of goods and services in
`question, with all goodwill arising from the all
`relevant use by Applicant vesting in Opposer
`(predecessor) not in Applicant. Applicant based
`
`

`
`its applications on two UK applications/
`registrations that were lawfully assigned to
`Opposer (predecessor) on or about July 5, 2010
`and thus Applicant falsely alleges ownership of
`said UK marks, and has not right to base the
`instant applications on the referenced UK marks
`as if they were rightfully owned by Applicant.
`Opposer has extensive common law rights in the
`mark, for the goods and services in question,
`substantially predating Applicant's first use;
`moreover, per the 2004 contract, Applicant
`agreed to trade so that it would never be
`perceived by the consuming public to use the
`mark in classes other than class 16 for printed
`magazines otherwise than as clearly Opposer's
`(predecessor's) licensee, with goodwill accruing
`to Opposer (predecessor). Other extensive
`grounds also arise from the complex relationship
`based on the 1996 settlement and 2004 revised
`settlement, both in Opposer's (predecessor's)
`favor and against Applicant which settlements/
`agreements called for Applicant not to apply for
`the mark in question in any territory worldwide for
`the goods in question here.
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3381826
`
`02/12/2008
`
`Word Mark
`Design Mark
`
`GAMER'S EDGE
`
`Application Date
`
`02/05/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1986/06/01 First Use In Commerce: 1986/06/01
`Computers; computer hardware; computer peripherals; computer games
`software; plug-on computer interface boards; computer accessories, namely,
`keyboards, mice, player-operated electronic game controllers for computers and
`electronic video game machines, computer memories, headphones, augmented
`reality headsets for use with computers and video game machines, virtual reality
`headsets for use with computers and video game machines, storagedisc cases,
`video display and capture cards, sound cards, audio speakers, web-cameras,
`carrying cases and bags, all forcarrying portable computers or
`computeraccessories; video game software; videogame consoles, namely, video
`game machines for use with televisions and video monitors; video game
`
`

`
`accessories, namely,joysticks made for video games, video game interactive
`control floor pads and mats, and video game interactive remote control units;
`video game peripherals, namely, external hard drives for computersand video
`game machines and other storage devices in the nature of plug-in memory
`devices that attach to the USB port which are commonly known as 'flash drives"
`or "thumb drives" and video adapters in the nature of adapters which convert the
`video output of the computer or videogame machine to the video input of a
`monitor or television; set top boxes, cable modems, dsl modems
`
`U.S. Registration
`No.
`Registration Date
`
`3105816
`
`06/20/2006
`
`Application Date
`
`01/29/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`EDGE
`
`NONE
`
`Class 016. First use: First Use: 1985/01/06 First Use In Commerce: 1985/01/06
`printed matter, namely, comic books, comic book reference guide books, books
`featuring stories in illustrated forms, graphic novels, comic strips, picture
`postcards, comic postcards, printed postcards, novelty stickers, decals, bumper
`stickers, note cards, note paper, stationeryfolders, computer magazines, video
`gamemagazines, magazines and posters about interactive entertainment;
`writing instruments, namely, pencils, ball point pens, ink pens
`
`U.S. Registration
`No.
`Registration Date
`
`3585463
`
`03/10/2009
`
`Word Mark
`Design Mark
`
`EDGEGAMERS
`
`Application Date
`
`12/14/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2006/07/01 First Use In Commerce: 2006/07/01
`Providing organizations for online gameadministrators, namely, entertainment
`services in the nature of an online computer gaming club; providing public
`forumsfor online game administrators, namely,entertainment services in the
`nature ofan online computer gaming club
`
`U.S. Registration
`No.
`Registration Date
`
`3559342
`
`01/13/2009
`
`Application Date
`
`03/22/1996
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`THE EDGE
`
`NONE
`
`Class 009. First use: First Use: 1984/06/04 First Use In Commerce: 1984/06/04
`Video game peripherals, namely, video game controllers; computers; computer
`accessories, namely, keyboards, mice; game controllers for computer games;
`memory cards; headphones; augmented reality headsets for use with
`computers; virtual reality headsets for use with computers; storage disc cases,
`namely, compact disc cases and DVD cases; video display and capture cards;
`audio cards; audio speakers; web-cameras; backpacks, carrying casesand bags
`all designed for carrying portable computers, computer accessories, and
`computer peripherals; video game machines for use with televisions and
`accessories therefore, namely, video game controllers; video game software;
`computer game software, computer game software for use in location based
`entertainment centers
`Class 016. First use: First Use: 1993/04/14 First Use In Commerce: 1993/04/14
`Magazines, namely, magazines in the fields of business, entertainment, popular
`culture and education; Magazines, namely, in the fields of computer games,
`videogames, board games, hand-held games, interactive media, television,
`music, video, movie, clothing, fashion, leisure activities and lifestyle; computer
`and video game magazines, comic books, posters, note paper, note cards,
`bumper stickers,stickers, pencils, ball point pens,ink pens, stationery; folders
`Class 021. First use: First Use: 1995/08/12 First Use In Commerce: 1995/08/12
`Mugs and cups
`Class 025. First use: First Use: 1995/08/12 First Use In Commerce: 1995/08/12
`T-shirts, sweatshirts, jackets
`Class 028. First use: First Use: 1995/08/12 First Use In Commerce: 1995/08/12
`Toys and playthings, namely, battery operated action toys, bendable toys,
`collectable toy figures, electronic action toys, electronically operated toy
`vehicles, fantasy character toys, mechanical action toys, modeled plastic toy
`figurines, model toy figures, plastic character toys, plush toys, positionable toy
`figures, toy action figures, toy boxes, toy figures; hand held units for playing
`gamesand accessories therefore, namely, carrying cases designed for hand-
`held units for playing electronic games; stand alone video game machines and
`accessories therefore, namely, carrying cases and covers designed for stand-
`alone video game machines
`
`U.S. Registration
`No.
`Registration Date
`
`2219837
`
`01/26/1999
`
`Application Date
`
`08/03/1994
`
`Foreign Priority
`Date
`
`02/11/1994
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`EDGE
`
`NONE
`
`Class 016. First use: First Use: 1984/05/00 First Use In Commerce: 1984/05/00
`printed matter and publications, namely, magazines, newspapers, journals, and
`columns and sections within such magazines, newspapers, and journals, and
`pamphlets and booklets, all in the fields of business, entertainment, and
`education, relating to toys, games, board games, television, interactive music,
`and video; stationery; posters; exterior packaging for software, namely,
`cardboard cartons; printed paperboard inserts for plastic packaging of software;
`paper bags; plasticbubble packs for packaging; envelopes; and paper pouches
`
`

`
`for packaging
`
`U.S. Application
`No.
`Registration Date
`
`85891791
`
`NONE
`
`Word Mark
`Design Mark
`
`EDGE PC
`
`Application Date
`
`04/01/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1998/01/07 First Use In Commerce: 1998/01/07
`Computer hardware; Computer hardware and peripheral devices; Computers
`and computer hardware; Desktop computers; Entertainment system comprising
`a computer, multiple image display screen, multiple input devices and a printer;
`Handheld computers; Handheld personal computers; Laptop computers;
`Netbook computers; Notebook computers; Personal computers; Personal digital
`assistant computers; Tablet computer
`
`U.S. Application
`No.
`Registration Date
`
`85891810
`
`NONE
`
`Word Mark
`Design Mark
`
`EDGE GAMING PC
`
`Application Date
`
`04/01/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1998/01/07 First Use In Commerce: 1998/01/07
`Computer hardware; Computer hardware and computer peripherals; Computers
`and computer hardware; Desktop computers; Entertainment system comprising
`a computer, multiple image display screen, multiple input devices and a printer;
`Handheld computers; Handheld personal computers; Laptop computers;
`Netbook computers; Notebook computers; Personal computers; Personal digital
`assistant computers; Tablet computer
`
`

`
`U.S. Application
`No.
`Registration Date
`
`85147499
`
`NONE
`
`Word Mark
`Design Mark
`
`EDGE GAMES
`
`Application Date
`
`10/07/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`Related
`Proceedings
`
`Attachments
`
`NONE
`
`Class 009. First use: First Use: 2003/12/31 First Use In Commerce: 2003/12/31
`Computer game programs; Computer game software; Computer game software
`downloadable from a global computer network; Computer game software for use
`on mobile and cellular phones
`
`There are current ongoing live proceedings in the United Kingdom Intellectual
`Property Office between Applicant and Opposer's predecessor in rights over the
`ownership of the underlying UK marks upon which Applicant's two applications
`are based. Under those proceedings the UK applications/registrations were
`assigned from Applicant to Opposer's predecessor in rights.
`
`78807446#TMSN.jpeg( bytes )
`77352656#TMSN.jpeg( bytes )
`85891791#TMSN.jpeg( bytes )
`85891810#TMSN.jpeg( bytes )
`85147499#TMSN.jpeg( bytes )
`OppostionTo8515358and85153981Applications27Jan2014.pdf(45085 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Tim Langdell/
`Edge Games, Inc.
`01/28/2014
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`EDGE GAMES, INC.
`.
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`FUTURE PUBLISHING LIMITED
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`Applicant.
`__________________________________________)
`
`
`
`
`
`
`
`
`
`
`
`Applications Serial Nos.
`85/153,958 and 85/153,981
`
`Mark: EDGE
`
`
`Opposition No. __________
`
`
`
`NOTICE OF OPPOSITION
`
`Opposers Edge Games, Inc. ("Opposer"), for its Notice of Opposition against
`
`Application Serial Nos. 85/153,958 and 85/153,981 for the mark EDGE ("Applicant's
`
`Marks") filed by FUTURE PUBLISHING LIMITED. ("Applicant"), believes that it will
`
`be damaged by, and thus opposes, registration of the marks that are the subject matter of
`
`Applications Serial Nos. 85/153,958 and 85/153,981 (“the Applications"). As grounds for
`
`opposition, Opposer alleges as follows:
`
`1.
`
`Opposer is a California corporation with a principal business address of
`
`530 South Lake Avenue, Suite 171, Pasadena, California 91101.
`
`2.
`
`Upon information and belief, Applicant is a British corporation with a
`
`principal place of business at Beauford Court, 30 Monmouth Street, Bath
`
`Avon UNITED KINGDOM BA12BW
`
`3.
`
`Application Serial Nos. 85/153,958 and 85/153,981 were published in the
`
`PTO's Official Gazette on October 1, 2013.
`
`GROUNDS FOR OPPOSITION
`
`10. Opposer (through their own commercial activity and that of its
`
`predecessors in rights and respective licensees) have made continuous use
`
`1
`
`
`
`
`
`
`
`

`
`in United States commerce of the mark “EDGE” (and of the mark “THE
`
`EDGE” and a range of EDGE formative marks) for computer games and
`
`related goods and services since first use in U.S. commerce in or about
`
`June 1984. Opposer thus has substantial goodwill in the mark “EDGE” for
`
`computer games and related goods in the U.S. market established over
`
`several decades of continuous trading both by itself and via its
`
`predecessors in rights, licensees and other authorized users of its mark(s).
`
`11. Opposer has adopted the trademarks “EDGE” and "THE EDGE"
`
`("Opposers’ Marks") along with a family of EDGE marks (“CUTTING
`
`EDGE,” “GAMERS EDGE,” “EDGEGAMERS,” and several others) for
`
`use on its various game goods, including all of the goods and services
`
`listed by Applicant in the instant Applications. Opposer is the owner of the
`
`entire right, title, and interest in and to Opposer’s Marks. Opposer’s Marks
`
`have been the subject of advertising and promotional efforts and has been
`
`advertised, promoted, and otherwise used in commerce throughout the
`
`United States since at least as early as 1984 and have been in use in US
`
`commerce at all times to the current day. Opposers thus have standing to
`
`file the instant Opposition.
`
`12.
`
`The Opposer has a trademark Application No. 85/147,499 for the mark
`
`“EDGE GAMES” which application has been stayed pending the outcome
`
`of the instant applications by Applicant. Opposer’s application (which it
`
`has every right to have mature to registration), is thus being blocked by
`
`Applicant’s instant applications, and were the instant applications to
`
`mature to the U.S. register of trademarks then Opposer would suffer
`
`significant harm in then not being able to register its own, decades old,
`
`mark “EDGE” in the form “EDGE GAMES.”
`
`13. Videogame software and hardware and related goods and services sold in
`
`association with Opposer’s Marks, arising both out of Opposer’s sales and
`
`those of its predecessors in rights and respective licensees, have accounted
`
`for millions of dollars in sales since 1984 in U.S. Commerce. Opposer has
`
`
`
`2
`
`

`
`sold game software and game hardware and other related goods (including
`
`all those goods and services listed in Applicants Application) under
`
`Opposer’s EDGE Marks in all fifty (50) states, through traditional
`
`channels of retail trade, mail order and online electronic transactions such
`
`as those involved in purchasing games on smart phones through online
`
`stores such as Apple’s iTunes, or similar electronic distribution game sales
`
`systems operated for other smart phone systems, game consoles, and PCs.
`
`Opposer through its predecessors, as one of the earliest companies to
`
`publish computer game software, has become associated with related
`
`goods and services such as publishing electronic computer magazines,
`
`offering online download of computer games and communities for gamers
`
`and the manufacture of game computer hardware in the United States.
`
`Because Opposer’s brand “EDGE” is so widely known in the computer
`games industry via Opposer’s own sales and those of its licensees1,
`Opposer’s Marks “EDGE” and “THE EDGE” have become extremely
`
`well known for games, game hardware, online game magazines, online
`
`game related websites and services, and so forth. All this goes to
`
`Opposer’s extensive common law rights in the marks “EDGE” and “THE
`
`EDGE” and its family of EDGE formative marks, arising out of
`
`continuous commerce in the U.S. by Opposer and its licensees since 1984.
`
`14. Opposer owns/ed the following registered marks 3381826 (“GAMER’S
`
`EDGE”), 3105816 (“EDGE”), 3559342 (“THE EDGE”), 2219837
`
`(“EDGE”), and the following applications 85147499 (“EDGE GAMES”),
`
`85891810 (“EDGE GAMING PC”), 85891791 (“EDGE PC”) and
`
`75029400 (“EDGE” – mistakenly indicated as abandoned on the PTO
`
`database but in process of being revived).
`
`15. Opposer’s Marks have acquired distinctiveness and secondary meaning
`
`signifying Opposers and their products. The public and trade have come to
`
`
`1 This Opposition is somewhat unusual and more complex than most since Applicant is one of Opposer’s
`predecessor’s licensees; Applicant is Opposer’s license in respect to the goods and services in question. It
`is widely held that usually a licensee cannot hold ownership of a trademark, only the licensor may do so.
`
`
`
`3
`
`

`
`rely on Opposer’s Marks to distinguish Opposer’s products and services
`
`from those of others and to serve as an indicator of source for such
`
`products and services.
`
`16. Opposer’s trademark registrations were substantially earlier than
`
`Applicant’s date of application, and thus Opposer has proof of priority.
`
`Further, Opposer’s registrations were for the same mark (“EDGE”) as well
`
`as for the essentially identical mark (“THE EDGE” – since “the” does not
`
`add distinction in this context and should thus be ignored). Similarly,
`
`Opposer’s registration for “GAMER’S EDGE” should be considered
`
`essentially identical to Applicant’s mark since the word “GAMER’S”
`
`merely describes Opposer’s and Applicant’s customers (gamers who play
`
`computer games). Opposer’s registrations also included the identical
`
`goods and services as Applicant in the instant application (computer
`
`games), as well as goods and services directly related to computer games
`
`in classes 9, 35, 28 and 41. If Applicant was granted registration, then, it
`
`would own the identical mark for identical and very closely related goods
`
`and services.
`
`17. Opposer also owns several U.S. trademark applications -- EDGE GAMES,
`
`EDGE GAMES PC, EDGE PC – all of which applications are either
`
`stayed pending the outcome of this application, or are anticipated to be
`
`stayed pending the outcome. Opposer thus stands to be harmed if by
`
`permitting the current application to mature to the US PTO Register that
`
`then means that Opposer may not own registrations for its marks that it
`
`has made extensive use in U.S. commerce, such use appreciably pre-
`
`dating any use by Applicant.
`
`18.
`
`The Applicant had no bona fide intention to use or use through the
`
`applicant's related company or licensee the mark in commerce on or in
`
`connection with the identified goods and/or services as at the date of
`
`Application (15 U.S.C. Section 1051(b)). Applicant is relying on a
`
`European trademark for priority which does not draw a distinction
`
`
`
`4
`
`

`
`between intent to use (1B filing basis) and actual use (1A filing basis).
`
`Applicant has not used the mark in U.S. commerce for all the goods and
`
`services listed, and yet is in consideration for approval for registration on a
`
`1A (actual use) basis. If Applicant has made any such use then it has been
`
`in clear infringement of Opposers’ common law and registered rights.
`
`19. Opposer’s rights in Opposer’s registered and common-law Marks are
`
`superior to Applicant's rights in Applicant's Mark. Opposer’s date of first
`
`use in U.S. commerce is more than a decade prior to Applicant’s claimed
`
`first use in U.S. commerce.
`
`20.
`
`The use and registration of Applicant's Mark are likely to: (1) cause
`
`confusion in the minds of the purchasing public, and (2) cause the
`
`purchasing public to assume that the goods identified by such mark are
`
`offered by Opposer or that such goods originate with or are in some way
`
`connected to or sponsored by Opposer, which they are not, in violation of
`
`15 U.S.c. §§ 1052(d) and l125(a) (Trademark Act Section 2(a),(d)).
`
`20. Allowing Applicant’s mark to mature to the Register would lead to
`
`dilution (Trademark Act Section 43(c)).
`
`21. Use and registration of Applicant's Mark will be injurious to Opposer in
`
`violation of Section 13 of the Trademark Act, 15 U.S.c. § 1063(a).
`
`Relationship of the parties:
`
`22.
`
`Finally, since this may prove confusing to the Board, Opposer wishes to
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`clarify some of the history and relationship between the Opposer, its
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`predecessors in rights, and Applicant. Applicant first made use of the mark
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`EDGE for printed computer game magazines in or about 1993, in direct
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`infringement of the trademark rights of the Opposer and its predecessors
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`in rights, such use was initially in the United Kingdom (where Applicant
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`is based), but later spread to the United States. Opposer’s predecessor in
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`rights took legal action against Applicant in the London High Court,
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`Chancery Division, in 1994 for both trademark infringement over
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`Applicant’s wrongful use of the mark EDGE, and Applicant’s passing off
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`on Opposer’s predecessor’s extensive goodwill in the mark EDGE.
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`23.
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`The parties settled in 1996 entirely in Opposer’s predecessor’s favor, with
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`Applicant essentially acknowledging by the act of settlement that it had
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`been in the wrong to use the mark EDGE for any goods relating to
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`computer games without Opposer’s predecessor’s express permission.
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`Under the terms of the settlement, Applicant agreed to only make use of
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`the mark EDGE in worldwide commerce solely in class 16 and solely for
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`printed computer game magazines and the promotion thereof. All goodwill
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`arising from Applicant’s use of the mark EDGE worldwide accrued to
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`Opposer’s predecessor The Edge Interactive Media, Inc. (not Applicant)
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`under the 1996 settlement.
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`24.
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`Then in 2004, at Applicant’s insistence, Opposer’s predecessor agreed to
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`sell to Applicant just the very limited class 16 rights in the mark EDGE,
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`worldwide, solely for printed computer game magazines. Under this
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`revised agreement, Applicant was permitted to continue to use the mark
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`EDGE for uses directly related to the printed computer game magazine,
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`such as promotion and the electronic publication of the magazine, all in
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`classes 9 and 41 and related classes. Applicant was, however, strictly
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`forbidden from using the mark EDGE other than in these limited classes
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`and goods, and agreed to (a) trade so that it would never be confused with
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`a company trading outside of this limited market sector, and (b) would
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`consistently support and recognize Opposer’s predecessor’s rights in the
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`mark EDGE and not interfere with Opposer’s predecessor (and
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`successors) being the sole owner of the mark EDGE for any goods relating
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`to computer games worldwide other than printed magazines.
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`25. While the 2004 contract between the parties was terminated on August 20,
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`2010, prior to that date Applicant’s UK trademark applications (upon
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`which Applicant relied in applying for the instant marks under 44(b)) were
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`assigned to Opposer’s predecessor while the 2004 contract was still live
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`and in full effect. This fact, though, is still not reflected on the UK
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`trademark register, although proceedings are currently still underway at
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`this time via Appeal in the UK to conclude such assignment and recordal
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`process. A number of provisions and clauses of the 2004 contract survived
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`termination, in particular the perpetual irrevocable license granted to
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`Applicant by Opposer’s predecessor for the mark EDGE for the goods and
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`services in question here, where under said license all goodwill arising
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`from Applicant’s use of the mark EDGE has been vesting in Opposer (via
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`its predecessor) since 1993, and continues to vest in Opposer (and will
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`continue to do so in perpetuity).
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`26.
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`In sum, not only is there an historic agreement between the parties that
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`Applicant would not apply for the mark EDGE for the goods and services
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`in question, but there is also historic and current trading that resulted
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`under the various agreements in the vast majority of all Applicant’s use of
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`the mark EDGE having its goodwill vest in Opposer not in Applicant, and
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`in particular all goodwill arising from Applicant’s use in the goods and
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`services in question here all vesting in Opposer/Opposer’s predecessor.
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`
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`WHEREFORE, Opposer believes that it will be damaged by the registration of
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`Applicant's Marks and prays that Applications Serial Nos. 85/153,958 and 85/153,981 be
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`refused, that no registrations be issued thereon to Applicant, and this Opposition be
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`sustained in favor of Opposer.
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`This 27th day of January 2014.
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`
`
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`EDGE Games, Inc., Opposer in pro se
`530 South Lake Avenue, Suite 171
`Pasadena, CA 91101
`(626) 449 4334 (voice)
`(626) 844 4334 (facsimile)
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`Respectfully submitted,
`EDGE GAMES, INC.
`
`
`______________________________
`Dr. Tim Langdell, CEO
`uspto@edgegames.com