Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA637801
`ESTTA Tracking number:
`11/08/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91214673
`Plaintiff
`Edge Games, Inc.
`REV DR TIM LANGDELL
`EDGE GAMES INC
`530 SOUTH LAKE AVENUE , 171
`PASADENA, CA 91101
`UNITED STATES
`uspto@edgegames.com, tim@edgegames.com
`Opposition/Response to Motion
`Tim Langdell
`tim@edgegames.com, uspto@edgegames.com
`/Tim Langdell/
`11/08/2014
`ResponseToReplyBriefInSuppMtnPrtJdgmt08Nov14.pdf(548649 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`____________________________________
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`EDGE GAMES, INC.,
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`Opposer.
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`v.
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`FUTURE PUBLISHING LIMITED
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`Applicant.
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`____________________________________}
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`Opposition No 91214673
`
`Applications Serial Nos. 85153958
`and 85153981
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`Mark “EDGE”
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`RESPONSE TO REPLY BRIEF IN SUPPORT
`OF MOTION FOR PARTIAL JUDGMENT
`ON THE PLEADINGS
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`Opposer was making a periodic check of the status of this case online and was
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`surprised to discover that Applicant had made two filings (this one, and another Response
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`to Motion) that Opposer was not aware of. Opposer notes that Applicant alleges this
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`Reply Brief was served on Opposer via First Class Mail, but on investigating this at the
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`building Opposer receives its mail, we can find no trace of the document arriving with us.
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`This is to note, then, that Opposer is filing this Response to Reply Brief promptly upon
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`discovery of the filing, and thus asks that the Board consider it timely. Since our
`Response is brief, and contains a vital filing – namely a STIPULATION – that should be
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`admitted into these proceedings, we trust that this filing will be accepted by the Board.
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`Opposer will also file a separate copy of the stipulation.
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`I. THIS MATTER IS SIMPLE: THERE IS NO BASIS FOR PARTIAL
`JUDGMENT
`In its original filing, Opposer clearly stated that it was listing the previously registered
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`trademarks (now cancelled) not as forming grounds for opposition based on ownership of
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`currently registered marks, but on the basis that these previously registered marks form a
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`key part of the history of this matter, and go to Opposer’s claims to first use, priority of
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`use, and common law rights. Applicant seeks to make much of the fact that Opposer used
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`the term “ownes/ed” rather than just “owned” yet it is clear that Opposer only used that
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`combined term because it could not be sure whether at least one of its marks might
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`mature to registration during these proceedings (hence “ownes” as a possible option). But
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`

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`Opposer was being clear that the historic registrations cited in its grounds were there not
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`because they are current registered marks owned by Opposer, but simply because they
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`were historically owned by opposer. Should Opposer’s mark still in flux (75/029,400)
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`mature to registration during the process of this opposition, or should any of Opposer’s
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`other applications in process mature to registration, then Opposer will apply to amend its
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`original grounds accordingly. But to be clear, despite what Applicant states, this
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`application (75/029,400) is most certainly still “being processed” even though the current
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`database record does not reveal that fact. Our filing with the USPTO in April 2008 was
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`not an untimely attempt to revive the application, rather it was a reminder to the USPTO
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`that Opposer had still not received a response to its timely filing of a request for
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`reinstatement made many years earlier.
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`The PTO’s response, then, stating that the 2008 request for reinstatement was denied
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`as untimely, was in turn responded to again by Opposer with correspondence stating that
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`the PTO had misunderstood since our 2008 filing was not itself a new request, it was
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`merely referring to a very old request that was timely and still has not been ruled on.
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`Attached in Exhibit B are copies of the 1997 Suspension of Application No. 75/029,400
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`which suspension was never reversed and which thus proves that to this day this
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`application’s true status on the database is (or should be) “suspended” not “abandoned”
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`as it currently wrongly states. Also in this exhibit is our letter of April 15, 2008 which
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`came after the mistaken decision to deny the request for reinstatement, making clear that
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`the USPTO had made an error. As can also be seen from the record attached, the USPTO
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`has yet to properly respond to our April 15, 2008 request for reconsideration of the
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`decision.
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`There has been sizable correspondence with the USPTO on this application in the
`years since 2008, although none of it yet appears on the database online, hence Applicant
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`cannot see this correspondence. But suffice to say this matter is still be processed, and it
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`is a simple fact that Opposer did make a timely request for reinstatement of the
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`application and that request has to this day yet to be ruled on despite the substantial
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`passage of time. But since this is a USPTO error, not Opposer’s error, we still fully
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`expect that eventually the USPTO must grant our timely request and that thus this
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`application will eventually mature to registration.
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`

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`II. STIPULATION THAT OPPOSER’S GROUNDS DO NOT INCLUDE
`RELIANCE ON ANY CURRENT TRADEMARK REGISTRATIONS
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`Since Opposer did not apply for judgment on its behalf relying on grounds based on
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`any current registered marks, there is no such grounds for Applicant to seek partial
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`judgment in its favor on the part of.
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`To make completely clear that Opposer is not seeking in its grounds to rely on current
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`registered rights, and thus there is basis for a partial judgment, Opposer attaches in
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`Exhibit A a STIPULATION that it was never Opposer’s intent to rely on current
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`registered marks as part of its grounds of opposition.
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`Opposer asks that the Board accept this Stipulation as dispensing of Applicant’s
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`motion (rendering it moot), and at its discretion the Board may accept this Stipulation as
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`being an amendment to Opposer’s original filing. That said, Opposer never stated that it
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`was relying on current registered marks as part of its grounds for opposition, thus an
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`amendment should not be necessary. This Response and this Stipulation should suffice to
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`clarify and dispose of this matter, and we trust that it does.
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`Respectfully submitted this day November 8, 2014,
`
`
`
`By: /Rev Dr Tim Langdell/___________________
`
`Rev Dr Tim Langdell, CEO Opposer in Pro Per/Se
`Edge Games, Inc.
`530 South Lake Avenue, 171
`Pasadena, CA 91101
`Tel: 626 449 4334; Fax: 626 844 4334; Email: tim@edgegames.com
`
`

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`EXHIBIT A
`EXHIBIT A
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`
`

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` IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`____________________________________
`}
`}
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`EDGE GAMES, INC.,
`}
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`Opposer.
`}
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`}
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`v.
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`}
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`}
`FUTURE PUBLISHING LIMITED
`}
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`Applicant.
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`____________________________________}
`
`
`Opposition No 91214673
`
`Applications Serial Nos. 85153958
`and 85153981
`
`Mark “EDGE”
`
`
`STIPULATION REGARDING OPPOSER’S
`GROUNDS FOR OPPOSITION
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`Opposer hereby stipulates that it did not seek to rely on any alleged ownership of
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`currently registered U.S. trademarks in its grounds for opposition. Opposer further
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`stipulates that it only listed the historic registered EDGE marks previously owned by
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`Opposer (but now cancelled) to support Opposer’s grounds of opposition based on first
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`use by Opposer, Priority of Use by Opposer, and as support for Opposer’s grounds for
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`opposition based on historic common law rights as proved by the extensive historic U.S.
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`trademark registrations which remained valid for many years, based on consistent
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`ongoing common law rights underlying those cited registrations.
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`All of the cited historic trademark registrations in Opposer’s original filing are still
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`validly present (and none should be struck from the original filing), but this is to clarify
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`that none of them were cited by Opposer in support of grounds based on any claim to
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`current ownership of registered trademark rights. Insofar as there is any suggestion in
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`Opposer’s original filing that it was relying on grounds based on current registered rights,
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`then Opposer hereby abandons those grounds (although they were not intentionally ever
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`given).
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`Respectfully submitted this day November 8, 2014,
`
`By: /Rev Dr Tim Langdell/___________________
`
`Rev Dr Tim Langdell, CEO Opposer in Pro Per/Se
`Edge Games, Inc.
`530 South Lake Avenue, 171
`Pasadena, CA 91101
`Tel: 626 449 4334; Fax: 626 844 4334; Email: tim@edgegames.com
`
`

`
`EXHIBIT B
`EXHIBIT B
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`
`
`

`
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`October 17, 2014
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`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria
`VA 22313-1451
`
`Attn: Petitions Office
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`By First Class Mail
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`Dear Sir or Madam:
`
`
`Re: Application Serial No. 75/029,400 for the mark “EDGE”
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`Timely Request To Reinstate Following Suspension
`
`We write yet again in regard to this long-running problem that arose from a USPTO
`error some years ago. We have been trying without success to get a resolution to this
`issue, and very much hope that after all these years this matter will finally receive the
`attention that it deserves, and that the USPTO will at last rule in our favor as is only fair
`and just.
`As can be seen from the attached, this application was placed in suspension in 1997
`(at our request and in agreement with the then examining attorney). The application was
`suspended pending the outcome of another application for the mark “EDGE” for similar
`goods and services (Application Serial No. 74/617,005). As the attached record also
`shows, this rival application was deemed abandoned on January 7, 2001 for failure to file
`a Statement of Use (since its filing basis was 1B).
`And as the attached correspondence and database record shows, the moment we
`discovered that this rival mark cited against our 1995 ‘400 application had been
`abandoned, we wrote to the USPTO yet again asking that our 1998 Request for
`Reinstatement be processed so that we could now ask the suspension be lifted so that our
`application could now go forward to publication and registration.
`The documents attached also show that in the period from 2001 to 2008 we
`repeatedly corresponded with the USPTO because the initial response from the USPTO
`was that our ‘400 application had been mistakenly labeled as “abandoned” when it’s true
`status was clearly “suspended,” and that in the interim the USPTO had mislaid the file for
`our ‘400 application, fearing it may have been destroyed in error. As the attached also
`clearly shows, we wrote in 2008 making clear that we were not filing a new Request for
`Reinstatement, but rather were showing the USPTO proof that we had filed a timely
`Request for Reinstatement in 1998.
`
`The EDGE Interactive Media, Inc., 
`530 South Lake Avenue, 171, Pasadena, California, 91101
`T: 626 449 4EDGE   F: 626 844 4EDGE  W: www.edgegames.com 
`
`
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`

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`And as the attached also clearly shows, despite our making clear in our 2008
`correspondence that it was not to be taken as a new Request for Reinstatement, the
`USPTO mistakenly took it as just that, and issued a denial on the basis that our Request
`was untimely. As the attached also shows, we replied promptly – the same day – April
`15, 2008, stating for the record that our 2008 filing was clearly stated not to be a new
`Request but was merely drawing the USPTO’s attention to the fact that our timely filed
`1998 Request had still not been ruled on or acted on, through no fault or inaction of ours,
`but entirely due to USPTO clerical error.
`And as you can also see, despite the numerous letters written to the USPTO by us
`since 2008 (copies attached), to this day the USPTO has still not responded to our April
`15, 2008 communication which stood as a timely and valid request for reconsideration of
`the denial, given that what we filed at that time was not a new Request and hence the
`denial on the basis it was untimely was clearly in error.
`Now, all these years later, our application’s rightful status is still – or should be –
`“suspended” as the record clearly proves it should be. None of what has happened has
`been due to errors or delays by us, it has been entirely caused by the USPTO’s clerical
`errors and other errors. At no time, then, did we ever fail to do what was within our
`power to do: we promptly pointed out in 1998 that the application had been mistakenly
`labeled as “abandoned” when it should have been labeled as “suspended.” The trademark
`examiner at the time assured us that he personally would get the status amended as a
`clerical error, and confirmed that in the worse case our 1998 filing would be taken as a
`Request for Reinstatement, that he assured us would be granted given it was a USPTO
`error. Then we followed consistently each year since 1998 (as the attached volume of
`correspondence shows) repeatedly asking that the 1998 Request be processed, and then
`from 2001 onwards asking that it not only be processed but that the application then be
`taken out of suspension since the mark cited against our application had now been ruled
`abandoned, clearing our mark for publication. And as you can see, we have continued to
`write to the USPTO consistently since 2008, asking for a formal response to our April 15,
`2008 correspondence (request for reconsideration), and have still never had a response.
`In short, it is clear that our ‘400 application’s true status as at today should be
`“suspended” and that our prior request of some years ago now to remove it from
`suspended status and permit it to go forward to publication and registration should be
`acted on now, and as swiftly as possible.
`In closing, we make two further related comments. First, we attach proof that our
`other application for the mark THE EDGE (filed March 1996) was also suspended
`pending the outcome of the rival cited mark 74617005, but in that case the application
`was correctly labeled as suspended, and was taken out of suspension (and went on to
`registration) once 74617005 went abandoned. It is clear that just as our application for
`THE EDGE was suspended pending the outcome of this rival EDGE application, so of
`course our 1995 application for the same mark, EDGE, was suspended pending the
`outcome of the ‘005 application. It makes no sense that our ‘400 application would have
`been abandoned when it clearly was suspended.
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`2
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`Second, it has previously been argued over the past years since 2008 while the
`USPTO has not formally yet responded to our April 15, 2008 communication, one reason
`for the USPTO’s reticence to respond is that there has been such a large passage of time
`since 1998 that too many other applications and registrations might be impacted were the
`USPTO to suddenly revive a 1995 application for the mark EDGE. However, as
`previously pointed out, this fear is unfounded since in the entire period we, and our
`successor in rights Edge Games Inc, have carefully maintained and policed the USPTO
`database such that no other rival marks have matured to the database, and until very
`recently we and our successor owned all relevant EDGE marks. The only registrations
`that might be impacted by the restoration of our 1995 application, then, would be the two
`currently disputed marks – one where we have filed a petition to cancel the mark EDGE,
`and another where we are rightly opposing the registration of the mark EDGE, which
`opposition is current and ongoing (Opposition No. 91214673). There are thus no other
`parties that might be impacted, despite the great passage of time since 1998 when our
`mark should have been put back in “suspended” status, and since 2001 when it should
`have been approved for publication and registration.
`For all these reasons, and since this matter has been entirely due to USPTO error and
`not due to our error or delay at all, we ask that our application be now swiftly reinstated
`as “suspended” and then that the suspension be immediately lifted and the mark
`permitted to go forward to publication at the earliest possible date. And that thus we be
`permitted, as is our right, to use the fact of this still live 1995 application for the mark
`EDGE in support of both our current petition to cancel and our current opposition.
`
`Kind regards,
`
`
`
`Rev Dr Tim Langdell
`CEO, Applicant in Pro Per/Se
`Attachments.
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`11/8/2014
`
`Document Search SN 75029400
`
`STATUS
`
`DOCUMENTS
`
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`
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`May 16, 2008
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`TEAS Revoke Appointed Attorney
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`Apr. 15, 2008
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`Fax Incoming
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`Apr. 15, 2008
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`Petition Decision
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`Mar. 18, 2008
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`Fax Incoming
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`Jun. 18, 2004
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`Change of Address
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`Jun. 18, 2004
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`Change of Address
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`Mar. 07, 2003
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`Change of Address
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true copy of the foregoing RESPONSE TO REPLY BRIEF IN
`SUPPORT OF MOTION FOR PARTIAL JUDGMENT ON THE PLEADINGS AND
`EXHIBITED STIPULATION IN RELATION THERETO in respect to Opposition No.
`91214673 was served on Applicant via first class mail, postage prepaid, this day
`November 8, 2014:
`
`
`
`Robert N. Phillips
`Reed Smith LLP
`101 Second Street, Suite 1800
`San Francisco
`CA 94105
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`_/Rev Dr Tim Langdell/________
`Rev. Dr. Tim Langdell