Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA786294
`
`Filing date:
`
`11/30/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91214673
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Plaintiff
`Edge Games, Inc.
`
`TIM LANGDELL
`EDGE GAMES INC
`530 SOUTH LAKE AVENUE, SUITE 171
`PASADENA, CA 91101
`UNITED STATES
`uspto@edgegames.com, tim@edgegames.com
`
`Other Motions/Papers
`
`Tim Langdell
`
`uspto@edgegames.com, tim@edgegames.com
`
`/Tim Langdell/
`
`11/30/2016
`
`Attachments
`
`OpposerSubmissionReUKCourtRuling.pdf(820064 bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA786294
`
`Filing date:
`
`11/30/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91214673
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Plaintiff
`Edge Games, Inc.
`
`TIM LANGDELL
`EDGE GAMES INC
`530 SOUTH LAKE AVENUE, SUITE 171
`PASADENA, CA 91101
`UNITED STATES
`uspto@edgegames.com, tim@edgegames.com
`
`Other Motions/Papers
`
`Tim Langdell
`
`uspto@edgegames.com, tim@edgegames.com
`
`/Tim Langdell/
`
`11/30/2016
`
`Attachments
`
`OpposerSubmissionReUKCourtRuling.pdf(820064 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Opposition No. 91214673
`Cancellation No. 92062034
`
`Mark: EDGE
`
`
`)
`
`EDGE GAMES, INC.
`)
`
`
`
`
`
`)
`
`
`
`Opposer,
`)
`
`
`
`
`
`)
`vs.
`
`
`
`
`)
`
`
`
`
`
`)
`
`
`
`
`
`)
`FUTURE PUBLISHING LTD.
`)
`
`
`
`
`
`)
`
`
`
`Applicant.
`____________________________ )
`
`OPPOSER’S REPONSE TO THE BOARD’S NOVEMBER 1, 2016
`ORDER REGARDING POSSIBLE PRECLUSIVE EFFECT OF
`THE JULY 7, 2011 UK PROCEEDING DECISION
`
`
`In the Board’s Order of November 1, 2016, the Board posed the following
`
`
`
`
`
`question to the parties and asked that each make a submission in response within
`
`30-days:
`
`“Does the July 7, 2011 decision of Mrs. Justice Proudman of the UK
`High Court (Case No. HC09CO2265) have any preclusive effect on
`this proceeding and, if so, how?
`
`There is a live motion before the Board to suspend these proceedings pending
`
`the final disposition of a new UK High Court proceeding, which new Claim is directly
`
`dispositive of this proceeding, but as yet the Board has not ruled on that motion.
`
`Opposer thus presumes that pending that ruling, the Board still expects the parties to
`
`file a response to the posed question. Opposer thus herewith responds.
`
`The brief answer to the Board’s question is simply, no the July 7, 2011 decision
`
`by Mrs. Justice Proudman does not have any direct clear preclusive effect on this
`
`proceeding. However, that response requires clarification. First, the issues here
`
`
`
`1
`
`
`
`relate to a UK court ruling that was made under British Law, which in turn may or
`
`may not have bearing on a Power of Attorney granted under British Law, and which
`
`was used under British Law to assign the instant marks subject of this (combined)
`
`proceeding. In short, the Board’s question, and indeed the entirety of the issues
`
`outstanding before the Board in this proceeding, all relate to British Law and any fair
`
`assessment or decision would require deep knowledge of British Law.
`
`It is for this reason that Opposer filed the new UK High Court Claim to specifically
`
`require the UK High Court to resolve the issues before the Board in this proceeding,
`
`since neither the Board nor the US Federal Courts have jurisdiction on the issues in
`
`question as they involve solely British Law and the application of British Law.
`
`Accordingly, Opposer repeats its request that rather than consider the submissions
`
`by the parties made in response to the Board’s July 7, 2016 and November 1, 2016
`
`Orders, the Board instead suspend this proceeding.
`
`Certainly, the danger would be for the Board to mistakenly try to interpret the UK
`
`High Court July 7, 2011 decision in terms of California or US Federal Law, since
`
`British Law differs and only British Law pertains here. One thus cannot apply what
`
`one believes to be the case, say, regarding California or Federal Law pertaining to
`
`the termination of a contract, the rights of parties following such termination, the
`
`issuance of a Power of Attorney, or in regard to the use of such Power.
`
`That being said, there are ways in which the 2011 UK Court Order does have
`
`bearing on this proceeding, which Opposer will detail as follows while noting again
`
`that such points do rely on interpretation of British Law.
`
`SUMMARY OF THE UK HIGH COURT ORDER
`
`As the Board correctly states, the July 7, 2011 UK High Court Order is to be
`
`found at Docket #68, Exhibit B. It is important to note that the “Judgment” in Exhibit
`
`
`
`2
`
`
`
`C of that filing is not part of the UK High Court Order. The terminology in the UK
`
`High Court differs from the usual terminology in the US Court System: thus what the
`
`UK Court styles an “Order” is really a combination of what a US Court would call a
`
`“judgment” mixed with what a US Court would call an “order.” While what the UK
`
`Court calls a “judgment” is in US terms more like a US Court “opinion” which is
`
`separate from the actual court’s order, and provides some background as to how the
`
`court order was arrived at. Nothing in the UK judgment, though, should be mistaken
`
`for a US Court “judgment” since it is not the ruling of the court – solely the “Order” is
`
`the ruling of the UK Court.
`
`What the UK High Court Order of July 7, 2011 ordered was, in short:
`
` The Defendants (which includes Opposer) must not copy the specific
`
`version of the EDGE logo devised by Future in Britain (since this order
`
`could only relate to Britain being a British court order)
`
` The Defendants must not pass themselves off as Future in Britain (since
`
`this is a British court order pertaining solely to the UK)
`
` The Defendants are to remove certain EDGE logos from websites
`
` The Defendants are to remove certain phrases from websites for the
`
`British territory only (since this was a UK High Court order, and the UK
`
`Court’s jurisdiction was restricted to Britain, only).
`
` Certain British trademark registrations are revoked.
`
` The Concurrent Trading Agreement (the 2004 contract between the
`
`parties) is to be deemed terminated with effect from August 20, 2010 (with
`
`no order as to what that termination means or what the implication of the
`
`termination might be under British Law).
`
`
`
`3
`
`
`
`UK Order Wording is Problematic For a Number of Reasons
`
`In particular, the UK Court used wording that could be easily misunderstood or
`
`misinterpreted in regard to the Defendants’ (including Opposer’s) making a
`
`statement that refers to Future as the licensee of (Opposer) on the United States
`
`Edge Games website (www.edgegames.com). It is important to note that the UK
`
`Court Order does not order that the license between Edge Games and Future
`
`is terminated – indeed, the UK Court lacked the power to terminate the license
`
`since it was established as “perpetual and irrevocable” (see clause 2.1.2 of the CTA
`
`at Docket #73, Exhibit A).
`
`Second, notably, the UK High Court Order did not order that Edge Games
`
`remove this statement from Edge Games British website (www.edgegames.
`
`co.uk), despite that website being often referred to, and thus well known to the UK
`
`Court, during the trial and despite the same phrase appearing on that website at that
`
`time, too. Indeed, the 2011 UK Court Order left Edge Games free to make the
`
`statement about the license verbally or in writing anywhere else, on any of Edge’s
`
`other websites, or in its corporate brochures or its marketing materials or etc. Thus it
`
`would be an error to misinterpret the 2011 Order to remove the statement just from
`
`the United States (.com) website as being a ruling (or even a suggestion) that the
`
`license has ended (see Exhibit A hereto for proof the phrase is still in use just as it
`
`always has been since 2004).
`
` Third, it is in fact questionable that the UK High Court had jurisdiction to order a
`
`California Corporation to remove anything from a United States “.com” website,
`
`which probably renders this part of the July 7, 2011 Court Order invalid. An order
`
`requiring Edge Games to prevent UK consumers from viewing that part of the United
`
`States website would have made more sense, but it is likely the UK Court lacked
`
`
`
`4
`
`
`
`sufficient knowledge of how the Internet works to arrive at a more sensible ruling,
`
`one that fell within the British territory jurisdiction the UK Court was limited to.
`
`Obviously, when a court makes an order that is outside of its jurisdiction to make
`
`then that part of the order is not valid and the party need not adhere to it.
`
`What the 2011 UK High Court Order Does Not State
`
`First and foremost, the 2011 UK Court Order is silent on all the specific key
`
`issues in dispute before the Board in this proceeding: the court order says nothing
`
`about whether or not Edge Games has a power of attorney arising from the 2004
`
`agreement, or whether or not such a power remained in place following the
`
`termination of the agreement, or whether either Future or Edge Games may or may
`
`not hold registration in the mark EDGE in the United States territory (which is not
`
`surprising given that would be outside the UK Court’s jurisdiction or discretion), and
`
`so on.
`
`Certainly, the 2011 UK Court Order is also silent on Edge Games’ ownership of,
`
`or rights in, the mark EDGE in any territory outside of Britain and only refers to
`
`revocation of certain British trademark registrations. Again, this is not surprising
`
`since obviously the UK Court jurisdiction did not extend to making any ruling
`
`regarding Edge Games’ ownership of any given U.S. trademark or Edge Games
`
`common law rights in the United States, etc.
`
`
`Where the 2011 Court Order Has Bearing on This Proceeding
`
`
`To indicate to the Board where the 2011 Court Order has bearing on this
`
`proceeding one must invoke British Law and interpretation of British Law.
`
`While there are similarities between British and U.S. contract law, there are also
`
`significant differences, particularly regarding the circumstances surrounding the
`
`
`
`5
`
`
`
`termination of a contract, retention of any rights (e.g. powers of attorney, etc)
`
`granted during the contact’s duration and so forth.
`
`In broad terms, when a contract written under British Law (as the CTA was) is
`
`terminated, then each side keeps whatever it has gained or obtained as at the date
`
`of termination (any property, real or intellectual; any rights, goodwill, interest, and so
`
`forth; any powers or rights to cure of breaches made prior to the termination date,
`
`and so forth).
`
`Review of the 2004 CTA (See Docket #74, Exhibit A) reveals that this was a
`
`contract between the parties that was designed not to be terminated. It was simply a
`
`statement of the settlement between the parties, originally reached in 1996 when
`
`Edge Games sued Future in the UK High Court for trademark infringement,
`
`indicating how the parties should trade going forward. As can be seen, there is no
`
`termination clause since the agreement was a for-all-time binding settlement, never
`
`intended to end. The fact the UK High Court decided to terminate the CTA in fact
`
`had very little impact on either party, or the future behavior (restrictions or
`
`permissions, rights or interest) of either party, since the core conditions detailed in
`
`the CTA remained in place by virtue of the original 1996 settlement, and in accord
`
`with prevailing law in both Europe and the United States.
`
`The CTA served to assure two key things going forward: first, that Future would
`
`not seek to register the mark EDGE in its own name other than for a very limited part
`
`of class 16 for printed computer game magazines, and second, that the parties
`
`should work together with a mutual interest of promoting a single common brand
`
`“EDGE” to be associated with excellence in the game industry. It became clear in
`
`this proceeding, as it did in the UK Court Case in 2010-11, that Future repudiated
`
`
`
`6
`
`
`
`the CTA in regard to the latter condition since they never did promote the brand
`
`EDGE to the mutual benefit of both parties.
`
`That left the remaining restriction of Future not being permitted to register the
`
`mark EDGE in its own name, which is the only technical implication of the CTA being
`
`terminated. However, in real terms the termination of the CTA made very little
`
`difference to either party since while the contractual restriction on Future to file for
`
`such EDGE registrations was removed as of August 20, 2010, Future continued, of
`
`course, to be bound by trademark law to not apply to register the EDGE mark in its
`
`name for any goods and services it did not have a right to do so. Which in turn
`
`means Future has remained barred from registering the mark EDGE in its name for
`
`any use it has made of the EDGE mark other than perhaps for printed magazines,
`
`since all other use of the mark EDGE by Future has been under license from Edge
`
`Games, and remains under license from Edge Games, with all goodwill therefrom
`
`vesting in Edge Games.
`
`What each party retained or gained when the CTA was terminated.
`
`Edge Games retained/gained:
`
` A Power of Attorney to execute any document, anywhere worldwide, on
`
`behalf of Future Publishing that may be reasonably required to cure a
`
`breach of the CTA committed before termination or to remedy any
`
`infraction after the date of termination that directly relates to a breach
`
`committed prior to termination.
`
` All right, title, interest and goodwill arising from any use of the mark EDGE
`
`by Future in the period from 1993 to 2010 which was not specifically
`
`purchased by Future in the CTA.
`
`
`
`7
`
`
`
` The perpetual and irrevocable license between Future and Edge Games,
`
`whereby all goodwill arising from Future’s use of the mark EDGE other
`
`than for printed magazines vests in Edge Games, not Future, in
`
`perpetuity.
`
` All right, title, interest and goodwill arising from all use of the mark EDGE
`
`by Future for any use other than that for printed magazines and in
`
`particular for all electronic and Internet related use.
`
` Edge Games gained the right to register the mark EDGE in class 16 for
`
`printed games magazines (and was freed of any other such restrictions in
`
`the CTA)
`
`Future retained/gained:
`
` The perpetual and irrevocable license between Future and Edge Games,
`
`whereby all goodwill arising from Future’s use of the mark EDGE other
`
`than for printed magazines vests in Edge Games, not Future, in
`
`perpetuity.
`
` The ownership of registrations of the mark EDGE for printed magazines in
`
`the UK and Germany (they do not necessarily retain the right in the US –
`
`see below)
`
` All goodwill arising from Future’s use of the mark EDGE for printed
`
`magazines in the UK, France and Germany (but not the US, since Future
`
`admitted in this proceeding they could not account for any such use in the
`
`US between 2004 and 2010, and by contractual obligation they were
`
`barred from making any such use 1993 to 2004 under the earlier
`
`Settlement). No goodwill in regard to the mark EDGE in regard to printed
`
`
`
`8
`
`
`
`magazines in the US market was acquired from Edge Games by Future in
`
`2004 since Future was expressly barred from making such use prior to
`
`2004 and hence there was no goodwill to assign to Future.
`
` Future gained in that it was released from the restriction not to register the
`
`mark EDGE for goods other than printed computer magazines, but
`
`remained restricted since it had never made any such use itself (with
`
`goodwill vesting in it) and has no priority of use for such goods.
`
`2011 UK Court Order Means Goodwill Remains With Edge Games.
`
`Under both the original 1996 Settlement and the replacement 2004 CTA, all of
`
`Future’s use of the mark EDGE other than specifically for printed computer game
`
`magazines, had all its goodwill arising therefrom vest in Edge Games. For the entire
`
`duration of the agreements between the parties (agreed to be backdated to 1993
`
`and continuing to the current day) all use by Future of the mark EDGE in relation,
`
`say, to electronic publication of their EDGE magazine, or promotion of it on the
`
`Internet, or via handheld devices, tablet computers, smart phones, etc, has been
`
`under license from Edge Games with all right, title, interest and goodwill arising
`
`therefrom vesting solely in Edge Games.
`
`As can be seen from the Particulars of Claim to the newly filed UK High Court
`
`Claim against Future (see Docket #74), it stated categorically in the 1996 Settlement
`
`between the parties that all use by Future of any kind of the mark EDGE from 1993
`
`(until 2004) was under license from Edge Games, and specifically the agreement
`
`stated that all goodwill arising from Future’s use of the mark EDGE vested in Edge
`
`Games. While the 2004 CTA replaced the 1996 Settlement, no where in the CTA is
`
`there any indication that Future acquired any goodwill or rights in the mark EDGE
`
`
`
`9
`
`
`
`from Edge Games other than for the narrow part of class 16 pertaining to printed
`
`magazines (and even then, really just for the UK market where such goodwill had
`
`accrued, given that under the 1996 Settlement Future were specifically banned from
`
`selling the printed magazine in the United States).
`
`Thus undisputedly, as at the date of termination of the CTA in August 2010, all
`
`right title interest and goodwill arising from Future’s use of the mark EDGE for
`
`electronic publication, promotion, etc, all vested solely in, and is solely owned by,
`
`Edge Games.
`
`2011 Court Order Means Edge Games Retained Power of Attorney
`
`By British Law, Edge Games also retained all powers and rights that it had
`
`already acquired as of August 2010. This thus means, undisputedly, that as at
`
`August 2010 Edge Games had acquired and thus retains the Power of Attorney
`
`granted to it by paragraph 2.8 of the CTA: this power was invoked the moment
`
`Future filed to register the European Community Trademark for the mark EDGE in its
`
`own name in 2008, and was then invoked again on July 5, 2010 when Future once
`
`again filed to register the mark EDGE in its own name for the forbidden classes of
`
`goods in the UK (these being the two UK registrations that the instant two US
`
`applications were based upon). Since the Power of Attorney was, in both instances,
`
`granted to be “irrevocable” it therefore follows that the Power of Attorney certainly
`
`survived termination of the CTA. It survives both by British contract law (each party
`
`gets to keep whatever it has gained by the date of termination) and by British Power
`
`of Attorney Act that states that a power of attorney granted and styled as
`
`“irrevocable” cannot be ended by any means other than by the purpose for which the
`
`power was granted being completed to the satisfaction of the party who was granted
`
`
`
`10
`
`
`
`the power. For proof of this law, please see the Particulars of Claim in Docket #74 to
`
`the new Claim filed against Future in the UK High Court.
`
`2011 Court Order Means Edge Games Had The Right To Use The Power Of
`Attorney To Assign The U.S. Trademarks To Itself
`
` The Power of Attorney had been automatically invoked (and once invoked, was
`
`irrevocable) in 2008 when Future applied to register the mark EDGE for goods other
`
`than printed game magazines in the European Union (a so-called Community
`
`Trademark). The Power was re-invoked on July 5, 2010 when Future applied to
`
`register the mark EDGE in various classes other than class 16 for printed
`
`magazines, where one mark was word-only and the other mark used the visual
`
`image of the EDGE logo Future laid claim to own copyright in.
`
`Thus the 2011 Court Order effectively ruled that since both parties retain what
`
`they have acquired by the date of termination, Edge Games had thus acquired and
`
`retained this Power. The Power remains in place – is irrevocable – until all breaches
`
`and infractions by Future arising from their filing the unlawful trademark applications
`
`in the UK in July 2010 have been fully cured. And the Power grants Edge Games the
`
`right to execute any document, anywhere worldwide, to ensure any such trademarks
`
`are reassigned to (or back to) Edge Games.
`
`This Power then extended to the two U.S. trademark applications in this
`
`proceeding because both applications were based specifically on the two offending
`
`UK July 2010 Applications, and indeed stand as extensions of the alleged UK rights
`
`to the US territory. Accordingly, the 2011 High Court Order effectively rules that
`
`Edge Games may, in accord with British Law pertaining to the use of Powers of
`
`Attorney, may use the Power to assign to itself the two U.S. trademarks subject of
`
`this proceeding.
`
`
`
`11
`
`
`
`While Edge Games had a right to assign both marks to itself, it chose to only
`
`assign the one that was a word-only mark, since the other involved what Future
`
`allege is their copyright logo of the word EDGE, and rather than have a dispute over
`
`that issue, Edge Games permitted that trademark to be surrendered (cancelled) by
`
`Future.
`
`The 2011 UK Court Order also ruled that the license between Future and Edge
`
`Games remained in place since it was established as irrevocable and perpetual, and
`
`hence could not be ended by the termination of the CTA (unless specifically ruled to
`
`be terminated, which did not happen). Thus accordingly, since for all the goods and
`
`services listed by Future in the instant trademarks pertain to those where use by
`
`Future is under license from Edge Games, and since it is well established law in both
`
`the US and Britain that only a licensor (not a licensee) may own the registration for
`
`licensed mark, it follows that only Edge Games may own the trademark in question
`
`in this proceeding anyway.
`
`There are thus at least two ways in which the 2011 UK High Court Order affirms
`
`and supports the actions of Edge Games in assigning the trademark applied for by
`
`Future in October 2010 to itself.
`
`2011 UK Court Order Means Edge Games Was Within Its Right To Assign The
`Earlier EDGE Registration To Itself
`
`Since the UK Court did not order the 2004 CTA to be voided entirely, but rather
`
`terminated it as of a specific date, therefore for all time prior to that date the contract
`
`was in full force and effect, and Future remains liable for any newly discovered
`
`breaches of the CTA, despite it being terminated, so long as the breaches took place
`
`prior to August 20, 2010.
`
`
`
`12
`
`
`
`In this proceeding, Future admitted that it had no proof whatsoever of any income
`
`or marketing expense for the mark EDGE in the United States for any period from
`
`2004 to 2010 (see Future’s responses to Opposer’s Interrogatories filed in this
`
`proceeding). Edge Games only agreed to assign the U.S. trademark registration for
`
`the mark EDGE (part of Reg No 2219837) on strict condition that Future make use of
`
`the mark EDGE in the United States by publishing a specific US edition of its printed
`
`EDGE magazine. This representation was a key reason that Edge Games agreed to
`
`enter into the CTA, and was a condition acknowledged between the parties of Edge
`
`Games including this US registration’s assignment to Future in the overall 2004
`
`agreement.
`
`What became clear in these proceedings was that Future was guilty of fraud in
`
`the inducement since it never had any intention of honoring the key promise it had
`
`made to induce Edge to sign the CTA: namely, it never intended to publish a US
`
`version of its EDGE magazine in print format. Accordingly, this proceeding proved
`
`for the first time that Future repudiated the CTA at the very moment of executing the
`
`contract. Which in turn, gave Edge Games the right to re-assign the US Trademark
`
`(which matured in 1999) back to Edge Games.
`
`Future’s essential abandonment of the mark EDGE in the US territory,
`
`underscored by its willingness to voluntarily abandon its EDGE registration, along
`
`with the 2011 UK Court Order granting Edge Games the right to own the registration
`
`for EDGE for printed magazines, meant that Edge Games was empowered to assign
`
`the 1999 registration back to itself.
`
`Under British Law, since a Power of Attorney had already been invoked to cure
`
`breaches of the CTA, it followed that the 2011 Court Order effectively granted Edge
`
`
`
`13
`
`
`
`Games the right to complete the cure of the 2004 breach by using the Power to
`
`assign the 1999 registration back to itself.
`
`The Fact Future Admitted Its Admissions Is Made Relevant By The 2011 UK
`Court Order
`
`The Board states in a footnote of its Order that Edge Games’ arguments that
`
`Future admitted that the 1999 registration should be assigned back to Edge, and that
`
`the 2011 UK Court Order should be deemed void, were “not well taken.” However,
`
`the Board fails to give any detail as to why they were not well taken.
`
`Asking the Board’s patience, Edge Games wishes to clarify how the 2011 UK
`
`Court Order has bearing here.
`
`First, it is well-settled trademark law that if a party fails to respond to a Request
`
`for Admissions within the time permitted then that party is deemed to have admitted
`
`the matter (FRCP 36(a)(3)). Future never responded to Edge Games’ First Request
`
`for Admissions within the 30-days permitted, or at all, ever. Nor did Future try to
`
`argue that it had not timely received the requests (their proper service is not in
`
`dispute since Edge provided proof). And the point in time at which the admissions
`
`became deemed admitted in accord with FRCP 36(a)(3) was appreciably before
`
`Future sought to terminate this proceeding by voluntarily surrendering registration,
`
`Thus Edge Games’ point cannot be said to be not well taken due to any act by
`
`Future rendering the argument invalid or moot. The simple fact remains that in
`
`accord with trademark law, Future is deemed to have admitted the material. In the
`
`case of Requests 27 and 28 they thus admitted the 2011 High Court Order should
`
`be deemed voided (not that it has any direct preclusive impact anyway). And in
`
`accord with Request 10, Future admitted that the 1999 registration was rightly
`
`
`
`14
`
`
`
`reassigned back to Edge Games. It is therefore not clear why the Board said this
`
`argument is not well taken when it rests on well-settled Trademark Law.
`
`Further, the admission within this proceeding by Future in its Interrogatory
`
`Responses that it had not made any use of the mark EDGE in US commerce from
`
`2004 to 2010 gave Edge Games the right to ask such requests for admission. The
`
`direct consequence of the 2011 Court Order – even if one accepts that Future’s
`
`admission it is void is not well taken – is that Edge Games was given the right to
`
`assign the 1999 registration (3713604) back to itself.
`
`Thus Edge Games had every right to ask Future to admit that the mark should be
`
`assigned back to Edge Games, and when Future failed to respond in a timely
`
`manner, Edge Games had a right to use that failure as permission (proactive or
`
`retroactive) to use the Power of Attorney to assign the mark to itself. Thus there is a
`
`direct link between the 2011 High Court Order, its consequences as to Edge Games
`
`rights, the admissions which have Future admitting the mark should be assigned,
`
`and the assignment of it by Edge Games to itself using the Power that the 2011
`
`Court Order provides is still in place for such use.
`
`Edge Games notes yet again that there was far more than ample time for Future
`
`to challenge the fact that it had been deemed to have admitted its admissions –
`
`particularly in regard to admitting that the registration should be assigned back to
`
`Edge rather than being cancelled. Yet Future did not avail itself of any remedies that
`
`it had, and is now substantially out of time to do so.
`
`
`Dated: November 30, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`________________________
`
`
`
`
`
`
`
`
`
`
`
`15
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that a true and complete copy of the foregoing OPPOSER’S
`
`REPONSE TO THE BOARD’S NOVEMBER 1, 2016 ORDER REGARDING
`
`POSSIBLE PRECLUSIVE EFFECT OF THE JULY 7, 2011 UK PROCEEDING
`
`DECISION has been served by mailing said copy on November 30, 2016, via First
`
`Class Mail, postage prepaid, upon the following party of record:
`
`Robert N Phillips
`Reed Smith LLP
`101 Second Street
`San Francisco,
`CA 94105
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Signature: /Tim Langdell/________
` Dr. Tim Langdell
`
`
`
`Date: November 30, 2016
`
`
`
`16
`
`
`
`Appendix A
`Appendix A
`
`
`
`17
`
`
`
`11/30/2016
`
`EDGE/THE EDGE EUROPE - Indie games developer publisher
`
`Available on the
`
`D App Store
`
`OUT NOW FOR iPhone®IiPad®/iPod Touch®!
`
`EDGE MAGAZINE
`
`Future Pub|ishing's use ofthe mark EDGE in relation to
`electronic publication versions of their EDGE Magazine is
`under a perpetual and irrevocable license from Edge Games.
`All right, title, interest and goodwill arising from such use by
`Future Publishing of the mark EDGE vests in Edge Games.
`
`Read the magazine online here.
`
`"Children are our future." EDGE/THE EDGE donates 10% of
`its profits to charities and institutions for the benefit of children
`in need, at-risk children and sick children.
`
`http://www.edgegames.co.uk/
`
`1/2
`
`
`
`11/30/2016
`
`EDGE/THE EDGE EUROPE - Indie games developer publisher
`
`Looking for our U.S. website?
`wvvw.edgegames.com
`
`EDGETM/THE EDGETM/EDGE GAMESTM
`(c) 2010
`
`BOBBY BEARING, EDGE, THE EDGE, EDGE GAMES are trademarks of Edge Games. (c) 1984-2016.
`All rights reserved. iPhone, iPad, iPod Touch are all trademarks of Apple, Inc.
`
`http://www.edgegames.co.uk/
`
`2/2
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
